14 July 2025
Central Division Munich, Bausmann v Raimund Beck
Interim Conference
Background
Bausmann filed revocation proceedings against Raimond Beck.
The interim conference took place online on 11 July 2025.
The Judge-Rapporteur (JR)
- The value of the litigation was said to be €500,000. The JR noted that this is effectively too low, but as it is to establish the ceiling for recoverable costs, he does not see a problem.
- The decision whether a late-filed document can be accepted, will be made during the oral hearing. The claimant can discuss the document during the oral hearing.
- The parties were told that the ceiling for costs is €56,000 and that the Court, in general, will accept an agreement on costs.
- Oral argument is scheduled for 16 October 2025 at 9:30AM.
Comment
- The Technically Qualified Judge (TQJ) was also present during the interim conference, which is certainly useful when technical issues are discussed.
- Apparently, both parties agree that costs should be kept low (or at least the risk with respect to costs if one loses should be limited). This is accommodated by the JR, who accepted a low value for the litigation. This does not make a difference for the UPC as the court fee for revocation proceedings is a flat fee of €20,000. Therefore, the value of the dispute only determines the ceiling of recoverable costs, which in this case, both parties want to be low.
- The JR (who was a practicing attorney and patent attorney before becoming a judge) again tried to convince the parties to agree on costs. From day one, he has always tried to convince parties to agree on costs, but unfortunately without much success. It would be beneficial for clients and the Court not to waste time on costs (and separate cost proceedings). Let us hope that representatives start to see the light!
14 July 2025
Local Division Milan, Pirelli v Sichuan
Reinstatement of case
Background
On 31 October 2024, Pirelli requested an ex parte order for an evidentiary seizure of all tyres of the type HA-51R and HA-51F and promotional materials shown during an exhibition in Milan. The measures were carried out on 6 November 2024. Pirelli started proceedings on the merits on 5 December 2024.
On 3 June 2025 (almost 8 months later!), Sichuan filed a request for an extension of time for filing a request for review of the seizure order (my note: which, according to R. 197.3 RoP has to be filed within one month after the execution of the seizure). Sichuan argued that it had never received a copy of the request for seizure, the attachments, and the order as ordered by the judge who granted the request.
The Court
- The Court stated that Sichuan’s request must be seen as a request for a reinstatement of the time limits pursuant to R. 320 RoP. The Court referred to the decision of the Court of Appeal of 6 June 2025 in Hanshow v Vusion (UPC_CoA_618/2024).
- The Court rejected the request, referring to the fact that Pirelli had (in view of the extreme urgency) asked for an alternative method of service of the order (by a judicial officer at the venue of the exhibition).
- The Court held that the execution of the order was properly carried out according to Italian law (R. 354.1 RoP).
Comment
- If, as in the case of Sichuan here, a party refers to the wrong Rules but the facts qualify for the application of other Rules, the Court will apply such Rules.
Note that R. 320 RoP (re-establishment of rights) requires that a time limit can only be restored if “all due care” has been taken by the party requesting reinstatement and the cause of non-observance of the time limit was outside its control. Given that Sichuan refused the notification at the exhibition, it is already clear that this action by Sichuan could never have succeeded.
15 July 2025
Local Division Milan, Pirelli v Kingtyre
Settlement
Background
Pirelli sued Kingtyre Germany and Kingtyre China for infringement on 5 December 2024.
On 25 February 2025, Pirelli and Kingtyre Germany settled.
Pirelli requested:
- confirmation of the agreement (R. 365 RoP);
- to maintain confidentiality with respect to the amount of damages and legal fees paid by Kingtyre Germany;
- to grant all claims against Kingtyre China;
- to order reimbursement of court fees.
The Court
- confirms the Agreement, referring to R. 365 RoP and R.11.2 RoP;
- orders confidentiality;
- stays the case against the Chinese defendant;
- orders the reimbursement of 30% of the court fees.
The Court states that there are two defendants, and the case against one defendant was settled before the end of the written proceedings. Therefore, it awards half of the 60% that is awarded if the whole case is withdrawn before the end of the written proceedings.
