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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18 June 2025 (published only last week)
President of the Court in First Instance in proceedings before the Local Division Düsseldorf, Walt Disney v Interdigital
Change of language
Background
One of the eleven defendants requested a change of language to English. None of those eleven defendants are German, and the claimant is a French company. A month after the application was filed, all other defendants indicated they joined the application.
Decision
The President ordered a change of language from German to English.
Comment
The same situation already occurred in a similar case (UPC_CFI_86/2025). One has to wonder why a French company files in German in a German Division against US and Dutch companies. It seems very strange, especially since the patent and prior art were both in English. Why not file in a less busy Division like The Hague, where local judges are fluent in English and representatives are perfectly happy to file in English, and would certainly not suggest filing in the local language (in this case, German)?
23 June 2025
Local Division Düsseldorf, Aesculap v Shanghai
Instructions for Oral Hearing
The Judge Rapporteur (JR)
The JR issued a Rule 9 order in preparation for the oral hearing:
- The JR divided the (very long) claim into different features and indicated that the Court wishes to discuss the claim according to this list of features.
- The JR referred, with respect to Aesculap’s extensive request for information (Art. 67 UPC), to the Court of Appeal’s decision of in Insulet v EOFlow.
Comment
- It certainly makes sense for the Court and the parties to use the same arrangement of claim features.
- The JR suggested that Aesculap restrict its request for information to the source and distribution channels of the attacked product and not to request data for the calculation of damages. In other words, the Court is unlikely to grant that request!
23 June 2025
Court of Appeal, Sumi v Syngenta
Timely payment court fees
Facts
- Syngenta obtained a preliminary injunction (PI) against Sumi Agro. The PI order stated that it would be revoked if Syngenta did not start proceedings on the merits within 31 calendar days or 20 working days, whichever was longer, from 27 August 2024.
- Syngenta uploaded a Statement of Claim on Friday, 27 September 2024. On the same day, it ordered the transfer of the court fee to the Court’s bank account. The Court received the funds on Monday, 30 September 2024.
- Sumi Agro filed a request for revocation.
- The JR, and after review, the Local Division in Munich, dismissed the application.
- Sumi Agro appealed.
The Court of Appeal
- Fees are considered paid if the order to transfer the fees is given.
- Sumi’s appeal was dismissed because it was based on the incorrect assumption that court fees are paid when the money is received by the UPC.
Comment
- This is a logical and expected decision, as it provides certainty about the date of payment and thus makes life easier for representatives and the Court. As long as the representative ensures that every time they lodge an application/statement for which a fee is due, they simultaneously instruct their bank to transfer the court fee, they will be compliant.
- Note that the Court of Appeal logically added that if the payment is ultimately not received by the Court, then no payment has been made. So, if the representative does not have enough money in the bank, or for any other reason the funds are not received by the UPC, there is no valid payment.
- All these problems could be avoided if a law firm could have an account with the UPC, and amounts due could be automatically paid from such an account. This would also improve the UPC’s cash flow position, but this is a matter for the Budget Committee to consider.
23 June 2025
Court of Appeal, Arkyne v Plant-e Knowledge
UPC_CoA_46/2025; UPC_CoA_48/2025
Settlement
Background
The Local Division granted an injunction against Arkyne and dismissed the counterclaim for revocation. Arkyne filed an appeal against both the injunction and the dismissal of its counterclaim for revocation.
The Court of Appeal
- The Court of Appeal was informed about a settlement between the parties and was asked to confirm the settlement agreement and to order that the unredacted version be kept confidential from the public (R. 262.2 RoP).
- The Court of Appeal published the redacted version in its judgment, stating that the decision about confidentiality would be made when a member of the public requests the agreement.
- An amount of 60% of the court fees are to be reimbursed to the parties as the settlement was reached before the end of the written phase.
Comment
- Rule 365 RoP states that after such confirmation of the settlement agreement, “the agreement may be enforced as a final decision of the Court.” So, if the agreement stipulates that one party will cease to sell the product, such a clause may be enforced as if the Court had issued an injunction.
