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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7 October 2025 (published last week)
Local Division Brussels, Cretes v Hyler
UPC_CFI_556/2024; UPC_CFI_216/2024
Settlement (R. 365 RoP)
Facts
- During the interim conference, the judge-rapporteur (“JR”) suggested a settlement. The JR gave the parties until 29 August 2025 to inform the Court if a settlement was reached.
- The parties informed the Court that a settlement was reached.
- The parties requested to confirm the settlement and to order confidentiality with respect to the complete content of the settlement agreement. No cost decision was necessary.
- Both parties requested a 40% reimbursement of the paid court fees (€ 11,000).
The Court
The Court granted the request except for the return of fees. The provisional value of the litigation was too low, and after calculation of the full fee that for court costs which the parties should have paid and deducting the 40% return, both parties received € 2,000 each.
Comment
- This is a correct settlement under R. 365 RoP with complete secrecy regarding the content.
- The two representatives argued that the JR had promised during the interim conference that the Court fees would not be increase if there was a settlement. However, even assuming this was true, they did apparently not check the order issued after the interim conference, which did not reflect this!
- The JR clearly wanted to impress with very extensive considerations about the different Rules in order to come to a very simple calculation of what money should be returned. If I had been the JR, the parties would not have received the € 2,000 because of the extra work caused by an untenable interpretation of the post-interim conference order.
10 October 2025 (published last week)
Local Division Munich, Heraeus v Vibrantz
UPC_CFI_114/2024; UPC_CFI_448/2024
Private prior use
Facts
Heraeus started infringement proceedings with respect to a European patent valid for Germany, France, Italy, and Romania. The patent has a different version in Germany as a result of a final invalidity judgment of the German validity court. The claimant argued that no new invalidity attack could be raised for Germany due to the German decision.
The Court
- The Court interprets the claim features, referring to the Court of Appeal’s decision in Nanostring v 10xGenomics.
- The Court defines the skilled person.
- The decision of the German court, between the same parties, with respect to novelty and inventive step, was considered res iudicata. However, the insufficiency argument (Art. 83 EPC) could be raised, as this was not addressed in the German invalidity proceedings.
- The claimant defends the patents in the other countries (besides Germany) solely on the basis of auxiliary request 3. These patents are therefore invalid as far as they extend beyond auxiliary request 3.
- The Court held that the auxiliary request does not contravene Art. 84 and Art. 83 EPC.
- For novelty, the Court applied the “gold test” and found the claim novel.
- On inventive step of auxiliary request 3, the Court applied the problem-solution-approach, (again) emphasizing that this promotes the legal certainty as this method is also applied by the EPO, and confirmed inventive step.
- The Court finds literal infringement of claim 1 according to auxiliary request 3.
- On private prior use, the Court has to apply (Art. 28 UPCA) the national laws. For Germany, the Court accepts prior user rights “for the products which are found to literally infringe”.
- As the claimant has not proven infringing acts in the other countries the Court does not have to decide about prior use in these countries.
Comment
- The decision on res judicata is correct, as the German national invalidity decision involved the same parties. One wonders why the defendant did not initiate revocation proceedings in the UPC with a different claimant, which would have circumvented res judicata.
- However, the Court allowed an insufficiency argument (based on Art. 83 EPC) to be raised with respect to the invalidity of the German part of the European patent, because it was not raised in the national invalidity proceedings. This may be correct as far as res judicata is concerned, but this implies that I can introduce new invalidity grounds in later proceedings. In my opinion, this should not be possible as it undermines legal certainty and the principles of fairness and equity.
- In this case, the Court only had to judge with respect to the prior private use defence for Germany, but as the Court noted, the defence has to be decided according to the law of each country concerned. As the law varies significantly, not only with respect to when the defence can be invoked but also as to the extent of the prior user right, the UPC countries should agree on one set of rules for the UPC. The same should be endeavored with respect to compulsory licenses. I agree it is not the most urgent problem to be resolved, but if in a few years European patents can only be litigated in the UPC, it would be logical if the law on patents would be, as far as possible, the same throughout the UPC territory.
10 October 2025 (published last week)
Central Division Munich, Wirplast v Vilpe Oy
Interim Conference
Facts
- On 2 April 2025, claimant started a revocation against defendant.
- The interim conference was held on 9 October 2025.
Order after the interim conference
- The rejoinder to the reply to the defence to the application to amend the claim, dated 28 September 2025 but received late by the Court, is admitted.
- The request not to have to file translations of D1, D2 and D4 is rejected.
- Further management orders are given.
- The value of the litigation is set at € 630.000.
- The date of the oral hearing is set at 3 December 2025. Visual aids are allowed. They have to be sent to the other party by28 November 2025.
Comment
This was the idea when the Rules were created! A timely interim conference, which also shows that in revocation proceedings if a Court is not overburdened with work (like the German Local Divisions) and there is an efficient JR, you can have an (orderly) oral hearing 8 months after the Statement of Claim.
10 October 2025 (published last week)
Local Division Munich, Motorola v Asus
UPC_CFI_303/2025; UPC_CFI_688/2024
Patent revoked
Facts
Infringement proceedings were initiated, with a counterclaim for revocation.
The Court
- The Court interpreted the claims with reference to the Court of Appeal’s decision in Nanostring v 10xGenomics.
- Court applies the gold test regarding extension of subject matter and concludes that claim 1 and claim 11 as granted are invalid, as they were not present in the original application.
- The auxiliary requests did not resolve this extension of subject matter issue.
- As claim 1 and 11 are invalid, the infringement claims which were based on claim 1 and 11 have to be dismissed.