Comment
- The reference to R.11.2 RoP is, in my view, not necessary and also not correct. R. 11 RoP concerns a settlement reached with the initiative or help of the Court or the JR. The Court is right that despite R. 365.4 RoP, it does not have to decide about costs if the parties have also agreed on costs.
- The Court is wrong in reimbursing 30% of the court fees. Court fees are due regardless of the number of defendants, and they should only be reimbursed if the action is withdrawn. Here, the action is not withdrawn but continues against the Chinese defendant.
- I assume (though this is not very clear in the decision) that the case against the Chinese defendant is “stayed” (the Milan Court states that it “ferma” the proceedings against the Chinese defendant; “ferma” means “halted” in Italian), perhaps because the Chinese defendant has not yet been served with the Statement of Claim (?).
15 July 2025
Local Division Düsseldorf, Qiagen v bioMérieux
Confidential Information
Facts
BioMérieux asked for protection of confidential information.
Decision of the JR
- Prior art is not confidential information, and the JR does not accept the argument that knowledge of the prior art would indirectly disclose the exact lengths of the peptides used by the defendant, as this is too unspecific.
- A party is free to engage the attorneys it wishes to engage. The representatives are free to choose their team members, for whom they are responsible.
- A requirement that persons from the claimant who get access to the confidential information should not have been involved in the prosecution of the claimant’s patents is not acceptable.
- External experts who get access to the confidential information should be mentioned by name.
Comment
- In this case, the defendant even wanted the claimant’s representatives to name two assistants who would get access and invented “procedural conditions”. That procedural condition, in fact, could have been read as the defendant implicitly threatening to remove all confidential information from the Statement of Defence if the JR did not grant an order precisely as the defendant indicated. Luckily for the defendant, the JR pretended not to understand that “procedural condition,” as I assume a defence without the confidential information would probably have been disadvantageous for the defendant.
- I think the JR got everything right:
- Prior art (which is by its nature public) is not confidential information.
- Representatives choose their own teams, for which they are responsible.
- Persons from the claimant who get access do not have to be employees but must be named.
15 July 2025
Court of Appeal, Valinea v Tiru
Evidentiary seizure
Facts
- On 23 December 2024, the Paris Local Division issued two ex parte orders allowing patentee Tiru to carry out an evidentiary seizure and an inspection against Valinea and Maquin.
- Valinea asked for a review of the orders (R. 197.3 RoP and R. 197.4 RoP), arguing:
-
-
-
-
-
-
- no urgency
- no risk of destruction or disappearance of the evidence;
- Tiru had omitted relevant information in their request.
-
-
-
-
-
-
- The Paris Division refused the review of the orders.
- Valinea appealed.
The Court of Appeal
- When examining a request for a seizure, the Court of First Instance takes into consideration the urgency of the case in order to determine whether to hear the defendant, only the claimant, or to decide without hearing either party. The Court further takes into consideration the reasons for which it is necessary to preserve the evidence and the facts and proof that are stated in the request.
- The necessity of the measures is judged as of the time of the request.
- There is a difference between urgency in preserving evidence and a request for preliminary measures. For the latter, the Court has to look at any unreasonable delay (R. 209.2(b) RoP), which is not a requirement in R. 194.2(a) RoP.
- As to the risk of destruction, that should be based on the probability that evidence will get lost or will no longer be available.
- As to the duty of candor, the applicant in an ex parte application has to disclose any material fact that should influence the decision whether or not to hear the defendant.
- However, there is no rule requiring that for an evidentiary seizure, there must be a sufficient degree of certainty that the patent is valid.
The Court dismisses the appeal as the Paris Local Division did not overstep its discretionary power
Comment
- This decision is an important guide for representatives who would like to obtain an ex parte order for an evidentiary seizure.
- From the decision, it appears that it is not very difficult to obtain such an ex parte order. However, in my view, the decision should not be read to mean that these orders should be routinely granted, as seems to be the case in some Local Divisions.
