Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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16 May 2025
Local Division Düsseldorf, DDP v Greenchemicals
Confidential Information
Facts
A demand for protection of confidential information per R. 262A RoP.
The defendant requests that the proposed penalty for a culpable breach be dropped.
Decision of the Judge-Rapporteur (JR)
The JR imposed a penalty in case of culpable breach. If the information is public, then the order is not applicable. The defendants have not shown this to be the case because the applicant argued that its licensees do not communicate agreed prices to their customers, and the defendants did not demonstrate otherwise.
Comment
- In my view, this is a model standard order. The access to the information is restricted to “the representatives” (and one named person of the defendant). The representatives are held responsible for a culpable breach by their team members. So there is a certain flexibility as to who the representatives want to use as team members, as not all team members have to be named. The JR furthermore specifically states that the obligation to maintain secrecy continues after the end of the case.
- I note that this order does not mean that the information will not be disclosed to a member of the public who is given access to the Register because the claimant did not yet ask for the application of R. 262.2 RoP. However, the claimant has 14 days to do so after a request by a member of the public is made, but it seems more practical to ask for the application of R. 262.2 RoP together with an R. 262A RoP request.
19 May 2025
Local Division Mannheim, Malikie v Discord
Streamlining proceedings
Decision of the Judge-Rapporteur (JR)
In this case, the two defendants belonging to the same group were served on different days more than two months apart. Parties agreed on a date for the Statement of Defence which was longer for one but shorter for the other defendant in order to have the same dates for (all) the written submissions.
The JR ordered according to the agreement of the parties..
Comment
As I have said before, this makes a lot of sense and should be standard practice between representatives.
20 May 2025
Court of Appeal, Chint v Jingao
Suspensive effect
Background
Jingao initiated an infringement action against Chint and five other defendants. A counterclaim for invalidity was filed by Chint. Jingao’s request for security for costs was granted.
Chint appealed that order and requested suspensive effect for the appeal or expedited appeal proceedings..
Court of Appeal
(dealing with request for suspensive effect and request for expedited proceedings)
Refuses the requests. For suspensive effect, the Court refers to IC Pillar v ARM of 19 June 2024 (UPC_CoA_301/2024). Suspension is an exception to the rule that an appeal has no suspensive effect.
Chint did not show that providing security was an undue burden.
Expedite appeal
No sufficient reason to grant that and shorten the respondent’s normal time to respond in the appeal as provided for in the Rules of Procedure.
Comment
These requests clearly had no merit and should not have been made. Before filing these types of requests, read the case law, and if it is clear that a request has no merit, do not file it.
It saves your client money and the Court’s precious time.
20 May 2025
Local Division Düsseldorf, Roche v Tandem
Confidential information
Background
Some defendants, all belonging to the Tandem group of companies, asked for protection of certain confidential information on the basis of R. 262A RoP.
Decision of the Judge-Rapporteur (JR)
The JR very precisely describes the legislative basis of R. 262A RoP and grants the request.
Comment
- Why was this international case between a Swiss company and a US company filed in German?
- Why was this case filed in the busy Düsseldorf Division? Representatives tell me that German Divisions are patent-friendly. Did they study the decisions of German Divisions and, if appealed, the results on appeal? Apparently not, as the success rate for patentees between the German Divisions and other Divisions is the same.
- I think it is better that the order makes it expressly clear that the representatives are responsible for their team in case of a culpable breach by their team members (see the order of May 16 above of the same Division). Of course, the JR cannot grant more than is asked. So it is a matter of formulation of the request by the representatives of Tandem.
- See my remarks above about simultaneously requesting application of R.262.2 RoP.
21 May 2025
Local Division Düsseldorf, Hologic Inc. v Siemens
Security for costs
Background
Siemens is sued by Hologic, Inc., a US company.
Siemens counterclaimed for invalidity.
Siemens now demands security for costs both in the infringement case and in the counterclaim.
Decision of the Judge-Rapporteur (JR)
- Hologic’s argument that a defendant who counterclaims for invalidity cannot get security is incorrect. That has already been decided in UPC_CFI_140/2024.
- The request by Siemens for security based only on the fact that it is burdensome to execute a decision of the UPC in the US is insufficiently motivated.
