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.
Interested in more of this? Stay tuned and subscribe here for weekly updates.
On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on Spotify or Apple Podcasts.
14 August 2025
Local Division Hamburg, Dyson v Dreame International
Cross-border jurisdiction
Facts
This was a preliminary injunction case. The defendants were:
- Defendant 1: Dreame HongKong, operator of the relevant country-specific websites, including Spain.
- Defendant 2: Teqphone GmbH, distributor for Defendant 1 in Germany.
- Defendant 3: Eurep GmbH, the European Union (“EU”) representative of Defendant 1 for a non-EU manufacturer.
- Defendant 4: Dreame Sweden, which operates a country-specific website and has a physical store.
The claimant requested a preliminary injunction for all UPC countries and Spain against all defendants.
The Court
- The Court held that it has international jurisdiction against Defendants 2 and 3, who are established in Germany, pursuant to Article 4(1) of the Brussels Ibis Regulation (“BR”) . This jurisdiction extends to the territories of the contracting member states.
- Under Article 7(2) in conjunction with Article 71(b)(1) BR, the Court has international jurisdiction against a defendant (whether EU or non-EU) that infringes in at least one member state of the UPC. This provides jurisdiction against Defendant 1.
- Jurisdiction against Defendant 4 follows from Article 8(1) BR.
- With respect to Defendants 1 and 3, jurisdiction also exists for Spain, as both allegedly infringe in Spain. This is consistent with the decision of the European Court of Justice (“CJEU”) in BSH v Electrolux.
- With respect to Defendant 2, there is not even a plausible allegation of infringement in Spain, so there is no jurisdiction for Spain. The Court referred to the CJEU in Primus v Roche.
- The Court granted the injunction for the whole Unified Patent Court (“UPC”) territory against Defendants 1, 2 and 4, and against Defendant 3 insofar as it provides services contributing to infringement. With respect to Defendants 1 and 3, the injunction also covers Spain.
Comment
- The result of the decision appears correct.
- It raises the question whether the EU representative (which every non-EU manufacturer must appoint) can be considered an (indirect) infringer and whether the UPC is competent to deal with indirect infringement outside Article 26 UPC Agreement (“UPCA”) (unlawful acts).
- As to the Court’s reasoning, it seems clear that for the purposes of applying the Brussels Ibis Regulation, the Court considers each division of the Court of First Instance as a separate court, since it refers to “international jurisdiction” when addressing the jurisdiction for the other member states of the UPC and cites Article 8(1) BR with respect to the Swedish defendant. If the Court of First Instance were considered a single court, it would naturally have jurisdiction over the whole UPC (just as a national court has jurisdiction over its entire country).
I agree that the latter may lead to the somewhat odd consequence that, also for the Swedish defendant, the Court is considered the Article 4(1) BR court (i.e. its “home court”), even when the case is handled by the Hamburg Local Division. Internal “national” (that is, UPC) competence rules then determine that a Swedish defendant should be sued in the Nordic-Baltic Regional Division, or as a co-defendant under Article 33(1)(b) UPCA in another division. Nevertheless, the Court, including the Hamburg Division, would have international jurisdiction under Article 4(1) BR, provided it is competent for the Swedish defendant on the basis of the internal UPC rules. This would mean the Court, also with respect to the Swedish defendant, has jurisdiction for Spain on the basis of Art. 4(1) BR.
