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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11 August 2025
Local Division Munich, Syntorr v Arthrex
UPC_CFI_ 114/2025; UPC_CFI_358/2025
Security for costs
Facts
The defendant asks the Court to order security for a total amount of € 3.300.000. The claimant requests the Court to order no security, or to lower the amount and to allow the security to be in the term of an “anti-avoidance” insurance with a licensed EU insurer.
The JR
- announced the appointment of a Technical Judge;
- confirms the agreement on the use of visual aids during the hearing;
- informs the parties that during the oral hearing they have to discuss the points raised by the Court and will get 20-30 minutes for a closing argument;
- sets the value of the dispute;
- orders that one week before the hearing parties will give a legal cost estimate;
- states that parties are encouraged to talk (about settlement);
- sets the hearing date: 22 August 2025 at 10 a.m.
Comment
- As far as can be seen this is only an infringement case which explains the late appointment of the Technical Judge which is not an obligation in (only) an infringement case, but parties/the Court can request this. Apparently, that is what happened.
- If the Court wants to organise the hearing as indicated, it is hoped for the parties that a few days (week) before the hearing they receive the points the Court wants to discuss. Representatives should make sure that they raise all other points which they consider important as they will not be able to do that (for the first time) on appeal.
- The Court is apparently aiming at an agreement on costs so that separate proceedings are not necessary. As both counsels are Dutch and are used to try to settle costs by agreement, it is likely that clients can be spared the costs of separate cost proceedings.
12 August 2025
Local Division Düsseldorf, Headwater v Samsung
Change of language
Facts
Both parties ask to change the language of the proceedings to English (the language of the patent). The JR grants the request.
Comment
That of course makes sense between two international companies. You only wonder why the German representative of a claimant, acting for a US company, started the case in German, thereby causing, we assume, quite some extra translation costs for their clients.
12 August 2025
Local Division Düsseldorf, American Wave Machines v Surftown
UPC_CFI_837/2024; UPC_CFI_349/2025; UPC_CFI_394/2025
Confidentiality
Facts
The defendant no longer objects against the natural person of claimant who gets access to the confidential information.
The JR
The JR changes the confidentiality order issued on 1 August 2025 accordingly.
Comment
A hopeful sign of a cooperative representative and party!
12 August 2025
Court of Appeal, Lionra v Cisco
Extension of term
Facts
On 19 February 2024, the Local Division Hamburg rejected Lionra’s infringement claim and Cisco’s counterclaim for revocation. Lionra appealed.
On 19 June 2025, Lionra filed its Statement of Grounds in Appeal together with a R. 262A RoP and a R.262.2 RoP request for confidentiality. On 17 July 2025, Cisco got access to the unredacted version of the Statement of Grounds.
Cisco asks for an extension for answer and cross appeal until 17 October 2025. Lionra states that one week or alternatively 10 calendar days is sufficient.
The JR
One month is too long as the confidential part of the Statement of Grounds is very small.
One week/ten days is too short because Cisco has to redo its expert report.
Decision: Cisco gets a two-weeks extension.
Comment
These representatives have not yet learned to pick up the phone, being reasonable and agree with the same result. They spent their client’s money on drafting arguments and waste the time of the Court of Appeal, forcing the Court of Appeal to draft a reasoned order.
13 August 2025
Local Division The Hague, Winnow v Orbisk
UPC_CFI_327/2024; UPC_CFI_557/2024
Decision on the merits
Facts
Winnow sues Orbisk for infringement. Orbisk denies infringement and files a counterclaim for revocation.
The Court
- Claim interpretation: the Local Division cites Court of Appeal re Nanostring v 10x Genomics of 26 February (11 March) 2024 and refers also to G1/24 of the Enlarged Board.
- Parties more or less agreed on the skilled person.
- The Court ruled that the claim element “cleaning calculated weights” should be given a very broad meaning and can present any type of cleaning relating to weights and/or categorising.
- The patentee agreed that it could not rely on priority because the priority document did not contain the invention as claimed.
