UPC Unfiltered, by Willem Hoyng – UPC decisions week 45, 2025

Dear reader,

Each Monday we try to discuss all orders and decisions published in the previous week on the UPC website. You may have noticed that the UPC registers the date of the decisions, rather than (also) the day of the decision’s publication, which may differ. As many decisions are not published on the day they are issued (or even in the same week), it is difficult to know which decisions are published in a given week. In practice, this would require a check of all the published decisions, as a decision published weeks after its issue date can only be found under the date of the decision itself.

This means that readers that check the UPC website daily or weekly will miss several decisions, because, although they are published that day or that week, they are published under the date of the decision, which is sometimes substantially earlier.

I have suggested the Registrar at least three times to register publication dates of decisions, or indicate on the date of the publication that a certain earlier decision has now been published. Until now, the UPC has not done this.

We try to be complete and also discuss these late-published decisions. However, if you are a judge or a party with knowledge of an order or decision that has not yet been published, or has been published but not discussed here, I would be very grateful if you could let me know via email. willem.hoyng@hoyngrokh.com

1 October 2025 (published last week)
Local Division Mannheim, Bosch v Grizzly

UPC_CFI_611/2025

Preliminary objection

Facts

1. This decision relates to an infringement case also concerning Spain, Poland and the UK (non-UPC states).
2. The four German defendants raised a Preliminary Objection (“PO”) arguing that it is not sufficiently explained why there is infringement in the non-UPC countries and on what national grounds the claimant bases these claims. Defendant 1 also argued that Art. 34 UPCA limits the jurisdiction of the UPC to UPC countries.

The JR

Unsurprisingly, the JR rejected all these (and some further) arguments and decided that costs for the PO cannot be claimed upfront, even if you prevail, as these costs are decided in the final decision.

Comment

Are you, user of the system, really willing to pay for your representatives playing Don Quijote? I assume the defendants’ representatives knew that these type of arguments have no chance of succeeding, but they had clients who did not mind. Surprise: three of the defendants are Lidl companies. I always thought that they were cost-sensitive but apparently not when it comes to Don Quijote!

 

1 October 2025 (published last week)
Court of Appeal, Bruker v 10x Genomics

UPC_CoA_681/2025

Court fees

Facts

1. In this case, Bruker disputed the notion that a claim for compensation for damages suffered due to the enforcement of a preliminary injunction, which is later reversed, constitutes a separate case for which separate court fees have to be paid.
2. The Court of Appeal disagreed and ruled that such a case is a (separate) case for damages according to R. 125 RoP and the following provisions.
3. Bruker had paid € 253.000 in court fees to initiate proceedings for compensation for its damages. The case was settled before 10x Genomics’ defence, and the Local Division ordered reimbursement of 60% of the court fees.
4. Bruker claimed, however, that it should not have had to pay any court fees in the first place.

Comment

This seems to be a no brainer. The argument that the fee schedule does not mention this type of proceedings (mentioned in R. 213.2 RoP) is not strong. How could Bruker think that the Court would suddenly work for free in these types of proceedings, which are often complicated and de facto establish the amount of damages suffered by the execution of a wrong PI decision, despite the use of the word “compensation” in R. 213.2 RoP.

 

2 October 2025 (published last week)
Local Division Düsseldorf, Headwater v Samsung

UPC_CFI_496/2025

Too much work?

Correction of an order of 29 September 2025 initiated by the Court itself because it contained a clerical and a calculation error.

Comment

1. Another sign that the hard-working judges in the German Divisions have too much work because users of the system are not willing enough to file in other Divisions, even though that this is very often possible. Some German representatives seem not to mind overburdening the German Divisions because they only think about their own interests or are afraid to travel to unfamiliar countries for the oral argument, still not understanding that they no longer live in Germany, but in the territory of the UPC!
2. Although I have suggested several times that each Legally Qualified Judge should be allowed to select a graduate of a University each year to act as their clerk and help with research, calculations and all kind of other tasks that distract the judge from their main duties, this has not been implemented yet. If you ask why, administrative and labor law-related issues are raised instead of finding a way to overcome them. We have a saying “Where there is a will, there is a way”!