Apparently, the Hamburg Division finds this outcome unsatisfactory, as Article 4(1) BR is based on the principle that the natural forum for a defendant is its place of establishment, close to the Court, familiar with customs, language, and judges. For a Swedish defendant, this logic does not fully apply as regards language (The Regional Nordic-Baltic Division deals in English but almost all Swedes speak English), but it does apply in terms of hearings in Stockholm and having a Swedish judge. It is indeed unusual that all divisions must be treated as home courts. The Hamburg Division seems to read Article 71a BR as meaning that the UPC is to be considered a court of each participating member state when exercising jurisdiction under the Brussels Regulation. - If the Hamburg Division sees itself as a separate court limited to German territory, then arguably Article 7(2) BR should give it jurisdiction only for Germany. This, however, is essentially what the Division has done. It uses the term “international jurisdiction” to mean that any defendant (including non-EU defendants) can be sued in Germany via Article 71(b)(2) BR. The fact that the Local Division can decide also for other UPC countries derives from Article 34 UPCA and apparently, not from Article 7(2) BR. As the Local Division itself noted, Article 34 UPCA has nothing to do with international jurisdiction. In my opinion, one must first establish jurisdiction for the whole UPC before applying Article 34 UPCA, which the Hamburg Division denies for Article 7(2) BR. This interpretation by the Hamburg Division only makes sense if the Hamburg Division is treated as a German national court. The advantage of this reading of Article 71a BR is that Article 4(1) BR remains applied properly: the defendant is sued in its home court, while a single act of infringement in one country does not automatically lead to an injunction for the whole UPC unless Article 4(1) or Article 8(1) BR apply (similar to the Community Trademark and Design regimes).
- Ultimately, it will be for the Court of Justice of the European Union to decide whether the Hamburg Division’s interpretation – i.e. that each Local Division is a separate national court for the purposes of the Brussels Regulation – is correct. Can the “home” court of a Bulgarian company also be the Local Division in The Hague? Hamburg thinks not. What will the Court of Justice decide?
- The judgment also fails to set a (reasonable) penalty for each attachment by which the order is violated. This leaves unclear what will happen in case of non-compliance, creating unnecessary disputes if the claimant later seeks enforcement of penalties. Compare this with the approach of the Local Division of The Hague, which provides more certainty.
18 August 2025
Local Division The Hague, Genevant v Moderna
UPC_CFI_191/2025; UPC_CFI_192/2025
Preliminary injunction
Facts
Genevant filed two separate infringement proceedings on 3 March 2025 against fifteen Moderna defendants. In both cases, the various Moderna companies (based in the United States (“US”) (twice), Belgium, Denmark, Sweden, Switzerland, Portugal, Norway, Poland, Netherlands, United Kingdom (“UK”), Italy, Spain, France, Germany) raised several objections regarding the jurisdiction of the Division.
The Judge-Rapporteur
The Judge-Rapporteur issued the following order:
- the decision concerning long-arm jurisdiction (i.e. the possibility to deal with infringements outside the UPC with respect to Moderna US, Switzerland, Spain, Norway, UK and Poland) will be dealt with in the main proceedings;
- all other preliminary objections are dismissed.
Moderna filed a request for review under R. 333 RoP.
The Court
- The Court agreed with the claimant that a R. 333 RoP application should be reasoned and “shall set out the grounds for review and the evidence, if any, in support of the grounds”.
- On this basis the Court concluded that the request for review does not pertain to:
a. the validity of the opt-out in case 191/2025;
b. the referral of the decision on long-arm jurisdiction to the main action;
c. international jurisdiction other than Moderna Spain and Moderna Norway;
d. the internal competence of the Local Division The Hague of the Unified Patent Court. - For these issues, the preliminary objection order is confirmed.
- The preliminary objection order accepted jurisdiction with respect to Moderna Spain on the basis of Articles 7(2) and 8(1) Brussels Regulation (“BR”) and with respect to Moderna Norway on the basis of the same provisions of the Lugano Convention (“LC”).
- The Court confirmed the preliminary objection order. The UPC is equivalent to a court of a Contracting Member State. Article 7(2) BR applies if the harmful event may occur in that Contracting Member State. Article 8(1) BR applies if a person domiciled in the European Union (“EU”) is sued together with a defendant in the court where that defendant is domiciled and there is a risk of irreconcilable judgments. These provisions therefore apply directly to Moderna Spain. As the Lugano Convention should be interpreted in the same way, these provisions also apply to Moderna Norway.
- With respect to the argument that Article 7(2) BR was not applicable because Moderna Spain and Moderna Norway did not threaten to infringe in the UPC, the Court did not make a determination but moved immediately to Article 8(1) BR (Article 6(1) LC). It held that it is sufficient when Moderna Spain and Moderna Norway infringe in their own countries together with Moderna Netherlands, or alternatively that these entities threaten to infringe the same Unitary Patent or the national designation of a European patent with the same product.