- During the interim conference, it was decided not to decide on the R. 190 RoP request (Evidentiary Seizure with respect to alleged prior public use) and decide on it during or after oral argument. In view of the non-infringement outcome the request is not relevant anymore and is dismissed.
- With respect to inventive step the Court holds the following in no. 35:
“According to Art. 56 EPC, a claimed invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. An objective approach must be taken to the assessment of inventive step. The subjective ideas of the applicant or inventor are irrelevant. Inventive step is to be assessed from the point of view of the Skilled Person based on the state of the art as a whole, including the Skilled Person´s common general knowledge. The Skilled Person is assumed to have had access to the entire publicly available art on the relevant date. The decisive factor is whether the claimed subject matter follows from the prior art in such a way that the Skilled Person would have found it, on the basis of that person’s knowledge and skills, for example by obvious modifications of what was already known. As a tool to assess whether a claimed invention was obvious to a Skilled Person, the Court will follow the problem and solution approach (“PSA”) as suggested by the parties and as also used by the EPO and the Munich Local Division. Given that parties followed the PSA, the Court need not decide if the PSA is the (only) approach to be followed. Any approach in fact would render the same result in this case. In this context it is necessary to determine a realistic starting point in the state of the art. There must be a justification as to why the Skilled Person would consider a particular document in the state of the art as a realistic starting point. In selecting the starting point, the first consideration is that it must be directed to a similar purpose or similar effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, such prior art is generally that which corresponds to a similar use and requires minimal structural and functional modifications to arrive at the claimed invention.”
7. The Court decides based also on the broad interpretation of “cleaning” that the patent is invalid. The first and second auxiliary requests are equally invalid. The third auxiliary request is valid but it is not infringed.
Decision: infringement claim dismissed.
8. Costs (agreed by the parties but parties left it to the Court to decide the split in case of partial victory) in favour of Orbisk: 100% for infringement and 85% for the revocation.
Comment
- If you defend a broad meaning of a claim element because you want to argue infringement, then such broad meaning is also the starting point in invalidity proceedings. In this case this leads to invalidity and the infringement did not have to be discussed anymore.
- The Court applies the problem solution approach (PSA) because the parties also used this to discuss the revocation. The Court expressed (different from the Local Division in Munich) that it left open the question whether or not it was obliged to apply the PSA. It added that a different approach would have led to the same result. This makes it a convincing decision while leaving it for the Court of Appeal to decide what test to apply with respect to infringement. I hope that the Court of Appeal is not going to make the PSA the compulsory approach (which is also not the case at the EPO), but will give guidelines on how to decide about Art. 6 EPC as it did with respect to claim interpretation, while not excluding the PSA.
- Parties agreed about costs leaving it to the Court to make the decision if there was a partial judgment (like here with respect to validity). No cost procedure necessary. That is exactly what parties should do. It saves their clients a lot of costs and the Court time. The Local Division of The Hague clearly promotes this. We saw the same last week with respect to the security of costs.
13 August 2025
Court of Appeal, Boehringer v Zentiva
UPC_CoA_446/2025; UPC_CoA_520/2025
Imminent infringement
Facts
- This is a pharma case with a generic company making preparations to enter the market. It concerns an appeal from a decision of the Local Division which refused to grant a PI request because of lack of urgency.
- Zentiva cross-appealed arguing that Boehringer lacked “necessity” because the Portuguese intellectual Property Court had already granted a PI on the basis of a (different) SPC.
The Court
- The Court referred to the reasons of the Lisbon Local Division and upheld the decision that there was no lack of necessity because of the injunction based on the SPC.
- The Court also upheld a refusal of the Local Division to accept late filed documents by Zentiva and refused documents filed by Boehringer on Friday night before the Monday hearing. In both cases, the Court also stated that the relevance of the documents did not point to a different decision.
- The Court also did not accept a new submission by Zentiva “that Boehringer failed to prove that they did not file with an unreasonable delay”.
- The Court refers to Art. 62.1 and 62.4 UPCA: you can obtain a PI to prevent imminent infringement.