 

2 October 2025 (published last week)
Local Division Mannheim, Hurom v NUC
Long arm jurisdiction / foreign law

UPC_CFI_162/2024

Facts

1. Both parties are Korean companies.
2. Hurom sued NUC for infringement in Poland, Spain and the UK.
3. Hurom already obtained an injunction for the UPCA member states with respect to NUC Electronics Europe GmbH’s and Warm Cook’s juice extractors, but the Court had separated the infringement claim for Poland, Spain and the UK as it awaited the decision of the Court of Justice of the European Union (“CJEU”) in BSH Hausgeräte v Electrolux, which was rendered on 25 February 2025 (C 339/22).
4. On its website, NUC lists its German subsidiary, NUC Electronics Europe GmbH, as the European contact for its products and refers to the website “kuvings.de” and NUC Electronics Europe GmbH, where NUC’s products are offered.

The Court

1. You can raise objections against international jurisdiction in your defence despite R. 19.7 RoP because EU law prevails over the Rules of Procedure.
2. The defendant is not domiciled in the EU. The Court has jurisdiction because of Art. 71b (2) jo. Art. 7 (2) Brussels I bis Regulation (“BR”).
3. The fact that Poland and Spain do not participate in the UPCA does not preclude the UPC from having jurisdiction for these countries.
4. BSH Hausgeräte v Electrolux is also applicable to defendants for which the Court has jurisdiction under Art. 7 (2) BR, because Art. 24 (4) BR does not limit the jurisdiction for infringement cases. A country other than the one for which the patent is granted can have jurisdiction under Art. 7 (2) BR if the decisive factual acts giving the rise to the infringement in the country for which the patent is granted are committed in that other country. The Court refers to the CJEU ruling of 19 April 2012 in the case Wintersteiger (C-523/10).
5. The claimant stated that the defendant’s German subsidiary ships infringing products to Poland, Spain and the UK. These acts are attributable to the defendant, i.e. NUC Korea, which is sufficient to establish jurisdiction with respect to NUC Korea. Whether the acts indeed are attributable to NUC Korea is a question of the merits of the case.
6. As the acts allegedly attributable to NUC Korea are the acts of the German subsidiary, the Mannheim Local Division has jurisdiction, which extends to all national parts of the EP.
7. If you want to argue as a defendant that the application of Art. 69 EPC leads to a different result for (certain) non-UPC countries, you have to substantiate this.
8. The claimants did not prove the acts attributable to NUC Korea amount to infringement of the patent under Polish, Spanish and UK law.
9. The Court dismissed the claim.

Comment

1. In my opinion, the Court quite convincingly establishes that it has cross-border jurisdiction, if it has jurisdiction under Art. 7 (2) BR. This indeed seems to follow from the CJEU’s decision in Wintersteiger, where the infringing acts are committed in the country in question (here, the acts, which constitute infringement in Poland etc., are the shipping of infringing products from Germany that can be attributed to the Korean parent company).
2. It is correct that, for the purposes of establishing jurisdiction under Art. 7 (2) BR, it is not necessary to prove infringement (i.e. that the acts of the German subsidiary are attributable to the parent company according to Polish, UK and Spain law). However, I am still surprised by this decision when I consider the facts of the case. Whether or not a parent company is responsible for the acts of its subsidiary is not a simple matter, but in this case, according to the reported facts, the parent company on its website states in English that its German subsidiary is its distributor in Europe and the product shown on its website can be purchased there.
3. If this does not already qualify as direct infringement, I think there are very few countries where it would not be considered indirect infringement or an unlawful act. In any case, the Court should have asked the defendant to explain why this is not the case in Poland, Spain and the UK.
4. The decision may have been different if the Local Division had seen the Court of Appeal’s decision in Philips v Belkin the following day (see UPC_CoA_534/2024, UPC_CoA_19/2025, and UPC_CoA_683/2024). From what I read, there seems to be no doubt that, at least according to UPC law, NUC Korea would be considered an infringer. It would then have been even be more justified to hold the same for Spain, Poland and the UK, as the defendant had provided no evidence that it would be different in these countries.

2 October 2025 (published last week)
Local Division Mannheim, Centripetal v Palo Alto

UPC_CFI_636/2025

Facts

1. Following a successful appeal by Centripetal, the Local Division issued an inspection (saisie) order for certain premises. However, Centripetal discovered that the premises did not have access to the systems they wanted to inspect and also did not have the documentation they wanted to seize. Palo Alto refused to bring the necessary hardware to the premises to enable access and refused to download the documentation they wanted to see.
2. Centripetal asked the Court to impose penalty sums for further non-cooperation.

The Court of Appeal

The Court of Appeal held that Centripetal chose the wrong premises. The defendant did not have to actively cooperate to make inspection and saisie possible by, for example, setting up a system that is not yet present with the necessary hardware components.

Comment

Before you are entering into an expensive inspection and seizure exercise, you better make sure that you have the right premises!