- The claimant sufficiently demonstrated that Moderna Netherlands’ activities also concern Spain and Norway. It is not a requirement of Article 8(1) BR that both companies infringe a patent in the UPC.
- Moderna did not contest that Moderna Netherlands has a central role in the sales activities and sells to at least seventeen European countries.
- Moderna Spain holds the marketing authorisation for the product, which it makes available to the other Moderna companies. Moderna argued that this did not constitute patent infringement but rather an unlawful act outside the Court’s competence. The Court disagreed.
- Moderna Spain also manufactures the product.
Comment
- At least on the basis of Article 8(1) BR and Article 6(1) LC there can be no doubt that the Local Division The Hague has jurisdiction.
- It is sufficient that both Moderna Netherlands and the co-defendants (Moderna Spain and Moderna Norway) infringe in the same country, as in that situation both the Local Division The Hague and the home court (in Spain and Norway) would be competent to hear the same case, creating a risk of conflicting judgments. The argument that the infringement must take place within the UPC had no chance of success, as the key factor is the risk of conflicting judgments. This was already established by the Court of Justice of the EU (“CJEU”) in Solvay v Honeywell, where both the Dutch anchor defendant and the Belgian co-defendant infringed in (for example) Finland.
- This was therefore straightforward. It is surprising that the R. 333 RoP request for review did not include Poland, which was in the same position as Spain. The fact that manufacturing also takes place in Spain is immaterial to the jurisdictional analysis.
- A more interesting question is what happens if the Spanish defendant, the Article 8(1) BR co-defendant, raises invalidity arguments, as this has not been decided by the CJEU in BSH v Electrolux. In my view, and also in light of CJEU Solvay v Honeywell, this should make no difference.
- A further intriguing question is whether the UPC would go so far as to accept jurisdiction over a UK company (or another non-UPC non-EU company acting in its own country) for infringements in its own country, especially if that company is not a subsidiary of a UPC-based company or a non-UK company over which the UPC has jurisdiction under Article 8(1) BR.
18 August 2025
Local Division Munich, Innovative Sonic Corporation v Oppo
Change of language
Facts
The Statement of Claim was filed in German on 23 May 2025. On 25 July 2025 all Defendants requested a change of language. The President of the Court of First Instance invited the Claimant and the panel to submit their views. The Claimant requested that the request be dismissed or, in the alternative, that the parties be permitted to conduct the oral proceedings in German.
President of the Court
The President of the Court of First Instance granted the request for a change of language and dismissed the request to hold the oral hearing in German, noting that this could be considered at a later stage by the Judge-Rapporteur.
Comment
- Given the facts of the case (claimant not German, defendants almost all non-German, prior art in English), this decision was predictable from the outset.
- It again raises the question why the German representative chose to file before the Munich Division, which is the busiest UPC division. It has already indicated to parties not to request a switch to English because it considers cases more time-consuming if handled in English.
- It would have been far simpler to start the case in English before a less busy division, such as The Hague, where the local judges speak English almost at the level of their native language. A German representative can of course appear before that division, and if not comfortable in English could have asked Dutch colleagues from the same firm to represent the client. This would have saved the client considerable translation costs.
- When will local representatives begin to understand that the UPC is an international court, that they can act in all divisions, and that the common language of the UPC is English?
19 August 2025
Local Division Munich, Solvay v New Material
Separation of proceedings
Facts
The Claimant sued four Chinese companies. Two companies were served on 3 June 2025. The two other companies have not yet been served.
The Judge-Rapporteur
Citing the fact that the Statement of Defence for the first two companies is due on 3 September 2025 and that the time period for the other two companies has not yet begun to run, the Court decided of its own motion to split the proceedings.
Comment
This is a sensible decision, enabling the Court to render a decision within fourteen months with respect to the two companies that have been duly served.
19 August 2025
Local Division The Hague, Adeia v Walt Disney
Extension of term
Facts
Disney filed certain exhibits belonging to its reply in the counterclaim late. Adeia requested an extension of the term for its rejoinder in the counterclaim for revocation.
The Judge-Rapporteur
The Judge-Rapporteur granted the request: the term for the rejoinder (and the Defendant’s defence in the application to amend) begins to run as of the date of filing of the exhibits.