- The Court applied Rule 262 RoP as intended by the drafters, which means the agreement will be placed on the register in its unredacted version. If a member of the public requests it, the registrar will first ask the parties for their views. The parties can then object and argue that only the redacted version should become public due to confidentiality reasons. The member of the public can then dispute the necessity for confidentiality.
- I find this approach generally unpractical. I believe it would be much better if, when a party or parties request confidentiality, the Court decides on it then and there. If the Court agrees with the request, it would mean that a member of the public, when asking for access, would be told that the requested information is (partially) confidential, which that member of the public could then dispute if they wished.
- With respect to settlement agreements (as in this case), this way of handling a request for confidentiality is even the appropriate way, in my opinion. Rule 365.2 RoP is, in my opinion, a lex specialis of Rule 262 RoP, but apparently, the representative based their request for confidentiality on Rule 262 RoP and not on Rule 365.2 RoP.
26 June 2025
Court of Appeal, Ballinno v UEFA
Security of costs
Background
In first instance preliminary injunction (PI) proceedings, UEFA and others obtained an order for security for costs for €56,000. Ballinno appealed.
In the meantime, Ballinno did not pursue its appeal against the refusal of the PI but continued with the appeal against the security order.
The Court of Appeal
- The Court of First Instance was correct to order security.
- Ballinno’s bank account balance was insufficient because Ballinno would also have to cover its own lawyers’ fees.
- Ballinno provided no further information regarding its own financial situation.
Comment
- Why did Ballinno pursue the appeal regarding the security order after abandoning the appeal of the PI? The most obvious reason I can see is that they wanted the money back to pay others, not UEFA. As Ballinno was a “one patent company” (whose asset, the patent, was not infringed), it would have been easy to pay others (such as their lawyers?) and not UEFA, and then to bankrupt or wind up their company.
- The whole scheme appeared suspicious, especially as Ballinno provided no financial information. The Court of Appeal’s decision was predictable.
27 June 2025
Central Division Munich, Baussmann v Beck
Interim proceedings
The Judge Rapporteur (JR)
The JR announced that the written procedure would close on 30 June 2025 and published an agenda for the interim conference on 11 July 2025:
- Establishment of the amount in dispute.
- Possibility of settlement.
- Is it necessary to file an amendment of claim for a change of the patent?
Comment
- An interesting point is the question of whether or not the patentee claimant has to file an amendment of claim in a situation where they are defending a combination of claim 1 and two subclaims. I have already expressed the view that this should not be necessary (assuming the claim set is formulated in the patent such that this combination is also claimed in the original claims). It would be very strange to decide differently because there is no amendment of the claims (R. 30.1(a) RoP) as the claim was already present in the patent. Indeed, a claimant in a revocation action who wants to revoke the patent in its entirety cannot simply argue that claim 1 is invalid and that thus the subclaims and combinations of such claims (as also claimed) are invalid. They must allege the invalidity of all claims. Certainly, they can argue that claim 1 is invalid and that what is added by the (combination of) subclaims does not contain any matter which, in combination with claim 1, would be inventive. In their defense, the patentee (in view of the front-loaded character) should clarify which granted combinations they wish to defend if claim 1 is held invalid, and why they are inventive. They cannot do this at a later stage and surprise the claimant in the revocation action.
- The JR correctly applied Rule 35 RoP by announcing the date of the closure of the written procedure, rather than (as is sometimes seen) simply stating that the written procedure is closed. This provides parties with the opportunity to request, with a reasoned submission, a further exchange of written documents, which in my opinion, should only be allowed in exceptional circumstances.
27 June 2025
Local Division Mannheim, Centripetal v Palo Alto
Extension of time
Decision
The Judge Rapporteur (JR) extended at the request of the defendant the period for filing a written statement by two weeks because the technical internal person providing technical support could not fly back from Israel due to airport closure during the hostilities. However, if the defendant wishes to file a confidentiality request, the period is shortened to 9 days to ensure the case can be argued on the established date.
Comment
The case suffers no delay. Therefore, the decision under the circumstances seems reasonable.
27 June 2025
Local Division Munich, Sanofi v Zentiva
Review
Facts
The Judge Rapporteur (JR) had decided:
- To deal with the preliminary objections in the main proceedings.