 

13 October 2025 (published last week)
Local Division Paris, Sun v Vivo

UPC_CFI_362/2025

Facts

1. The Statement of defence is due on 28 November 2025.
2. On 29 September 2025, Vivo filed a PO disputing the competence of the Court to handle an infringement claim in which Sun requested the establishment of a FRAND license rate. Vivo also requested, by way of preliminary order, an extension of time to file its defence.

The Court

The Court held that there was no reason to grant an extension. Vivo knew from the beginning what the SEP case was about. R. 19.6 RoP clearly states that filing a PO does not affect the time limit for filing the defence. There are no exceptional circumstances that would warrant a different decision.

Comment

The correct decision. Vivo is wasting the time of the Court.

 

17 October 2025 (published last week)
Local Division Munich, Onward Medical NV v Niche Biomedical Inc. (Niche)

UPC_CFI_693/2025

PI and auxiliary request

Facts

1. Onward lodged preliminary injunction (“PI”) proceedings against Niche.
2. After Niche filed its Objection to the Application, Onward submitted eight auxiliary requests!

The Court

1. Ruled that it is not “überwiegend warscheinlich” (predominantly probable) that the patent as granted is valid.
2. It held that auxiliary requests are generally to be rejected in PI proceedings.

Comment

1. Firstly, in my opinion, the Court is right that the granted version of the patent is invalid, but I disagree with the criteria used by the Court. In my view, it is up to the defendant to prove that it is more likely than not (“predominantly probable”) that the patent is invalid, rather than the patentee having to prove that it is more likely than not that the patent is valid. As said, this would in my opinion not have led to another outcome.
2. I also disagree with the fact that one cannot invoke an auxiliary request in PI proceedings. PIs are “provisional measures and protective measures” (Art. 62 EPC). The (successful) applicant will have to prove later in proceedings on the merits that such measures were justified, i.e. that there was a valid patent in place which was infringed. As the judgment on validity is ex tunc (from the moment of the grant), even if the patent is upheld on the basis of an auxiliary request in the proceedings on the merits, the resulting patent was valid during at time the provisional measure was ordered.
3. This means that, as long as the patentee can convince the Court that it is more likely than not that that claim will be held valid, there is no legal reason not to allow them to invoke only a subclaim or a different worded claim in PI proceedings.
4. It goes without saying that the Court will have to judge, taking into consideration that these are PI proceedings, to what extent such “auxiliary requests” are allowable. In general, however, I think that there is absolutely no problem with an application for a PI being based on an auxiliary request (for example because of prior correspondence between the parties or because of a decision of the OD which is under appeal). It becomes more problematic, if such a request is made later in the proceedings in reaction to the Objection to the Application. However, if it is minor and there will be an oral hearing, it should not be impossible.
5. Of course, filing eight auxiliary requests, as was done in the present PI proceedings, should never be allowed!
6. I certainly hope that the Court of Appeal does not uphold this decision because this could cause a lot of damage to inventors who deserve protection. Some national legal systems will allow a new version of the patent to be obtained in a matter of days (the Netherlands for example), while in other countries this will be impossible. These national possibilities do not exist for a Unitary Patent, so first you have to go through central limitation proceedings which takes up precious time. We must be practical and reasonable!
7. Why is a Dutch company litigation in German against a US company before a busy German Division? There was no need to do so. They could have filed in English before the Paris Local Division or even in the Central Division, and perhaps would have obtained a better result! If you are a user of this system, ask yourself whether you should follow the advice to file in German in a busy German Division blindly. Is it truly good for you, or only good for your representatives!

 

30 October 2025 (published last week)
Local Division Düsseldorf, Van Loon v Inverquark

UPC_CFI_1325/2025

Inspection order

Facts

1. On 28 October 2025, Van Loon filed an application for an order for inspection and seizure of evidence concerning an exhibition taking place from 28 to 31 October 2025 in Cologne.
2. No opposition was lodged against the patent in suit (which concerns a “counter current swimming device”).
3. Inverquark had previously disputed infringement in response to a cease-and-desist letter, and stated that the patent was invalid. It subsequently filed a protective letter.

The Court

1. The Court held that it is competent to deal with the request. This is especially the case because Van Loon has indicated that they intend to initiate the main proceedings in Düsseldorf.
2. The content of the protective letter does not prevent an inspection/seizure order. On the contrary, such an order could help verify some of the non-infringement arguments.
3. Invalidity arguments in the protective letter are not taken into consideration unless they are clear and obvious. The Court refers to the Court of Appeal decision of 15 July 2025 regarding Maguin v. Tiru (UPC_CoA_377/2025).
4. The order is urgent and ex parte is necessary to prevent evidence from being lost.
5. The Court further follows the requirements of R. 196 RoP, making it clear that the applicant has to pay all costs relating to the expert, drafting of the report and the bailiff etc.