Comment
This is consistent with the decision of the Court of Appeal that the time period for a response begins to run only after the Defendant has received all exhibits referred to in the Statement of Claim.
19 August 2025
Local Division Mannheim, Wilus v ASUS
Extension of time
Facts
The defendants argued that the time period for their response should only begin once the confidentiality proceedings pursuant to R. 262A RoP had been completed.
The Judge-Rapporteur
The Judge-Rapporteur reiterated the “Mannheim principles”.
- Time periods begin to run in accordance with the Rules of Procedure regardless of when the party concerned obtains access to the unredacted version. In principle, the Court will grant an extension, upon reasoned request, for the period during which the party does not have full access to the unredacted version.
- In this case R. 262A RoP was not at issue. An exhibit, merely confirming what had already been stated in the Statement of Claim, was filed later. The Ddefendant, however, submitted its request very late, and the exhibit was in fact unimportant for its defence. The Judge-Rapporteur therefore granted only a one-week extension.
Comment
- This was clearly not a good faith late request by the representative. The Judge-Rapporteur was still accommodating in granting a one-week extension.
- The two main reasons for requesting extensions are late-filed exhibits and R. 262A RoP confidentiality requests. Each of these must be dealt with by the Judge-Rapporteur (and, of course, drafting such requests costs the client money). It would therefore be preferable to introduce a rule specifically addressing these frequent situations.
I have proposed that for a R. 262A RoP request the period for a response should be extended automatically by half of the period between the defendant’s representatives receiving the unredacted version and receiving the Court’s decision on the R. 262A RoP request (which states which persons at the Defendant may have access).
With respect to late-filed exhibits, the solution would be simple: they should not be accepted. The Court of Appeal has in practice accommodated a German national habit of filing exhibits late. While this may have been understandable at the beginning of the UPC, it is contrary to the frontloaded principle. A new rule could clarify that exhibits referred to in pleadings must be filed at the same time. Alternatively, exhibits could be filed within one week after the deadline for pleadings, which would automatically extend the response deadline by one week.
Such reforms could be considered when the Rules are revised. R. 9 RoP should of course be maintained so that extensions remain possible in exceptional circumstances.
19 August 2025
Local Division Brussels, Ortho Apnea v X
Correction of judgment
Facts
- On 25 July 2025 the Court issued a costs decision.
- On 1 August 2025 the Claimant requested a rectification of that decision.
- The Claimant argued that the costs of the expert, which were accepted by the Court (€2,200), had not been included in the total awarded costs (€43,865.64).
- The Claimant also requested clarity regarding the start of the period for filing a possible appeal.
The Court
- The Court agreed with the Claimant and added the €2,200 to the awarded costs.
- It further clarified that the period for appeal is not affected either by a request for correction of the judgment or by the correction itself.
Comment
- The decision appears correct. The mistake was so obvious that one wonders why the Defendant did not concede the point.
- I also note that the decision itself contains a (minor) error: it refers under point 1 to a decision “pursuant to Rule 131” of the Rules of Procedure, whereas it should have referred to Rule 151 (or better, Rule 150).
- The Court, recognising that not all UPC users are proficient in Dutch, provides a service by adding a lengthy headnote in both English and German. The addition of German is significant: it signals to German representatives who do not wish to (or feel unable to) proceed in English that they need not go to the very busy German divisions, but may instead file their case in German before the Brussels Local Division.
20 August 2025
Local Division Mannheim, Centripetal v Keysight
Further pleadings
Facts
The Claimant requested, after the rejoinder, to submit a further pleading because it had discovered a new functionality of the accused embodiment. In its rejoinder, the Claimant had already advanced three alternative infringement theories in addition to the one set out in the Statement of Claim.
Review by the panel of the Judge-Rapporteur’s decision to refuse
The request for review was dismissed.
Comment
- As I have said before, in my opinion the possibility to request review of an order of the Judge-Rapporteur should be abolished when the Rules are revised.
- In this case it was clear that a fifth infringement theory, presented after the exchange of pleadings and based on information already known at the time of the Statement of Claim, could not be permitted.
- The Claimant, represented by a German lawyer, apparently did not appreciate the difference between the frontloaded procedure of the UPC and German national proceedings.