- “Imminent” means that the infringer has set the stage for it to occur. All the preparations for it have been fully completed.
- The grant of a marketing authorisation to a generic is not “imminent infringement” but doing everything to be able to sell (such as pricing and reimbursement) can qualify as imminent infringement.
- The Court of Appeal follows the prevailing law and does not apply the new Proposal for a Directive which envisages that patents shall not be recognised infringed when a reference medicinal product is used for the purpose of inter alia (iii) pricing for reimbursement.
- The standard of proof (with respect to the question if there is imminent infringement) is whether there is a sufficient degree of certainty, so that the Court is satisfied that on the balance of probabilities it is more likely than not that a patent infringement is imminent.
- The Court concludes after discussing in detail the Portuguese administrative steps and procedures that, contrary to what the Local Division held, Zentiva did not have to fulfil certain administrative requirements before it would be able to sell. Irrelevant is if under Portuguese law participating in a public procurement procedure is precontractual. This would constitute “offering” according to Art. 25 UPCA. Zentiva had taken all the steps which made participating in a procurement procedure possible.
- The PI is also necessary. In a market where there is only one product available first, it is clear that when a competing product (against a 30 percent lower price) appears on the market, that will lead to price erosion.
- There is also urgency. The decisive point is when the applicant has, or should have had, after exercising due diligence, the necessary facts and evidence within the meaning of R. 206.2(d) RoP.
- The Court orders recurring penalties.
- The normal scope (Art. 34 UPCA) of decisions is all the UPC countries where the patent is in force except if claimant restricts its demand or other special circumstances.
- The application for information (R. 191 RoP) is dismissed because
a. there is no completed infringement;
b. there is no evidence that the information exists;
c. there is no explanation that the information is necessary to advance Boehringer’s case. - The Court awards costs and orders payment of interim costs.
Comment
- In the first place, representatives are again warned that on appeal you cannot make new submissions which you could have made earlier.
- If you want to file a late document then you firstly have to convince the Court that you could not file the document earlier (and in PI proceedings that can be a matter of days!), and furthermore it is extremely important to make perfectly clear that the document can be a game changer (in other words: is of the utmost importance for the decision in the case).
- The Court of Appeal is not willing to apply a pending proposal for a new Bolar Directive. That seems logical because, first of all, it is not binding law. Second, there is no certainty that it is even enacted. I add to this that in my opinion this draft Directive does not change the fact that asking for and obtaining price reimbursement (which according to the Directive is not an act of infringement) can be seen as a situation in which there is an imminent infringement.
- Although the Court points to the circumstances of the case several times, I think that one can conclude that if a generic company, after it has obtained a marketing authorisation, takes the necessary further steps to be able to offer the product, that there is an “imminent infringement”, which is in accordance with the case law of most of the UPC member states.
- It is clear that the Court recognizes the importance for the patentee to be able to act before actual sales have started because of the irreparable harm which is caused (such as price erosion) if the patentee can only act after the generic has entered the market.
- While a request for information in case of an infringement in general seems necessary to be able to stop further and other infringements, the claimant will have to argue such necessity and the fact that their request is proportionate which, as we know, is also the case with respect to all further requests (such as a recall) in infringement proceedings.
- Note: urgency in one UPC country results in a PI for all UPC countries in which the same patent is in force.
13 August 2025
Local Division The Hague, Genevant v Moderna
Extension of time
Facts
- Moderna asks for protection of confidential information.
- After the deadline for the Statement of Defence/Counterclaim for Revocation for all defendants was set on 8 July 2025, defendants filed a redacted and an unredacted version.
- The claimants received the redacted version on 11 July 2025 and the representatives of claimants the unredacted version on 17 July 2025.
- The order confirming the agreement about the confidentiality was issued on 4 August 2025.
- Claimants asked for an extension for reply/answer in the counterclaim until 4 October 2025.