Comment

1. I assume, and the facts seem to confirm this, that the allegedly infringing product could not (yet) have been purchased and that, without detailed inspection, one could not establish infringement. Under such circumstances, the measure seems justified. However, judges should realize that these orders may also be sought because they clearly (and very publicly) disrupt the exhibition of a competitor’s new product. So, as I have said before, such measure should not be allowed if infringement can be established in a less business disturbing way.
2. Inverquark clearly was afraid that Van Loon would try to prevent or disrupt the exhibition of their product because they filed their protective letter just a few days before the exhibition. What they should have done is offer Van Loon the opportunity to have their lawyers and patent attorney inspect the product, as well as mention this in their protective letter (all assuming that they indeed have serious non-infringement arguments). Of course, they should also have raised an objection against an inspection/seizure order in that protective letter (which they failed to do).
3. With regard to invalidity arguments, the Court follows the precedent of the Court of Appeal. If you want to stand any chance of success and there are good invalidity arguments, only use your best one and present in the clearest way, so that the judge only has to read one or two paragraphs.
4. Although I see the necessity of asking one of the German Divisions to issue this order, as the exhibition took place in Germany, and I understand that it is wise to do so in German, as you may need a German bailiff for the execution of the order, I do not believe that it is necessary to start the main proceedings in the Division that orders the measure, as the Court seems to suggest. In this case, Van Loon, a Dutch company, can avoid the busy German Division and file in Austria, where they can also use the English language, which is easier and cheaper (the patent is in English).

 

31 October 2025 (published last week)
Court of Appeal, Sun v Vivo

UPC_CFI_755/2025; UPC_CFI_757/2025

Stay of proceedings

Facts

1. Sun brought an infringement action before the Paris Local Division against Vivo, requesting, among other things, a determination of FRAND terms. On the same day, Sun filed a confidentiality request.
2. Vivo has to file its answer on 28 November 2025.
3. The Paris Division only partly granted Sun’s confidentiality request. Sun appealed, with a hearing scheduled in the Court of Appeal for 26 November 2025.
4. On 29 September 2025, Vivo filed a PO arguing that the Court lacked jurisdiction to determine FRAND terms and requested a stay of the main proceeding until the PO decision has become final.
5. The JR refused the request for a stay, a decision that was confirmed by the panel.
6. On 27 October 2025, Vivo filed an R. 9.3 RoP request with the Court of Appeal, seeking to stay the Court of First Instance proceedings pending Sun’s appeal, primarily citing the fact that the PO has not yet been decided as the reason!
7. On 30 October 2025, the Paris Local Division rejected the PO.

The Court of Appeal

1. The Court held that the JR of the Court of First Instance can suspend CFI proceedings in case of an appeal of an PO order (R. 21.2 RoP).
2. However, no appeal has been lodged against the PO order. Sun’s appeal against the confidentiality order is irrelevant.
3. R. 21.2 RoP is a “specialis” of the general provisions on stays (R. 295 to 298 RoP).
4. R. 295 RoP sets out different reasons why the Court may stay proceedings. “Court” refers to either the Court of First Instance or the Court of Appeal. If the case is pending before the Court in First Instance, however, the Court of Appeal will only suspend the case in exceptional circumstances. The same applies to requests for extensions of time (R. 9.3 RoP).
5. The Court of Appeal rejected Vivo’s request.

Comment

1. I have never seen a representative file a de facto appeal before the lower court has issued a decision. Vivo seems to have lost it, after Sun filed an infringement suit in order to have the Court set the conditions of a FRAND license.
2. Moreover, it seems that Vivo never read Art. 32(1)(a) UPCA. In accordance with this article, it seems to me that you can file an infringement claim asking for an injunction if the implementer (here, Vivo) does not pay the FRAND royalty X, or the royalty which the Court establishes as being FRAND. So, it seems that the PO as such did not have much chance of success and was dismissed by the Paris Local Division in the meantime.
3. The Court of Appeal made an extremely quick decision, which was a great service to Vivo, who now have a further month to prepare the Statement of defence after wasting two months.