- The case law of the UPC shows that US courts recognize and enforce judgments of foreign courts.
Comment
- Before making an argument or lodging a request, study the case law of the UPC!
- In this case, the Division had already decided that as a claimant in a counterclaim for revocation (which is basically a defense against the infringement claim) you can ask for security.
- Apart from the fact that you may expect that the representative of Siemens knows that US courts enforce decisions of foreign courts (which have respected basic procedural principles such as the right to be heard), in this case, the claimant Hologic was a company listed on the US stock exchange with numerous assets in the EU. So there was clearly no reason to ask for security.
21 May 2025
Court of Appeal, Knaus Tabbert v Yellow Sphere
Suspensive effect
Background
Yellow Sphere started infringement proceedings in the Local Division of Düsseldorf.
Knaus Tabbert filed a counterclaim for revocation.
Yellow Sphere obtained an injunction and the revocation case was rejected.
The injunction is only enforceable after Yellow Sphere has informed which parts of the injunction it wants to enforce and after it has send to the Registry an official translation in the language of the country where it wants to serve the parts it wants to enforce and after such service has taken place.
Knaus Tabbert has appealed the decision with respect to the claim and the counterclaim.
The requests by Knaus Tabbert in appeal:
- to grant suspensive effect with respect to the injunction;
- or to order Yellow Sphere to provide security before enforcing the injunction;
- or suspend and ask questions to the ECJ with respect to Art. 16, 17 and 47 of the Charter.
Do these Articles mean that you cannot order (immediately enforceable) recall and destruction of infringing products without ordering the patentee to provide any security before enforcing such order?
The Court of Appeal
The Court of Appeal dismisses the appeal.
- The rule is that there is no suspensive effect (Art. 74.1 UPCA). The Court of Appeal refers to all its decisions in which it has made clear that only special circumstances (such as manifest error, appeal devoid of purpose, violation of fundamental right, etc.) justify an exception to the rule. You have to mention all the reasons for suspensive effect in your application. You can refer to pleadings and documents at first instance if you refer to them concretely enough.
- In this case, there is no manifest error. The Court of Appeal refers to the Enforcement Directive, which does not always require security for all the different measures which the Court can pronounce.
- The Court of Appeal notes that, of course, all these measures have to be proportionate but rules that the Local Division has taken that into consideration.
Comment
- This decision is very well-reasoned and, in my opinion, absolutely correct.
- The Enforcement Directive shows clearly that the questions which Knaus Tabbert wants to refer to the ECJ are an “acte clair”. In other words, the answers to these questions are clear!
- Lesson for representatives:
a. If you ask for suspensive effect, make it clear in your applications why one of the special grounds applies and bring all the arguments.
b. You can refer, but very concretely, to what you stated at first instance, but I would always repeat it so that the Court of Appeal only has to read your application.
c. If you are a claimant and you want, apart from an injunction to stop selling, all kinds of other measures (such as recall and destruction), you should motivate why these are necessary and proportionate.
d. As a defendant, you should argue with respect to each and every one of these (further) measures why they are not necessary and not proportionate.
22 May 2025
Local Division Mannheim, Total v Texas Instruments
Further written pleadings
Background
The Judge-Rapporteur (JR) had refused Total’s request to file a further written submission after the defendant’s rejoinder. Total requested review (R. 333 RoP) by the panel.
The Panel
- The Panel agrees with the JR, who had rejected the request as too vague, as Total failed to provide a substantiated explanation for why a further brief was necessary.
- A JR is not obliged before rejecting a request to warn a party that their request is not sufficiently substantiated.
- You cannot repair such deficiencies in a review procedure.
Comment
What representatives (should) know.
1. Further written submissions are an exception to the rule, and therefore you have to provide solid, convincing, substantiated reasons why the exception should apply.
2. The UPC is not a German national procedure in which you can file numerous written submissions.
3. A representative cannot expect the judge to help a representative who does not know the Rules of Procedure.
4. The word “review” (Überprüfung, révision) speaks for itself. The panel looks at the decision of the JR based on the facts and submissions on which the JR has based their order. A representative should realize that only in exceptional cases will a request for review be successful.