The JR
The JR states that in general, the periods mentioned in the Rules are sufficient and that extension should be granted only in exceptional circumstances so that the 12-14 months until oral argument can be met. The JR cites all the different decisions of Local Division with respect to extension of term because of confidentiality requests and grants an extension until 24 September 2025.
Comment
1. This is a well-reasoned and in my opinion correct decision.
It is better than the decisions of Düsseldorf where there is an (almost automatic) extension to the full term starting with the date of R. 262A RoP order. The JR is of course right that representatives can immediately start working on the reply/answer when they receive the redacted and unredacted versions.
If we want to avoid all these requests for extensions in the future, there seem to be two possibilities. The first one is an automatic extension with half of the time between the filing of the request and the receipt by the party of the redacted and unredacted version (the latter to be received by the person(s) of the party authorised to receive the information). The second one is that the JR in the decision with respect to the R. 262A RoP request indicates the term of the extension.
I think that the first solution is the easiest to implement and the least time-consuming for the Court. A party would remain free to ask a further extension because of exceptional circumstances. I know that in the past, I suggested the Düsseldorf system, but reading this decision I think such a long extension is (in general) not necessary and it is important to meet the promised deadline for a decision.
2. With respect to the promised deadline, the JR states that the oral hearing should take place within 12-14 months. I think that the oral hearing should in normal cases take place within one year (Preamble 7 RoP) with a judgment as soon as possible after the oral hearing but at least within 6 weeks (R. 118.6 RoP).
14 August 2025
Local Division Düsseldorf, Dolby v Beko
UPC_CFI_135/2024; UPC_CFI_477/2024
Further exchange of pleadings
Facts
Claimant in this FRAND case requests to be allowed to file a further pleading, arguing that defendant raised new arguments in its rejoinder with respect to its FRAND defence.
The JR
Allows a further pleading until August 14, 2025 as this seems fair and efficient and its does not lead to delay.
Comment
- Is this the exceptional case for which R. 36 RoP is written, or is this a first step towards a return to the national German habit of numerous pleadings?
- The Rules are very clear: The UPC is a front-loaded procedure. If indeed defendant in its rejoinder raises new arguments which are not a reaction to what claimant stated in its reply, they should be ignored. Claimant has of course always the possibility to react during oral argument on a reaction in the rejoinder with respect to what the claimant stated in its reply.
- If you allow a further pleading for the claimant within two weeks you should at least give the defendant one or two weeks to react. Equal arms!
14 August 2025
Local Division Hamburg, Ballinno v UEFA
Release of security
Facts
- Ballinno had provided a security of € 56.000 by deposit in the account of the UPC.
- Ballinno lost the PI proceedings and was ordered to pay costs.
- The UEFA had started cost proceedings.
- Parties settled the cost proceedings and agreed that the € 56.000 in the account of the UPC should be transferred to the UEFA which thereupon should withdraw the application for costs.
The JR
The JR, referring to R. 156.2 RoP, ordered the security to be released and to be paid to the Defendants and declared the cost proceedings closed.
Comment
A very practical solution and an example for representatives in cases where a security for costs has been granted to try to come to an agreement about the costs using the security.
15 August 2025
Court of Appeal, Ballinno v UEFA
Release of security
The JR
The JR of the Court of Appeal gives the same decision as the JR of the Local Division Hamburg (see hereabove) with respect to the € 25.000 security deposit made by Ballinno on appeal.
Comment
See above.
15 August 2025
Court of Appeal, Rivolution v Cilag
Suspensive effect
Facts
- Cilag c.s. requested a PI against Rivolution.
- The Local Division Munich granted the PI but has still to publish the grounds.
- Rivolution asks for suspension of the decision.
Decision of the JR
- The Court of Appeal can only order suspensive effect if the circumstances justify an exception to the rule of immediate effect of decisions. In order to decide this, the Court has to judge if the interests of claimant who in appeal requests suspension to maintain the status quo by way of exception outweigh the interests of the defendant on appeal.
- This can be the case if the decision is evidently wrong, or if not suspending means that the appeal would not be of any use. Furthermore, the violation of fundamental procedural rights could be a reason when it can not be excluded that the Court would have come to another decision if such violation had not taken place.