 

31 October 2025 (published last week)
Local Division Düsseldorf, Align v Angelalign

UPC_CFI_723/2025 

Security for costs

Facts

1. On 15 August 2025, the applicant commenced PI proceedings.
2. The parties agreed to an extension to 23 October 2025 for filing of the Defence.
3. On 27 October 2025, the date for the oral hearing was set and parties were given the opportunity to file further written observations.
4. In their Defence, the defendants asked the Court to order security for costs.
5. Applicant asks to reject the request.

The JR

The JR refuses the request. The JR considers the decision of the Local Division Munich of 27 August 2024 (UPC_CFI_74/2024, Hand Held Products v Scandit), cited by the defendants, inapplicable. In that case, the Court ordered security of a US claimant because the defendant had argued unchallenged that enforcing a judgement in the US is expensive and concerns non-reimbursable costs. Having to bear the costs of the enforcement of a UPC decision in the US yourself was only established those other proceedings in Munich because the claimant had not denied that allegation.

Comment

1. Why was this case filed in the busy Local Division Düsseldorf while it could have been filed in another Division?
2. How “urgent” is this case if the applicant agrees to an extension of a month for the Defence. As I said before: for service in urgent cases, the Court can apply Art. 15 (3) last paragraph of the The Hague Convention. There is therefore no reason for any delay, and no reason for applicants to allow extensions in order to have service of the application accepted.
3. It is well-known that enforcing judgments in the US is very expensive, but if you do not argue this you will not get security. Even if you argue this, the question remains if the US company has assets (valuable patents?) in the UPC territory (or the EU).

 

31 October 2025 (late published)
Local Division Düsseldorf, Occlutech v Lepu

UPC_CFI_630/2025

PI application

Facts

1. This case concerns an application for a preliminary injunction (“PI”) by Occlutech on the basis of an opted-in patent with respect to Lepu’s occluders.
2. Lepu’s products have already been injuncted based on a different patent by the Local Division Hamburg.

The Court

1. The Court has international jurisdiction (against the Chinese and Dutch defendants) on the basis of Art. 31 UPCA jo. Art. 7.2 jo. Art. 71b Brussels Ibis Regulation (“BR”) because in the UPC because of the offer by the Chinese company on the internet there is the possibility of damages. It is sufficient that German customers can access the website.
2. The Local Division has internal jurisdiction because the threat of infringement in Germany.
3. After a discussion of the patent and the object of the invention (to solve certain problems of earlier occluders, the Court discusses the meaning of certain claim elements applying the decision of the Court of Appeal in Nanostring v 10x Genomics (UPC_CoA_335/2023) and further decisions of the Court of Appeal.
4. It is for the applicant to prove that it is more likely than not (“uberwiegend wahrscheinlich”) that the patent is infringed.
5. The Court is not able to conclude on the basis of the statements of the parties whether or not claim feature 1.1 is incorporated in the products of the defendants and therefore refuses to grant the requested PI.
6. The Court concludes that all further claim features are incorporated. The same is true with respect to validity. It is not more likely than not that the patent is invalid.
7. All other requirements (such as weighing the interests of the party and urgency) are fulfilled.

Comment

1. The PI is refused because the applicant did not sufficiently prove that a certain claim feature is present in the defendants’ products. If I understand the decision well, the applicant could have won if it would have done better job in preparation of the oral hearing (when he knew the defendants’ arguments). However, it is also possible that indeed the claim feature was simply not incorporated in the defendants’ products.
2. I cannot find a convincing argument why the Court was competent against the Dutch defendant. I would think that the normal place where according to the internal rules of the UPCA the Dutch defendant should have been sued, would be before the Local Division in The Hague. The German Division would have only been competent if the Dutch defendant would infringe (or threatens to infringe) in Germany. The fact that this was the case for the Chinese defendant does in my opinion not mean that on that basis you can sue the Dutch defendant as a co-defendant.
3. I wonder why a case is urgent if the same allegedly infringing products have already been injuncted? The claimant in this case goes with two different patents to two different busy German Divisions to obtain a PI against the same products. This is in my view an unnecessary waste of the Court’s time. He should have brought (certainly in a PI case) the claims based on the two patents in one PI case.
4. The Court states (also in the headnote) that also when a literal infringement does not realize all the claimed advantages of the invention (which advantages are not mentioned in the claim) there is still an infringement. I think this is correct, but if there is a literal infringement without any of the claimed advantages realized then this in fact means that the patent is too broad and not inventive over the whole breath of the claim.