23 May 2025
Local Division The Hague, Genevant v Moderna
Cross border jurisdiction
Background
1. In this case, the patentee sues two US Moderna companies and numerous Moderna subsidiaries in Europe (in UPC and non-UPC countries) together with the Dutch Moderna entity for patent infringement of two patents.
2. As the defendants were served with the Statement of Claim on different dates, the time limit for raising preliminary objections expired on different dates.
The Preliminary Objection (PO)
3. Various POs were filed, arguing first of all that the Court lacked international jurisdiction with respect to the non-UPC defendants in Norway, Spain, and Poland, because it was not conclusively alleged that these subsidiaries infringe in the UPC.
4. Furthermore, it was alleged that The Hague Division lacked local competence against all defendants except Moderna NL and Moderna UK because these companies did not commit infringing acts in the Netherlands.
5. Finally, it was alleged that the Court (at least) had no jurisdiction with respect to infringements in non-UPC countries by companies not based in the UPC.
6. With respect to one of the patents, it was argued that the withdrawal of the opt-out was not valid.
Decision of the Judge-Rapporteur (JR)
- The JR concluded that several requests with respect to certain countries were late filed (more than a month after the service of the Statement of Claim), which meant that according to R. 19(7) RoP, jurisdiction and competence are accepted.
- The JR notes that no objection was made with respect to the international jurisdiction of the Court concerning the two Moderna US companies, Moderna Switzerland, and Moderna UK.
- The JR refers to the application of Art. 7(2) and Art. 8(1) of the Brussels Regulation, which give jurisdiction against EU entities in the EU state where they infringe (Art. 7(2)) or where they are sued as a co-defendant (to avoid the risk of irreconcilable judgments if they were sued in their own country).
- The JR concludes that on the basis of Art. 8(1) of the Brussels Regulation, there is jurisdiction against Moderna Spain and Poland and (via the Lugano Treaty, which contains the same provisions) against Moderna Norway.
- The JR decides (among others) that Art. 8(1) Brussels Regulation is applicable as Moderna NL allegedly infringes in Spain and Poland and (on the basis of the corresponding provision in the Treaty of Lugano) Norway.
- The opt-out was validly withdrawn.
The JR concludes that there is jurisdiction against all defendants but refers the question of whether there is long-arm jurisdiction against non-UPC entities for countries outside the UPC to the main case.
Comment
1. If the parties do not suggest or the Court does not align the dates for PO and the further written submissions, then accidents can happen, as we see in this case. So a representative who defends multiple defendants has to be extremely vigilant.
2. The question whether or not, in view of the case law of the European Court of Justice of the European Union (“CJEU”), you could (despite R. 19.7 RoP) still dispute jurisdiction in your Statement of Defence remains open.
3. The JR’s decision is, in my view, fully in line with long-standing case law with respect to the jurisdiction of EU courts concerning infringement (see CJEU in Primus v Roche and Solvay v Honeywell). In the UPC, these jurisdiction rules are also applicable to companies which do not have their seat in the EU (see Art. 71b (2) Brussels Regulation).
As the CJEU has recently ruled in BSH v Electrolux that with respect to EU countries, the EU courts can decide invalidity defenses concerning patents granted for other EU countries, cross-border jurisdiction for infringement also becomes a useful tool in cases on the merits (and not, as in the past, only in preliminary injunction proceedings).
However, what has not yet been decided is if this possibility (to decide inter partes about the validity of the patents in EU-non-UPC countries (e.g. Spain, Poland) also exists with respect to defendants who are not sued in their own country but as a co-defendant (Art. 8 (1) Brussels Regulation). It also becomes interesting to see what will happen if the Moderna companies are going to raise invalidity defenses with respect to non-UPC countries. First of all, there is already the question of how to raise this because a counterclaim for invalidity of patents granted for non-UPC countries is not possible as under the Rules of Procedure you can only raise invalidity by way of counterclaim. The Court can then of course not ignore a substantiated invalidity defense made in the Statement of Defence. According to CJEU BSH v Electrolux, the Court can deal with these invalidity claims inter partes for EU (non-UPC) countries and decide about the validity of patents granted for non-EU countries or abstain from dealing with such cases for e.g. international comity reasons.