- This is a lesson for all representatives: the Statement of Claim is of critical importance. Before launching proceedings, it is essential to prepare thoroughly, developing every possible infringement argument and anticipating non-infringement arguments as fully as possible.
20 August 2025
Court of Appeal, Expert v Seoul
No referral to the Court of Justice of the European Union
Facts
Expert won the proceedings against Seoul in a decision of 10 October 2024. It then initiated costs proceedings on 12 December 2024, seeking €110,000.
Rule 151.1 of the Rules of Procedure states that costs proceedings must be initiated within one month.
Expert advanced various arguments as to why the one-month time limit was not applicable. The Court dismissed the claim as inadmissible. Expert sought leave to appeal.
Appeal
- Expert’s Rule 9 application of 23 May 2025 was disregarded because it was filed after the fifteen-day time limit set out in Rule 221 of the Rules of Procedure.
- Moreover, it is not possible to obtain an extension of the one-month time limit of Rule 151.1 by way of a Rule 9 application (see the decision of the Court of Appeal in Hanshow v Vusion Group, UPC_CoA_168/2024).
- A need for interpretation of European Union law arises:
• when a provision of the UPCA or the Rules of Procedure relates to a European Union instrument or treaty (for example, the Lugano Convention);
• if the UPC applies European Union law;
• if the UPC must interpret and apply the UPCA and the Rules consistently with European Union law that has direct effect, and, if that is not possible, should decline to apply the UPCA or the Rule. This may also raise questions of interpretation. - The UPCA (and the Rules) is an international agreement, not a European Union instrument, which means that the UPC cannot request the Court of Justice of the European Union to interpret the UPCA or the Rules.
- There is also no need to refer questions if they have already been resolved (acte éclairé) or if the answer is clear (acte clair).
- The Court found no basis for referral. Leave to appeal was refused.
Comment
It is positive that the Court of Appeal includes an expert on European Union law. I recommend that all non-specialist lawyers read the entire decision, which is clear and well-documented.
Seven lessons for representatives who do not want to involve their insurer:
- Try to reach agreement on costs with the opposing party before the oral hearing.
- Ask the Court to decide on costs in the main decision. This is easier after agreement with the other side (as in the Local Division The Hague), but may also be possible by requesting permission to file a specification one week before the hearing, enabling the other side to respond during the hearing.
- Remember that even after winning you must continue working on the case, as you must initiate costs proceedings within one month.
- If you miss the one-month deadline, contact your insurer immediately.
- Do not spend further money trying to correct your mistake. A Rule 9 request is not available. Re-establishment of rights is, in principle, possible in very special circumstances, but must be requested within a strict time limit and is extremely unlikely to succeed.
- If you nonetheless pursue an appeal against a costs decision, remember that you must present all arguments within the fifteen-day limit set by Rule 221.
- Finally, do not assume that procedural rules will mirror your national system. Even if you are an experienced litigator in your own jurisdiction, you must study the UPCA and the Rules of Procedure carefully (and why not these case notes as well?). They make for worthwhile reading over a weekend or during a holiday.
20 August 2025
Local Division Düsseldorf, Lepu v Occlutech
Technically Qualified Judge in preliminary injunction proceedings
The Judge-Rapporteur
- In preliminary injunction proceedings, an injunction can only be granted if the Court is sufficiently certain about the validity of the patent. The Court must therefore assess all the circumstances to determine whether it is predominantly probable that the patent is invalid.
- Although there is no obligation to include a Technically Qualified Judge in such cases, the Court may, after hearing the parties, request the nomination of a Technically Qualified Judge.
- That is what the Court decided in this case.
- The Judge-Rapporteur requested the President of the Court of First Instance to nominate a Technically Qualified Judge.
Comment
As previously noted, this approach makes sense where the preliminary injunction is not extremely urgent.
21 August 2025
Local Division The Hague, HL Display v Black Sheep
UPC_CFI_386/2024; UPC_CFI_610/2024
Late physical evidence
Facts
Black Sheep filed its Rejoinder on 20 February 2025.
On 24 February 2025 it asked the Court for permission to produce two physical objects.