 

3 November 2025
Paris Central Division, IMI v Belparts

UPC_CFI_104/2025 ; UPC_CFI_364/2025 

Revocation / counterclaim for infringement

Facts

1. On 13 December 2024, Belparts started infringement proceedings in the Local Division Munich against IMI SA and IMI AB, located in Switzerland and Sweden respectively. IMI SA and IMI AB filed a counterclaim for revocation.
2. On 10 February 2025, the German IMI entity IMI GmbH filed a revocation action.
3. In the meantime, the opposition division (“OD”) of the European Patent Office (“EPO”) upheld the patent in amended form. Belparts appealed the decision of the OD.
4. The parties voted in the Local Division Munich against bifurcation and the LD Munich sets the dates for the interim conference and oral hearing on 24 March and 18 June 2026
5. The CD Paris has set the dates for the interim conference and oral hearing on 11 December 2025 and 5 February 2026.
6. Both parties wanted the LD Munich to transfer the case to the CD Paris, but that was impossible according to R. 302.3 RoP.
7. On 2 October 2025, Belparts requested that:
   a. the counterclaim for infringement in Paris shall be heard together with the pending infringement case in Munich; and
   b. if “a” is granted and the infringement cases are heard together, the revocation cases are to be heard together by the CD Paris.
   The IMI companies agreed.

Order of the JR

The JR cites R. 340 RoP regarding “Connection Joinder” which provides the possibility for panels to determine that actions shall be heard together, and decides that the request is not “in the interest of the proper administration of justice and of avoiding inconsistent decisions” as required by said rule. Conflicting decisions after the grant of the requests remain possible. The JR refuses the request.

Comment

1. The JR is right that the request still result in multiple hearings and moreover can lead to complicated situations. If the Paris Division revokes the patent (partly) and an appeal is lodged what should the Munich Division do etc.
2. I read between the lines of the JR’s decision that the parties who caused the mess themselves should find a better solution which also does not waste the JR’s time. The parties should simply withdraw their Paris case. They can also agree to withdraw the Munich case and that IMI SA and IMI AB will be bound to the Paris decision as if they are a party in these proceedings. If they cannot agree which case to withdraw, then there is a simple solution: draw a straw. They should stop wasting unnecessary time of the Court and money of their clients trying to play games with the (I agree, somewhat complicated) system of bifurcation and jurisdiction of the UPC!

 

5 November 2025
Court of Appeal, Seoul Viosys v expert klein

UPC_CoA_762/2024; UPC_CoA_773/2024

Added matter / translation of PCT application

Facts

1. Seoul Viosys is owner of the patent in suit which originates from a PCT application in the Korean language.
2. Expert submitted an English translation of the PCT application, which was filed as the EP application, to the proceedings.
3. Seoul Viosys filed a corrected English translation in appeal.
4. The patent claims priority of three Korean applications.
5. The Local Division in Düsseldorf had invalidated claim 1 due to added matter, refused an Application to amend the patent, revoked the patent and dismissed the claim for infringement.

The Court of Appeal

1. The Court of Appeal noted that the parties agree on who the skilled person is.
2. The Court referred to the decision of the Court of Appeal in Nanostring v 10x Genomics (UPC_CoA_335/2023) and came to the conclusion that the Local Division has misinterpreted the wording “one Mesa” in the claim. This does not mean that the claim is restricted to one Mesa, but rather that a Mesa must be present, i.e. requires “at least one Mesa”.
3. The Court then addressed the Local Division’s decision regarding added matter, which was based on the fact that earlier applications did not disclose an LED with only one Mesa.
4. The Court cited the gold standard, stating that what is claimed should have basis in all prior applications.
5. The Court rejected the argument that the Local Division’s decision was a surprise decision because it was based on Seoul Viosys’ own arguments and was discussed during the oral argument. At this time, Seoul Viosys could have presented their arguments with respect to what was, in the end, decided by the Local Division.
6. The Court disagreed with Seoul Viosys’ assertion that Figures 24 to 26 provide a basis for the claim (i.e. show a LED with only one Mesa).
7. The Court discussed the relevance of the original Korean PCT application.a. The Korean PCT application is the original application for the European Patent.
   b. After an applicant has filed a translation in one of the EPO languages, the EPO will in first instance treat that translation as the original application. This is not just a formality, as Seoul Viosys claims, because the entire search and subsequent prosecution are based on that translation, and the Local Division could therefore also base itself on that translation – the more so as Seoul Viosys filed the Korean original text only on appeal.
   c. It is up to Seoul to prove that the translation it had itself filed is wrong. Simply filing the original Korean application was insufficient.
   d. The Court also found the arguments put forward by Seoul Viosys, based on a corrected translation, unconvincing.
   e. Also the further arguments did not convince the Court of Appeal.
8. All auxiliary requests contained a product with one Mesa and therefore could not lead to a valid patent.
9. The Court dismissed the appeal.