- To deal with all other requests following the main oral hearing.
- For the further written proceedings, to state the periods of Rule 29(d) RoP and Rule 29.2 RoP.
- That the written proceedings would be closed on 8 August 2025.
- The date for a first interim conference would be 17 July 2025, to discuss the outcome of the appeal proceedings before the Board of Appeal.
- To set a date for a second interim conference on 12 September 2025 and the date for oral argument on 14-17 October 2025.
Zentiva requested a review. Among other points, it stated that it was unclear to which requests from Sanofi it had to react, in other words, what was part of the proceedings. They also complained that the JR had stated that an interim award of damages could be based on an estimate.
Decision of the Court
- A typo (Rule 29.2 RoP, which should be Rule 29(e) RoP) was corrected.
- The Court dismissed the request for review and refused to grant leave for appeal.
Comment
- It all started with a rather unclear Statement of Claim and trying to get things in order with some help from the JR.
- Lesson: If you are a lawyer in your own country and wish to act as a representative in the UPC (for which there are (unfortunately?) no further requirements), start studying the UPCA, the Rules of Procedure, and the case law of the Court of Appeal. There are requirements for patent attorneys but by just following a course which nobody fails you of course do not become a lawyer.
- The defendants in this UPC drama were somewhat unhappy because the JR did not make a decision about their Preliminary Objections and Sanofi’s numerous requests. However, they should have realized (just by looking at the case law) that the chances of getting that order of the JR reviewed were close to zero. Trying to make a clever point because of something that is clearly a typo might work in a more formalistic national jurisdiction, but not in the UPC.
- It is, of course, not doubtful in the UPC that the Court can make an interim award of damages based on a reasonable estimation.
- I understand some of the frustration if the JR does not make decisions and refers them to the final oral hearing, because you will then have to address all the open points. This may be caused by the fact that Munich is a very busy Local Division, and as quite a few cases are settled, the JR may think it is better not to do all this work before it is truly necessary. This is understandable but not truly in the spirit of the UPC.
- This automatically brings me to the question: why did Sanofi (a French multinational) bring this case in the busy Local Division in Munich? If the reason is a persistent rumor that Munich is more patentee-friendly, then I invite you to look at the statistics, which do not confirm this!
27 June 2025
Local Division Mannheim, Irdeto v DJI
Harmonization time periods
Background
Irdeto sued 4 defendants for patent infringement. The Statement of Claim was filed on defendant 2 on 14 March 2025 and on defendants 3 and 4 on 29 April 2025. Service of the Chinese defendant 1 is still pending. Parties agreed that the Chinese defendant would appear voluntarily and that the time period for the Statement of Defence for all 4 defendants should be (claimant: 1 September 2025 / defendants: 15 September 2025). The parties could not agree on the date! So parties 2-4 asked the Court for an extension to September 15, apparently without guaranteeing the Court that defendant 1 would then appear voluntarily.
Decision of the Court
The Judge Rapporteur (JR) extended the period for parties 3 and 4 until 14 August 2025.
Comment
- All parties (representatives) lost out because of their stubborn attitude. Of course, the claimant is worse off because they could have resolved the known severe difficulties of serving in China by accepting 15 September 2025. Defendants are also punished by the JR because they only received a two-week extension for defendants 3 and 4, instead of four weeks.
- I think the JR was even kind to grant these two weeks. Why can representatives not be reasonable? I think that if they had agreed on 7 September 2025 and the voluntary appearance of the Chinese defendant, the JR would have agreed!
- Here again, we see that the representative (because they are German?) advised their Dutch client, in a case also involving Dutch defendants, to go to the busy Mannheim Division and not to the Local Division in The Hague, even though their client is located 20 minutes from The Hague. The client now has to travel to Mannheim for the oral argument. It all makes no sense, and if that German representative thinks “Bei uns ist alles besser” (everything is better with us), then that is certainly not the case in the UPC, where all Divisions are equal, and in all those Divisions, every representative who masters English can do their work as all Divisions apply the UPCA and the Rules of Procedure.
– All comments above are Prof. Hoyng‘s personal opinions –
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