- The JR states that the term for appeal starts to run after the service of the grounds of the decision.
- The request is dismissed.
Comment
- If you ask for suspensive effect, you have to make your case in the request itself in such a way that the Court can decide without having to study the decision.
- It is by now clear that it is extremely difficult to obtain suspensive effect. We have already seen the example of the Local Division in Hamburg which injuncted a product which was in fact known in the prior art, but the Court of Appeal refused suspension.
- In this case the PI was granted without the grounds for the decision (which in very urgent cases may be necessary). The JR remarks that without the grounds it is difficult to judge most of the arguments of the party asking for suspensive effect. This is understandable but not very satisfactory. In my opinion, such decisions without grounds should only be granted in the exceptional case that irreparable harm is caused to the patentee if no immediate injunction is granted.
15 August 2025
Court of Appeal, Sun v Vivo
UPC_CoA_740/2025; UPC_CoA_741/2025
Suspensive effect
Facts
- The Local Division in Paris granted confidentiality orders on 31 July 2025 in favour of Vivo and granted leave for appeal on 11 August 2025.
- Sun asked the standing judge for suspensive effect in a case of (allegedly) extreme urgency, without having appealed (R. 223.4 RoP).
The JR
The request is inadmissible because it is clear from R. 223.1 RoP jo. Art. 74 UPCA that a request for suspensive effect can only be requested if the Statement of Appeal is filed and the appeal fee paid.
Comment
I disagree with this decision for three reasons.
- In a case of extreme urgency, in which for instance an injunction is prima facie clearly wrong and/or would have immediate disastrous consequences, a party should be able to act immediately.
- This is exactly why the Drafting Committee included in R. 223.4 RoP: “at any time”, “without formality”. Filing a Statement of Appeal and paying the fee are formalities.
- The references to R. 223.1 RoP and Art. 74 UPCA are unconvincing. R. 223.4 RoP is clearly drafted as an exception. The whole word “appeal” cannot be found in the provision. Moreover, Art. 74 UPCA does not require that the appeal to which the article refers has already been filed. It can also be a future appeal, to be filed in time.
15 August 2025
Local Division The Hague, AdvanSix v Troy
Stay
Facts
Both parties asked for a stay of the proceedings until 13 February 2026.
The JR
- The stay is granted.
- If a R. 262.1 RoP request is filed by a member of the public, parties will have the opportunity to ask for confidentiality of the confidential information submitted with the application for the stay.
- Within one week after 13 February 2026 claimant has to confirm the Court if the case is withdrawn or will resume.
Comment
The stay is apparently granted after a reasoned request. However, the reasons are confidential. So parties should realize that even if both parties agree to a stay, this is not automatically granted!
15 August 2025
Local Division The Hague, HL Display v Black Sheep
UPC_CFI_386/2024; UPC_CFI_610/2024
Order after interim conference
The JR:
- announced the appointment of a Technical Judge;
- confirms the agreement on the use of visual aids during the hearing;
- informs the parties that during the oral hearing they have to discuss the points raised by the Court and will get 20-30 minutes for a closing argument;
- sets the value of the dispute;
- orders that one week before the hearing parties will give a legal cost estimate;
- states that parties are encouraged to talk (about settlement);
- sets the hearing date: 22 August 2025 at 10 a.m.
Comment
- As far as can be seen this is only an infringement case which explains the late appointment of the Technical Judge which is not an obligation in (only) an infringement case, but parties/the Court can request this. Apparently, that is what happened.
- If the Court wants to organise the hearing as indicated, it is hoped for the parties that a few days (week) before the hearing they receive the points the Court wants to discuss. Representatives should make sure that they raise all other points which they consider important as they will not be able to do that (for the first time) on appeal.
- The Court is apparently aiming at an agreement on costs so that separate proceedings are not necessary. As both counsels are Dutch and are used to try to settle costs by agreement, it is likely that clients can be spared the costs of separate cost proceedings.
– 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”.