The JR
The JR dismissed the application, noting there was no explanation why these exhibits could not have been filed with the Statement of Defence.
Comment
- Why did it take six months to decide this?
- Frontloaded proceedings! If you want to produce exhibits—even just four days late after your Rejoinder—then at least explain why you are late and why you could not have filed them earlier, and state that you do not object if the Court grants the defendant four extra days for its Reply.
21 August 2025
Court of Appeal, Suinno v Microsoft
Rectification
Facts
In first instance, Suinno failed to provide security. Microsoft asked for a decision by default. The request was refused by the Paris Central Division, which also refused leave to appeal.
Microsoft then asked the Court of Appeal for discretionary review, which was allowed by the standing judge. In its request, Microsoft did not include a request under R. 356.3 RoP that the claimant be put on notice that any further decision by default would be final.
The Court of Appeal revoked the order and issued a decision by default against Suinno, but without the R. 356.3 notice. Microsoft asked for correction of the order, arguing that the notice should have been included.
The Court
- The request was filed within a month and is admissible.
- The request for rectification is dismissed.
- The request is dismissed under Art. 76(1) UPCA: the Court shall not award more than requested.
- A separate new order (as requested alternatively by Microsoft) is also not possible, since such notice must be asked together with the request for a decision by default
Comment
- This shows the importance of reading the Rules carefully before filing a request. The R. 356.3 notice is important because it prevents repeated applications to set aside a default decision.
- A clear lesson: the Court (whether in first instance or appeal) cannot award more than requested.
- The Court of Appeal is correct, though strict, in holding that such notice cannot be given in a separate order. Could “in an earlier decision” (R. 356.3 RoP) be read more flexibly? In any event, the consequences here are not dramatic. The decision is clear, and hopefully future representatives will avoid this mistake.
21 August 2025
Court of Appeal, Kodak v FUJIFILM
UPC_CoA_312/2025; UPC_CoA_333//2025
Confidentiality (on appeal)
Facts
FUJIFILM prevailed in infringement proceedings in the Local Division Mannheim.
That court ordered confidentiality on various aspects of the case.
On appeal, Kodak asked for the same confidentiality orders.
The Judge-Rapporteur (JR) of the Court of Appeal
Referring to Curio v 10x Genomics (UPC_CoA_101/2024), the JR dismissed the requests.
Comment
Representatives should read existing case law (see: Hoyng, Case Law Court of Appeal of the UPC 2023–2024, p. 25, ISBN 9789081922802) and not burden clients and the Court of Appeal with pointless appeals.
21 August 2025
Central Division Paris, Kinexon v Ballinno
Return security
As in the UEFA (Kinexon) cases in Hamburg and on appeal, the parties settled and asked the Court to pay the €25,000 security to the plaintiff.
Comment
Ballinno (apparently a small company) owned a patent covering offside technology and hoped to extract significant money from UEFA by seeking a PI in Hamburg before the 2024 European Championship. The strategy backfired: the PI was lost for lack of urgency and the patent was invalidated. UEFA obtained part of its costs from the security, which the Court paid directly to UEFA (Kinexon) after settlement.
The lesson: Think twice before you start!
21 August 2025
Local Division Munich, Huawei v MediaTek
Confidentiality
Decision of the Judge-Rapporteur (JR)
- After a long introduction, in which all the principles relevant to a R. 262A RoP request are repeated, the JR allows the request. This essentially concerns licence agreements which the claimant seeks to produce in a FRAND case. These agreements contain confidentiality clauses prohibiting disclosure of their content.
- The JR refuses to deal already with secrecy during the oral hearings.
- The JR also refuses to rule on a R. 262.2 RoP request, stating that this will have to be decided only if a member of the public requests access.
Comment
- Strikingly, the case is filed in the very busy Munich Division in German, while the claimant is a Chinese company and the main defendant Taiwanese.
- It is difficult to imagine this was at the request of the clients—or that UK/US representatives would prefer to proceed in German.
- Could it be that the Court asked not to file or change to English because German is less time-consuming? Or did the parties simply assume this is what the Court prefers?
- The 11-page decision—including the general considerations in this international FRAND case—is entirely in German, a language not mastered by all UPC users, including many judges.