- It remains good to realize that it is a very invasive tool, certainly in situations where the defendant did not expect anything (and I have seen that happen in practice!).
- However, the decision makes clear that:
(a) there should be a “necessity”. So if the information can be obtained in another, less invasive way, the order should not be granted, certainly not without hearing the defendant;
(b) the simple sentence, “there is a risk that the evidence will be destroyed,” is not enough. The applicant should motivate why, without the seizure, there is a (serious) probability that the evidence will no longer be available;
(c) one cannot expect the judge dealing with the application to study invalidity arguments as in preliminary injunction cases. An applicant will have to inform the judge about a pending opposition, a decision of a national court, and decisions of patent offices, and in my opinion, also about facts that prima facie raise very serious doubts about the validity of the patent. If there is prima facie serious doubt, because, for instance, the UK court has invalidated the patent or because of certain prior use by the applicant, the Court should, in principle, decline to grant the ex parte measure. Therefore, there are certainly facts relating to validity that must be mentioned in the application.
- The Rules do not expressly provide for the possibility of filing a protective letter against an ex parte application for an evidentiary seizure. Such a protective letter can, according to the Rules, be filed to protect against provisional measures. However, if I were to fear such an evidentiary seizure and consider it completely unjustified, I would file a protective letter against both such a seizure and an ex parte preliminary injunction.
- Whether a protective letter filed with respect to an evidentiary seizure will be read by the judge is questionable, as the Registrar will, in principle, only forward a copy if an application for provisional measures is filed. However, a diligent judge who has some doubts about an ex parte request for an evidentiary seizure may ask the Registry if a protective letter has been filed.
15 July 2025
Local Division Munich, Promosome v BioNTech/Pfizer
Confidentiality
The Court
- Information for which a confidentiality order has already been given does not need a new confidentiality order if contained in a different document.
- The license agreements are known to all parties, which means that a confidentiality order between the parties is not necessary.
- There is no necessity to order an oral hearing with closed doors because the confidential information is already protected by R. 262.A RoP and R. 262.2 RoP.
- The decision to have part of the hearing take place behind closed doors is for the Court to make in the context of the oral hearing.
Comment
- All the confidential information is apparently already protected under R. 262A RoP and R. 262.2 RoP. This means that the public will not get access (although a member of the public can challenge that confidentiality).
- As for the license agreements which are known to the parties, if a member of the public were to ask for it, parties would be given 14 days to request confidentiality (see R. 262.2 RoP).
15 July 2025
Local Division Munich, Lenovo v Asustek
Hearing
The JR
The JR ordered a further interim conference with FRAND as the subject, which will be in English and will not be accessible to the public.
Comment
- If all parties agree, there is no problem with using a different language during the interim conference. In fact, Lenovo should have filed this international case in English!
- Is the JR going to make an effort to have the parties agree on the FRAND rate?
16 July 2025
Local Division Mannheim, FUJIFILM v Kodak
Enforcement
Facts
FUJIFILM notified the Court that it intended to enforce a judgment and requested the Court to issue a warning to Kodak. The warning was to state that if Kodak did not recall and destroy the infringing products within a week, it would face a penalty of €30,000 per day.
After hearing Kodak, the Judge-Rapporteur (JR) rejected FUJIFILM’s request. FUJIFILM then asked the Court for a review of the JR’s order.
The Court
The request for review was rejected on the same grounds that the JR had used to reject the original application. The Court stated that its main decision had not included specific time periods for recall and destruction, nor had it set any penalty sums. The Court advised that FUJIFILM should have appealed the main decision if it wanted to include fixed periods and penalties. If FUJIFILM did not want to appeal then, FUJIFILM’s proper course of action would have been to make an application to impose penalty payments under R. 354.4 RoP.
Comment
- The JR’s decision suggested that the more direct path for FUJIFILM would have been to serve the court’s main decision on Kodak with a demand to comply within a reasonable timeframe and then, if Kodak failed to comply, to make an application under R. 354.4 RoP to impose penalty payments.