Comment

1. It does not make a difference in this case, but for users of the European patent system who file their PCT applications in a languages other than the languages of the EPO (such as Korean, Chinese and Japanese), it demonstrates the importance of the translation into (normally) English.
2. It also shows that, before starting litigation or defending yourself, it is important to verify the correctness of such a translation.
3. I may be wrong, but I do not understand why there was not enough basis for an auxiliary request that could have saved the patent in this case. If none of the figures show the use of one Mesa, why could they inter alia not have given sufficient basis for a claim for more than one Mesa?

 

5 November 2025
Local Division Hamburg, Dolle v Fakro

UPC_CFI_461/2024: UPC_CFI_718/2024

Infringement/revocation

Facts

1. This decision relates to an infringement case with a Counterclaim for revocation concerning a foldable attic stair case.
2. The defendant argued that the patent is not infringed and invalid because of added matter, lack of enablement, lack of right to priority, lack of novelty and inventive step!
3. The patentee filed numerous auxiliary requests.

The Court

1. The Court began its decision by summarizing the key disagreements between the parties (pages 17-25).
2. The Court dealt first with the argument that the Statement of claim is not in conformity with R. 13.1(k) because it also sought an injunction against further models or variants which are “identisch” or “kerngleich” (not “essentially different”). The Court stated that it is standard practice for a minor product modification to also fall under an injunction with respect to a specific product.
3. Having discussed how a claim should be interpreted (referring to Art. 69 EPC, the Protocol, the Nanostring decision, UPC_CoA_335/2023, and a whole range of further decisions of Local Divisions), the Court discussed the meaning of the different claim elements.
4. It held that the defendant’s efforts to limit the meaning of certain generally worded claim elements to a more specific meaning were unsuccessful.
5. Regarding the invalidity challenge, the Court first cited the general principles for dealing with such arguments.
6. It applied the gold standard with respect to the added matter argument and did not find an extension of the claimed subject matter.
7. The Court rejected the objections under Art. 83 EPC.
8. Regarding the argument that there is no entitlement, the Court applied the gold standard, without explicitly saying so. The same applies to the appreciation of novelty. Both arguments were rejected.
9. The Court provided an extensive and complete introduction with respect to the criteria for deciding on inventive step (see paragraphs 146 and 147).
10. The Court found infringement and dismissed the revocation action.

Comment

1. The parties get value for their money. It is a very extensively motivated decision.
2. It is also a textbook case for law students (or anyone interested in knowing the criteria that courts apply to decide patent cases). Just read the so called “Grundsätze”. It’s just very unfortunate that this is only available in German and not in English.
3. For practitioners, here are three things they should already know:
   a. Apply the same gold standard with respect to “entitlement to priority”, “added matter” and “novelty”.
   b. Even if the documents on which it is based are included in the proceedings, you cannot raise a new inventive step argument during the oral hearing!
   c. Trying to escape infringement by applying a more restricted interpretation to a claim element than its normal meaning will hardly ever work.

 

6 November 2025
Court of Appeal, Blacksheep v HL Display

UPC_CoA_897/2025 

No suspensive effect

Facts

1. HL Display started an infringement action at the Local Division The Hague. Blacksheep counterclaimed for revocation.
2. Blacksheep lost and (among others) had to supply information within three weeks after service to HL Display as follows:
   a. origin and distribution channels of the infringing goods;
   b. quantity of goods manufactured and delivered, recovered or ordered as well as the price paid for the infringing goods;
   c. the identity of the third person in the production or distribution of the infringing products;
   d. number and dates of the products offered;
   e. the advertising carried out broken down by advertising medium, its distribution, the distribution period and the distribution area including evidence of these advertising activities;
   f. costs, broken down in individual costs factors and the profits realized all substantiated by means of all relevant supporting documents, including but not limited to legible orders, order confirmations, invoices and copies.
3. HL Display lodged the R. 118.8 RoP application on 16 October 2025, seeking enforcement of inter alia the abovementioned elements of the decision.
4. Blacksheep appealed asking for suspensive effect.
5. Its arguments for suspensive effect are as follows:
   a. if no suspensive effect is granted the appeal with respect to the order to give information is without purpose;
   b. HL Display has never made a reasoned request for the information. They only ask for it for the calculation of damages,
   c. while it appears impossible that what is asked under “a” and “c” is necessary for calculating damages?;
   d. the UPCA does not provide any basis for “d-f” in Art. 67 UPCA.