- Not even a headnote in English is provided. Contrast this with the Brussels Division, which provides headnotes in English and even in German for German speakers who lack proficiency in English.
- All this illustrates how overburdened the German Divisions are. It is regrettable that representatives continue to file international cases in these Divisions, in German, rather than opting for another Division and filing in English—the language in which their clients conduct international business.
21 August 2025
Court of Appeal, Seoul v Expert
Written submission after oral argument
Facts
On 13 August 2025, after the oral argument of 11 July 2025, Seoul filed a further pleading in the Court of Appeal.
Decision
- Only during the written phase the JR can allow further written pleadings upon a reasoned request by a party.
- After oral argument the case is ready for the decision. Further written submissions are not allowed. The submissions uploaded via R.9 RoP will be ignored.
Comment
- This is a deliberate violation of the Rules—and of R. 9 RoP, which only applies if a further pleading is expressly allowed. The Rules are clear: no further submission is permitted after oral argument, let alone without permission. The representative certainly knew this.
- Why file then? Simply in the hope it would nevertheless be read. But a professional judge will not.
- The Court of Appeal was lenient in not issuing an “information” under R. 291.1 RoP to the representative.
21 August 2025
Court of Appeal, Life v Lama
Withdrawal intervention
Facts
- On 11 February 2024 Lama filed a revocation counterclaim in the Paris Local Division against two HP patents.
- The Paris Local Division invalidated one patent and found infringement of the other. Lama appealed.
- On appeal Lama and HP settled and withdrew their claims, which the Court of Appeal accepted on 24 July 2025.
- On 22 July 2025 Life applied to intervene in support of Lama.
- After learning of the settlement, Life applied on 13 August 2025 to withdraw
The Court of Appeal
Although R. 265.1 RoP does not expressly mention withdrawal, the Court of Appeal applies this provision by analogy without there being the necessity to hear “the other party” as the case had been declared closed.
Comment
The Rules Committee overlooked the possibility of an intervener withdrawing. The Court of Appeal has sensibly filled the gap!
21 August 2025
Local Division Düsseldorf, Hartmann v Omni-Pac
UPC_CFI_115/2024; UPC_CFI_377/2024
Preparation oral argument
The Judge-Rapporteur (JR)
- The JR closes the interim proceedings.
- In preparation for the oral hearing:
a. gives a definition of the skilled person, noting that if a party disagrees it can argue so during the oral hearing;
b. provides a partitioning into features of claims 1 and 6 which the panel will use during the oral hearing;
c. formulates detailed questions which the parties should address;
d. sets a date by which the parties must upload visual aids to be used during the oral hearing;
e. confirms there will be no interim conference;
f. explains that at the start of the oral hearing the presiding judge (who is also JR) will give an introduction, after which the parties will have time to prepare;
g. refers to R. 113.1 RoP second sentence (the President can set time limits during the oral argument)
Comment
A very efficient approach: no interim conference, and the JR has already raised a few questions for preparation. This is generally preferred by parties. Still, they should be ready to answer all questions during the hearing, including those not announced in advance. Apparently, not all representatives are able to do so. The Court is accommodating, as after the presiding judge’s introduction (which will certainly contain some questions) the parties will be given preparation time.
21 August 2025
Court of Appeal, Barco v Yealink
UPC_CoA_317/2025; UPC_CoA_376/2025
Arranging simultaneous translation
Facts
Yealink requested simultaneous translation from English to Mandarin. Alternatively, it asked to be allowed to engage interpreters at its own expense pursuant to R. 109.2 RoP. Yealink argued that such translation was necessary to defend itself.
The Court of Appeal
Refuses both requests.
- Parties have representatives. The fact that employees of a party do not master the language of proceedings is not a reason for the Court to arrange translation.
- A party may arrange for simultaneous translation at its own expense if it informs the Registry two weeks before the oral hearing. However, this falls under R. 109.4 RoP, which means such costs are not recoverable.
Comment
Yealink wanted simultaneous translation but made two mistakes.
- It was already clear from case law that the Court will not provide translation for a party’s employees.
- If a party wants to arrange its own translation, the request must be lodged under R. 109.4 RoP (not R. 109.2), and the costs are not recoverable—even if the party wins.