- It is also noteworthy that Kodak’s argument in its defence was also incorrect. Kodak claimed FUJIFILM should have appealed, but this was incorrect because FUJIFILM’s current request was a separate application and not made under R. 354.4 RoP.
- In a main case where actions like recall and destruction are requested, it is advisable to also request fixed compliance periods and penalty sums from the outset and to provide reasoning for their reasonableness.
16 July 2025
Local Division Munich, 10x Genomics v Bruker
Reimbursement of court fees
Background
On 1 June 2023, the claimant applied for a preliminary injunction (PI), which was granted.
On 31 August 2023, the main action was filed, followed by a counterclaim for invalidity. The written procedure has not been formally closed.
Parties filed more than 30 different applications during the written proceedings. On 26 February 2024, the Court of Appeal reversed the PI order. The defendants filed for compensation for the damages caused by the PI for €40 million. Parties settled. The claims in the main case and the claim for the damages caused by the PI were withdrawn.
Requests
The claimant requested reimbursement of 60% of the paid court fees (€76,000). The defendant asked for all the court fees to be reimbursed (the defendant paid €20,000 for the revocation and €253,000 for the compensation case).
The Court
In view of the exceptional amount of work, the Court ordered a reimbursement of 40% instead of 60% of the fees paid for the main case.
The Court ordered a 60% reimbursement in the compensation case.
The Court does not follow the reasoning of the defendant that for such a compensation case, no fee has to be paid at all because that case is a case for damages according to R. 370.2(a) RoP, arguing that “damages” include compensation (see R. 125 RoP).
Comment
- The Court has been very modest in still returning 40% of the fees. I think that the exceptional amount of work the Court had to do would have justified no return of fees at all.
- The decision with respect to the fees in the compensation case is fully in accordance with the Rules, which means that in that case, the Court keeps around €100,000, which compensates nicely for the work in the main case!
16 July 2025
Central Division Paris, Kinexon v Ballinno
Cost decision
Facts
The claimant asked the Court to order confidentiality of the representative fees and further costs (as it is a business secret which is sensitive because of the competition with other law firms for UPC work).
The defendant argued that the confidentiality rules are not written for such protection.
The JR
The JR refused the application, as R. 262A RoP is written for procedural information. The argument that the information would give information about the internal resources of the claimant is of a too general nature.
The Court noted an implicit request based on R. 262.2 RoP and allowed that. The information is not publicly available.
Comment
- The Court’s justification for not making the information public is not very convincing. The Court reasoned that because representative fees are part of a private agreement, they do not provide interesting information to the public.
- As stated before, I think that it is very interesting for the public (companies/persons seeking a representative) to have detailed information about the costs of representatives. I do not understand why that transparency and information is allowed by the Courts to be hidden.
- I add immediately that if you litigate in the UPC your first concern should be quality and not go to an unexperienced but maybe cheaper litigator. As I have said before, only a few members of the bar belong to that category and you are not an experienced litigator only because you are a patent attorney with a litigation certificate. However, also among the experienced litigators there are serious price differences. A British Rolls Royce is far more expensive than a French Citroen DS8 but they are both of excellent quality.
16 July 2025
Local Division Düsseldorf, Husqvarna v Positec
Change of language
Background
Husqvarna AB started infringement proceedings against Positec on 16 April 2025. Positec (a German company) asked for a change of language to English (the language of the patent).
The President of the Court in First Instance
The President refers for the criteria to be applied to UPC_CoA_101/2024 and UPC_CoA_354/2024. From the criteria in these cases, the language of the patent and the language commonly used in the technology are alongside all other circumstances of most relevance.
The President allows the change to English.
Comment
- I cannot imagine what reason Husqvarna, a Swedish company, had to file a case in German, apart from the convenience of its German representative. I have no doubt that there are competent Swedish representatives who are absolutely fluent in English and speak Swedish. There is no reason for a Swedish company to use a German representative, even when suing in a German Local Division, because the Rules of Procedure are the same everywhere. Why not sue in the Nordic-Baltic Division, which is less busy than Düsseldorf (assuming that infringement also takes place in the territory of that Division) and have the hearings in Stockholm?