Comment
- This case, between a US and Taiwanese company regarding a European patent granted in English and litigated in the busiest Local Division, raises questions about venue selection
- Another surprise for me is that this litigation was started while it is in my opinion pretty clear that the claim on which the infringement action is based cannot be found in the original application and apparently no auxiliary requests can solve the problem.
- Extension of subject matter should be avoided by both the prosecuting attorney and the EPO, but was not caught in this case. As a user of the system who bears the costs, one may question the value of such litigation!
17 October 2025 (published last week)
Local Division Düsseldorf, Hewlett Packard v Rentmeister and Moan Technology
PI application (China)
Facts
- Defendant 1 (Rentmeister) is Moan Technology’s distributor of cartridges in Europe. Moan Technology is from Shenzhen, China, and sells itself in Europe as well via Amazon.
- Parties agree that defendant 1 will not defend itself and that the claimant will withdraw no. 4 of the demanded order, i.e. the order for an interim award of costs.
- Service of the Chinese defendant has not yet been completed.
The Court
- If a party is informed that it can file a response to an application for a preliminary injunction (“PI”) and fails to do so, the Court cannot issue a default judgment because of R. 205 RoP and is not in conformity with the underlying reasons for a PI as a default judgment can be set aside.
- The Court finds it more likely than not that the cartridges infringe.
- The validity of the patent is reasonably certain, and the burden of proof that it is more likely than not that the patent is invalid, rests on defendant.
- The Courts states that:
a. It must weigh up the interests of the parties;
b. It must take the time factor in account;
c. necessity is a given if there is irreparable harm, but that is not the only ground for necessity. For instance: direct competition between a patentee’s product and infringer’s product may also make the PI necessary. - The Court considers all conditions fulfilled.
- A partial withdrawal of the original claim as part of settlement is allowed.
- The PI is granted. No necessity for security.
Comment
- All rather straightforward without surprise. Although in fact no defence was brought, the Court looks seriously if all the requirements are fulfilled. So if you are a plaintiff in PI proceedings, make sure that you have your case with your arguments set out in full in your application.
- Again, there is no decision with respect to the Chinese defendant who was not (yet) served. This makes the victory useless, as I assume the sales through Amazon continued. Again, I do not understand why the claimant did not refer to Art. 15, last paragraph, of the The Hague Convention, and why the Court did not apply it. This seems even more justified as China has given a positive declaration with respect to the second paragraph of Art. 15 of the The Hague Convention. In my opinion, also against the Chinese defendant, a PI order could have been given. A clear example of local representatives (and the German Local Division?) being stuck in their national thinking and not wanting to adopt a practical solution to service in PI proceedings of defendants that frustrate the service process!
30 October 2025
Court of Appeal, Oerlikon v Bhagat
UPC_CoA_8/2025, UPC_CoA_8/2025
Security for costs
Facts
- The claimant Oerlikon was awarded costs after prevailing in first instance, for an amount of € 77.064,65.
- An appeal was lodged by Bhagat against the award of interim damages, the value of litigation, and the award of costs.
- An oral hearing before the Court of Appeal is set for 14 November 2025.
- Bhagat has so far refused to pay the costs awarded by the Court of First Instance, alleging that it is a small company with limited resources.
- At the end of September 2025, Oerlikon (respondent in the appeal proceedings), applies for a security for costs in the amount of € 168.000, covering also the costs award in first instance.
- Bhagat responds that this would be contrary to Art. 47 of the Charter of Fundamental Rights of the European Union (“right to an effective remedy”).
The Court of Appeal
- The Court considers that it is not possible to obtain security for costs which have already been awarded by the Court of First Instance. Such costs are a matter of enforcement. Moreover, this would mean that the defendant in first instance would be required to provide security for costs, which the Court has already decided is not possible (see the previous decision of the Court of Appeal in AorticsLab v Emboline, UPC_CoA_393/2025).
- A party may ask for a security for costs during the proceedings, and even after the summons to the oral hearing, but then only subject to the circumstances of the case and substantiated by compelling reasons. Such reasons were considered to be present in this case, as the request was made two weeks after Bhagat’s second refusal to pay the costs of first instance.
- The Court denies security for the first instance award of costs and orders
€ 19.000 for costs on appeal.
Comment
- This case offers valuable lessons for users of the system on recovery of costs and security.
a. If you start proceedings against a small (or even big) company outside the EU which does not have assets in the EU, you should realize that it may be difficult to recover costs, even if you win the proceedings.
b. If you plan to sue a company that operates in the EU, it may be worthwhile examining whether, under the applicable local laws, you can carry out conservatory seizures on monies owned by customers of the non-EU defendant. However, as noted above, recovery of costs is not always guaranteed.
c. Consider the costs of chasing after your monies. Lawyers do not always approach matters as a business person does (at your expense) and employ all possible legal tricks to get your money, but success cannot be guaranteed! In some cases, it may be wiser to have a discussion with the opponent and see what you can obtain. - Be careful! In this case, the Court of Appeal ordered security for costs in this very late stage of the proceedings, but this was an abnormal situation. In the normal (usual) situation you should do so more timely, in my opinion at least before the closure of the written proceedings.
- A far as I can see, Bhagat did not argue that, as defendant in first instance, it should not be required to provide security for costs on appeal. The UPCA provides (and the Court of Appeal has held) that the defendant in first instance is not required to provide security for costs, which to me is understandable, because it was not the defendant’s choice to start litigation, but that of the claimant. But why should the defendant not also be allowed to appeal without having to provide security? You can of course argue that the roles are now reversed, but, on the other hand, if the claimant had not started proceedings before the Court of First Instance, an appeal would not have been necessary. Moreover, the final determination of who is right and who is wrong is made on appeal! At least, Bhagat should have raised this point!
– 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”.