22 August 2025
Local Division Munich, Brita v Aquashield
Infringement judgment
Facts
The claimant, a German company, holds a patent for a “Ventilbetätigungseinrichtung eines Ventils” (valve actuating device of a valve). It sued companies selling Philips water filter cartridges that can be used in the claimant’s product.
The Court
- The patent covers only a valve actuating device, not—as defendant argued—a product which also contains the valve. The Court remarks that the formulation is somewhat odd (in translation: “a valve actuating device of a valve”), but from the description and the rest of the claims (e.g. independent claim 4, which clearly claims the valve as part of the combination) it is clear that the valve is not part of what is claimed.
- The Court does not decide whether to consider the file wrapper or statements made during prosecution or in the preliminary opinion of the Opposition Division (the opposition was later withdrawn), since this would not affect the outcome.
- Claim 1 is a purpose-bound claim, requiring that the valve for which the valve actuating device is used must include all elements mentioned in the claim.
- With this interpretation of claims 1–3, the Court finds them lacking novelty, after rejecting added matter and intermediate generalisation arguments.
- Claim 12 is new and inventive. However, the patentee stated that—even if the Court upheld the patent only in part—it would rely solely on the auxiliary requests.
- Auxiliary requests 1–17 are invalid; auxiliary request 18 is valid.
- Auxiliary request 18 claims original claim 12 with added features.
- The Court rejects Art. 84 EPC (clarity) and Art. 123(2) EPC (extension of subject matter) objections, again refusing intermediate generalisation arguments.
- Inventive step is accepted for Auxiliary request 18.
- Indirect infringement is found: defendant’s cartridges are an essential element of the invention. The Court holds that in principle all claim elements are essential, regardless of whether they appear before or after “characterised in that.”
- The defence of exhaustion is rejected: the cartridges were intended for use in products marketed by the patentee.
- Exhaustion is governed by Art. 29 UPCA, not national law.
- In general, a purchaser may use a product put on the market by the patentee, and may replace parts as long as this does not amount to making a new patented combination. But this is different where the technical working of the invention is embodied in the part replaced—as was the case here.
- The Court issues an injunction and other relief
Comment
- The Court cites CoA and other UPC case law abundantly. On inventive step, it does not use the problem–solution approach which I think is a good decision!
- The Court takes a liberal approach to intermediate generalisation and inventive step, in line with the CoA.
- The Court rightly holds that all claim elements are essential (if claims comply with Art. 84 EPC). This contrasts with an earlier incorrect decision of the Dutch Supreme Court (in “Senseo”, which was in the meantime corrected), in which it held that only elements embodying the inventive concept are essential.
- Exhaustion is properly decided under Art. 29 UPCA, not national law. The Court was correct to disregard expert declarations on Austrian, French, Italian, and arguments on German law. However, in para. 236 the Court seems to apply the reasoning from Patentbehälter II (BGH, 17 July 2012, XZR 97/11). That decision held that an act amounts to new manufacture if the invention’s technical and economic effects are embodied precisely in the replaced part. Later BGH cases (Drum Unit, 24 Oct. 2017, XZR 55/16; Scheibenbremse II, 8 Nov. 2022, XZR 10/26) introduced nuances, particularly customer expectations. For example: does a customer buying the “Style” system (see judgment para. 81) expect to have to purchase expensive replacement cartridges from the patentee for the product’s entire lifetime? If not, and the patentee failed to make this clear at sale, is there still infringement? Or is there exhaustion (and not a “new manufacture”) or an implied license because the customer is entitled to use the invention as part of the purchase? Did defendants raise competition law arguments or the new Repair Directive (entered into force July 2024)? (If the customer does not want to buy the cartridges of the patentee he is forced to discard the apparatus before the end of its lifetime.) There seems to be more to say about exhaustion in this case!
22 August 2025
Local Division Düsseldorf, Tridonic v Cupower
requester: Inventronics
Stay
The Judge-Rapporteur (JR)
The case is indefinitely stayed due to settlement discussions in the parallel case.
Comment
In practice, the Court will generally agree to a stay when all parties request it in view of settlement discussions.
– 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”.