- The request of the German defendant is to be applauded, and the decision of the President is the correct one.
- If the patent is in English, the language of the technology involved is English, and the companies involved (even when they are local, here German) operate internationally, their cases should be filed in the UPC in English. More generally, cases should be evenly spread over the different Local Divisions. The general use of English and an even spread of cases over the different divisions is of importance for the credibility of the UPC as an international forum for patent disputes.
16 July 2025
Local Division Mannheim, Fingon v Samsung
Extension of time
Background
Defendants request extension of time for their rejoinder and their reply to the Defence to the counterclaim for revocation by three weeks.
The JR
Only special circumstances (not holidays, etc.) justify extensions of time. The JR considers this justified in this case because several of the software applications introduced by the claimant in their reply in the infringement proceedings come from a third party. In order to be able to answer, the defendant needs information from the third-party software developer and the opinion of the private expert who has to perform reverse-engineering.
Comment
It is good that the JR makes it clear that extensions are only granted in exceptional circumstances, and it seems credible that there are exceptional circumstances in this case. Moreover, the JR states that the extension will not affect the date for the hearing, so the case will, in all likelihood, be concluded within 14 months.
17 July 2025
Local Division Mannheim, Faro v PMT
Request for postponement oral hearing
Facts
The defendant asked to postpone the oral hearing in PI proceedings.
The JR (in consulting with the Presiding Judge)
- You cannot obtain a postponement of a hearing in PI proceedings because of the urgency of such matters, except in very special circumstances.
- It is certainly not a special circumstance if the representative or patent attorney is on vacation on that date; postpone your vacation or have a colleague replace you.
- That is certainly the case if you ask for a postponement after the date of the hearing has been determined and also do not show any papers with respect to the booking of such a vacation.
- If the other parties do not have a serious objection, then the representative can take part by video link.
Decision
Request refused. The claimant is invited to state objections against the participation of the defendant’s representative by video.
Comment
- The representative has planned to have his vacation on September 1. His client has been sued in PI proceedings, and the Court has set the date for the hearing on that date. What should you do when you want to work as a representative at the UPC?
- The Court teaches a lesson. Old national habits do not count in the UPC! Vacation (plans) are no reason for extensions. As I have written earlier, if you want to be a representative, you should be willing to work for your clients during the Christmas break, local festivities (like Carnival), and the sacred holiday month of August (in France); otherwise, you might consider a different job (perhaps with lower compensation) where you only have to work 35 hours a week and can plan your 5 weeks of vacation yourself. I hope representatives now stop bothering the UPC with this kind of requests.
- The Mannheim Division is (too?) nice to even suggest participation by video (if the other parties do not object). If I were a client and my representative suggested that he would represent me in a PI hearing by video link from the beach in Mallorca, I would immediately look for a different representative!
- Note that our UPC Unfiltered appears 52 weeks per year (with the cooperation of at least 5 people to have it appeared in written form and as podcast).
17 July 2025
Local Division Munich, Sanofi v Accord
UPC_CFI_463/2024; 496/2024; 374/2024; 503/2024
Report Interim Conference
Facts
- The EPO Board of Appeal has not yet given a reasoned decision. (The Board of Appeal maintained the patent in the granted version after the oral hearing.)
- The defendant wants to comment within three weeks after the reasoned decision is published.
- Sanofi wants to comment before 15 August 2025 and explained that the hearing date of the French Court of Appeal (the patent had been invalidated in France in first instance) was not yet known.
- The JR stated that one of the important points with respect to obviousness was what somebody working in the industry would have derived from a Phase III trial at the time that had passed since it started (my note: the priority date, I assume).
- He asked the parties for experts who could do “hot-tubbing” during the oral hearing on this point.