4. The JR refers the long-arm jurisdiction question to the main case, apparently because that is less clear-cut? Can the UPC, e.g., deal with the infringement of a UK company in the UK? If the UK company is sued as a co-defendant with the NL company and the UK company is also infringing in the UPC, then Art. 8 (1) of the Brussels Regulation could be applicable (all assuming the UK court under its own jurisdiction rules can also deal with infringements by the UK company in the UPC – See the CJEU in Solvay v Honeywell -). However, as stated above, if invalidity of the UK patent is raised, the UPC Court can (but does not have to) abstain. I think that is probably, in the context of international comity, what the UPC should do, except maybe in a situation where the local UK company is a subsidiary (a sales company, for instance) of a UPC parent. The UPC (and in the end the CJEU) will also have to decide in how far all this is influenced by the specific (?) long-arm jurisdiction article in the Brussels Regulation (Art. 71b (3)).
23 May 2025
Court of Appeal, NJOY v Juul
Settlement
Background
The Paris Central Division dismissed NJOY’s revocation claim against Juul’s patent. NJOY appealed. The hearing in the Court of Appeal was set for 16 June 2025. The parties settled.
Court of Appeal
- The Court of Appeal accepts the withdrawal of the appeal, as Juul had indicated its consent.
- Each party bears its own costs of the appeal (as parties had agreed).
- 40% of the appeal court fees are to be reimbursed (as requested by NJOY).
Comment
Note that if parties agree on the costs, it is not necessary to issue a cost order despite what R. 265.2(c) RoP states, and that is also not what the Court of Appeal says.
The fact that the Court concludes that each party bears the costs on appeal can be seen as a service to the parties.
23 May 2025
Paris Local Division, Hurom v NUC
Infringement proceedings
Background
Hurom started infringement proceedings on 3 April 2024, and NUC counterclaimed for invalidity.
Decision
The Paris Local Division invalidated the amended patent for lack of inventive step. With respect to Poland (the unamended patent), the Court considered that there was no proof of infringement.
Comment
- In my opinion, the Court used the right criteria for rejecting the argument of added matter, following the Court of Appeal decision in Abbott v Sibio of 14 February 2025 (UPC_CoA_382/2024).
- With respect to inventive step, the Court cites Art. 56 EPC but surprisingly does not refer to any case law of other divisions with respect to assessing inventive step. I have not seen any consideration about “incentive” or “a pointer” to the invention when combining documents. I also have my doubts about dealing with the inventive step of a sub-claim as the Court does. The Court does not consider a dependent claim as a whole but looks to see if a dependent claim, separately from the main claim, is inventive. In my view, you should consider the whole claim and not cut the claim into separate parts and consider each of the separate parts individually.
- With respect to Poland, the defendant invoked Art. 34 UPCA to argue that the scope of a decision of the UPC cannot go beyond the territory of the UPC. It is very clear that Art. 34 UPCA does not say so. It says only positively that a decision of the UPC covers all the countries of the UPC where the European Patent has effect. So a decision is not restricted, e.g., to the one country of the UPC where infringement threatens, but to the whole UPC (as far as the EP is validated in its countries). You have to see the UPC as one country.
- The Court, in my opinion, is right that this has nothing to do with jurisdiction; it has to do with the effect of a decision of the UPC for the UPC.
- The Court is right that it has jurisdiction for Poland and can even deal inter partes with the validity of the EP in Poland as a result of the decision of the CJEU in BSH v Hausgeräte.
- However, I do not understand why, when a European website is accessible in Poland and which website is intended for customers in the European market including Poland, there is no infringement in Poland. I would think that there is then also an offer for sale in Poland.
- Let us assume that the patent is valid on the basis of an auxiliary request. That means that the patent is partly invalid. How would you then have to deal with non-UPC countries? You can, of course, simply say that, in view of the decision about the EP in the UPC, the patent should inter partes be held as invalid. That is (also in light of Art. 138 EPC) not very satisfactory. I think the solution would be to grant an injunction but under the suspensive condition that the patent in Poland, via a national procedure or via the central limitation procedure in the EPO, has been limited in accordance with the auxiliary request which has led to a valid patent in the UPC.
– All comments above are Prof. Hoyng‘s personal opinions –
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.