Court of Appeal

1. The starting point is no suspensive effect, except in exceptional circumstances (see the Court of Appeal’s decision in Pillar v ARM – UPC_CoA_301/2024).
2. The information is intended to enable the patentee to calculate damages.
3. Information under a and c is intended to enable the patentee to prevent further infringements.
4. If you think the information will contain confidential information, you have to raise that during the litigation. If you file it later, it will not stop the clock running.
5. Whether or not the order was justified is for the appeal. At least there is no manifest error.

Comment

1. Sure, information which has been handed over is gone, but that is in my view not an exceptional circumstance. The Court of Appeal has only ruled that if the appeal becomes devoid of purpose, that “may be” an exceptional circumstance.
2. So, if you are sued for infringement before the UPC, you have to realize that the consequences go much further if you lose then just having to stop selling your product.
3. Of course, you could question why the defendant should assist in providing with all kinds of sensitive information about the origin of the products, the manufacturer, etc. It is for the patentee to do his homework. You could also say, why would you have to give information with respect to the calculation of damages already after first instance infringement proceedings. Is it not more reasonable to do this after the Court of Appeal has established that indeed there is infringement of a valid patent? However, this is not the UPC system and would in my opinion not be in line with the Enforcement Directive. So every alleged infringer should realize you get only one bite of the apple. Make sure you are more than 60% convinced that you are right and if not, you better seek a settlement. If you are a potential user of the system or a defendant you have to realize that litigation is a business and that some representatives prefer to fight instead of advising to settle or give up!

 

7 November 2025
Local Division Düsseldorf, Yangtze v Micron

UPC_CFI_1041/2025 

Extension of time periods

Facts

1. On 6 October 2025, the claimant filed three infringement suits against 4 Micron defendants.
2. Defendants 2-4 want more time for their Preliminary Objection (“PO”) and defence, arguing that it concerns an exceptionally large litigation campaign in several jurisdictions and the fact that the technical evidence submitted in the UPC proceedings by claimant amounts to 3000 pages, etc.

The JR

1.  An extension of time can only be allowed in exceptional circumstances if and when a request for extension of time convincingly lays down such circumstances.
2. Defendants 2-4 have assured the Court that Defendant 1 will appear if the request is granted.
3. The Court orders the Preliminary Objection to be filed on 23 November 2025 which is one month longer than the period for defendant 1. The relevant time for the defence would be the end of February for defendant 1. The JR extends for all defendants the time for the defence to 16 March 2026.

Comment

1. In the end, the JR synchronizes the time for the written submission for all defendants and gives in this indeed exceptional case the requested extension.
2. The JR emphasizes the importance of the deadlines in the Rules of Procedure. So this clearly should be seen as an exception for an exceptional case. I note that of course defendants should have known that this was coming. In my experience in this type of cases you are already working for months and sometimes even for years before the statements of claim arrive. So I trust that the Courts remain strict on the deadlines, as the UPC should decide cases within 14 months!

 

7 November 2025 (not yet published)
Court of Appeal, Otec v Steros

UPC_CoA_579/2025

PI order set aside

Facts

1. This case concerns an appeal against a decision of the Local Division Hamburg of 16 June (corrected 11 August) 2025.
2. The case turned on the interpretation of one claim feature “a non-conductive fluid ‘immiscible in the conductive solution’”.
3. The Hamburg Division ruled that if the non-conductive fluid is an emulsion, if the emulsion at rest separates in two phases i.e. a less dense oily phases on top of a dense aqueous phase then the conductivity of each phase has to be measures separately in order to establish whether it is conductive or not.

The Court of Appeal

Refers to the description from which it clearly appears that the emulsion as a whole has to be considered and that (certain) emulsions are to be considered as non-conductive.

Comment

1. No surprise that the first instance order was set aside, as it was a clear error, which was also not understandable as, firstly, there was a Technically Qualified Judge on the panel, and secondly, the result of the injunction was that the defendant could no longer sell a product that was in all its essential aspects already on the market before the priority date (as I already indicated in my comment at the first instance judgment).
2. Steros must have also realized that this decision of the Hamburg Division would not survive. It tried a very sophisticated claim interpretation on the basis of new experimental data, which was bound to fail.
3. However, a defendant will not always be able to appeal such an error as due to the lack of suspensive effect it may be forced to settle (e.g. to prevent huge damages claims by customers). It shows the importance for the Court of First Instance not to make serious mistakes!