- The final interim conference was set for 12 September 2025, and the hearing date for 14-17 October 2025. Sanofi had to draft clearer briefs (on what relates to which defendant) in the future.
- Parties are to comment on the Board of Appeal’s decision within three weeks after it becomes available, and parties can make suggestions for the next interim conference.
Comment
- Let us hope that the Board of Appeal issues its decision timely. I have not read that the Court has asked the Board of Appeal to issue its written decision as soon as possible, which may help to get a decision from the Board of Appeal, for instance, at the end of July (which is more than 6 weeks after the oral hearing).
- Can you imagine two experts “sitting in a hot tub” during oral argument (open to the public), debating what the skilled person at a certain moment (the priority date) expected from an ongoing Phase III trial?
This whole idea (but not during a public oral hearing, but in private) was born in Australia, where the experts of the different parties were put together (without the lawyers present) to come up with one answer to the judge’s questions. That worked in Australia, but when it was tried in The Netherlands, it did not work. Apparently, in Australia, the experts did not act as a hired gun for a party (as some party experts unfortunately do), which under the Rules of Procedure of the UPC should also not be possible (see R. 181 RoP jo. R. 179 RoP).
18 July 2025
Central Division Milan, Labrador v bioMérieux
Interim Conference
Background
The Court (full panel) organised an interim conference for which it sent around an agenda 3 days before the conference (which took place on July 14).
Order of the Court
- Parties are to provide the information as stated in the minutes.
- The Court told bioMérieux that it had counted about 50 invalidity attacks with a total of 16 prior art citations and that it would be impossible to discuss these all during an oral hearing and would run the danger of the Court losing focus. It told bioMérieux that if it wants to convince the Court, it should restrict itself to three attacks and outline a straightforward and consistent strategy. The Court indicated a preferred structure.
Comment
- My experience is that if you need 50 invalidity attacks, the patent is probably valid!
The approach of bioMérieux is typically the approach of a patent attorney who thinks that the UPC is the same as the EPO. You throw 50 validity attacks over the fence and let the Opposition Division or Board of Appeal choose one. - That is clearly not how a court of law such as the UPC would approach invalidity. The task of a representative is to make a selection, decide what the best attacks are, and how to convince the Court that these lead to invalidity. The Milan Central Division has been very accommodating in factually telling bioMérieux how to conduct revocation proceedings in a court of law.
- If you have no experience as a patent attorney (or member of the bar) litigating patent cases in a court of law, then it is in the best interest of you and your client to team up with experienced litigators.
- The idea that if you have a simple law degree or no law degree but a 48.2 UPCA certificate, you are an experienced UPC representative is wrong.
18 July 2025
Local Division Mannheim, FUJIFILM v. Kodak (EP 3 511 174)
Decision with respect to United Kingdom
Background
- Infringement proceedings with respect to Germany and the United Kingdom (UK).
- The Court split the proceedings into proceedings for Germany and proceedings for the UK in order to wait for the decision of the European Court of Justice in BSH Hausgeräte v. Electrolux (C-339/22) of 22 February 2025.
- With respect to Germany, the Court ruled that the patent was valid and infringed.
- This decision relates to the UK.
Decision of the Court
- Amendments: the fact that amended claims are invoked in litigation does not mean that the Court cannot give a decision for the UK. The fact that UK law requires a notification of the UK patent office for claims that have been amended is irrelevant because procedural requirements are governed by the law of the forum. Moreover, such notification is also not required in the UK for continuing the proceedings inter partes.
- Jurisdiction: the Court has jurisdiction with respect to the infringement because the defendant is domiciled in the UPC area (see BSH Hausgeräte v Electrolox).
- Validity: the UPC has no jurisdiction to revoke the national part of a European patent other than for UPCA contracting member states. However, the UPC Court can assess the validity inter partes.
- Infringement: applying UK law, the Court ruled that the acts of defendant 2 (export to the UK) constituted infringement. Furthermore, because defendants 1 and 3 failed to argue why they should not also be held responsible, the Court ruled that they were also infringing.
- Prior use defence: also under the UK Patent Act, Kodak has not established private prior use.
- Remedies: the Court granted the same remedies as in the case with respect to Germany, referring to the relevant UK law. Despite the fact that the Court of Appeal has ruled that an act of infringement justifies a general injunction not to infringe the patent, the Court did not enjoin manufacturing.
Comment
- A textbook cross-border decision as granted by the Dutch courts in PI proceedings since 1988. Nothing new under the sun, except that the European Court of Justice has now clarified that this is also possible in main proceedings, since an invalidity defence can be addressed inter partes.
- In my opinion, the Court’s decision is correct for the following reasons:
- Does the UPC have jurisdiction?
The defendant is located in the UPC. That is exactly the same as in BSH Hausgeräte v Electrolux, except that the country for which relief is demanded is a non-EU country, but even in such a situation the Court has jurisdiction (see paragraphs 59 and 60 of BSH Hausgeräte v Electrolux). As to validity, the Court, in principle, also has jurisdiction as Art. 24(4) of the Brussels I Regulation (recast) does not apply (if there are no special treaties applicable), which, as correctly observed by the Court, is not the case here. International rules of comity may prevent the Court from giving decisions that interfere with the authority of a third state but do not prevent the Court from giving inter partes decisions about validity. - What law to apply with respect to the technical infringement question?
The law of the country for which relief is sought, but if the European patent has been held valid and infringed in the UPC, it is for the defendant to prove that it is different for the country concerned (which should also apply the EPC). - As to material acts of infringement, you also apply the law of the country concerned.
- Procedural law: the law of the UPC.
- Remedies: the law of the country concerned.
- The conclusion is that with respect to infringement by a defendant located in the UPC (Art. 4 Brussels I Regulation (recast)), the UPC can, in principle, deal with all EP countries.
- It is also clear that Art. 7(2) Brussels I Regulation (recast), regarding jurisdiction based on place of infringement, does not confer such jurisdiction (except to a certain extent as provided for in Art. 71bis (3) Brussels I Regulation (recast)?).
- The question remains what the situation is with respect to co-defendants (Art. 8(1) Brussels I Regulation (recast)). BSH Hausgeräte v Electrolux did not deal with co-defendants. Within the EU, I do not see a problem (See the European Court of Justice in Solvay v Honeywell), but I think that the UPC should perhaps not grant injunctions against, for instance, UK companies (not being a subsidiary of the UPC-based main infringer?) for the UK. That may trigger anti-suit injunctions and comity concerns.
18 July 2025
Local Division Mannheim, FUJIFILM v Kodak (EP 3 476 616)
Auxiliary requests
Decision of the Court
See the decision above for facts, etc. The Court, in this case, followed the decision in Germany for the UK. In that decision, the Court held that if a party wants to rely for validity on a claim other than an independent claim, it has to file an auxiliary request (R. 30 RoP).
Although the Court recognizes that the claimant does not have to file an application to amend the patent pursuant to R. 30 RoP because the proceedings in the UPC do not concern the existence or content of the UK patent, the Court applies R. 30 RoP mutatis mutandis because of the protection of the defendant’s right to an effective defence!
Comment
- I have already stated that it seems the world is turned upside down to require an R. 30 RoP request, which deals with “an amendment of the claims of the patent”, for simply invoking a claim that has already been granted. What is there to amend if you want to invoke a valid claim? In my view, the rationale of protecting the defendant is also not well-founded. If the claimant alleges in the Statement of Claim that the dependent claims are also infringed, then the defendant is already on notice that arguing only the invalidity of the independent claims is not sufficient! Instead of correcting what appears to be a flawed decision regarding Germany, the Division takes the matter a step further by requiring auxiliary requests in proceedings where R. 30 RoP is not even applicable!
- It is important to realize that this is not an innocent debate among lawyers about procedural rules; it can result in a claimant being unable to invoke a perfectly valid claim against a clear infringement!
– All comments above are Prof. Hoyng‘s personal opinions –
🎧 Listen now:
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”.