UPC Unfiltered, by Willem Hoyng – UPC decisions week 42, 2026

12 October 2026
Court of Appeal, Kodak v Fujifilm

UPC_CoA_312/2025

Extensions

Facts

1. Fujifilm asked for a one week extension for filing written comments on Kodak’s request for a rehearing.
2. Kodak agreed to the request.

The JR

The JR granted the request, noting that Fujifilm had to prepare for an oral hearing between the same parties and that the extension would have no influence on the speed of the proceedings.

Comment

1. As is well known by now, I am against extensions for reasons other than (truly) exceptional circumstances, and I do not think there are such circumstances in this case.
2. However, in this case, the period for filing a response is not a period prescribed by a Rule but one set by the Court (R. 255 RoP). What Fujifilm should have done is request the Court, immediately after receiving the application for a rehearing, to set a convenient date for its response, giving the same reasons that have now led to the one week extension. If that was not possible because it received the application and the date for a response at the same time, then the request and the decision to grant it are reasonable and acceptable.

12 October 2026
Local Division Munich, Huawei v Sercomm

UPC_CFI_3452/2026

Service

Facts

1. These are the proceedings against Sercomm Italy after the JR had separated the proceedings against the four Sercomm defendants.
2. Three attempts to serve the Statement of Claim (apparently each time using the registered letter with proof of receipt method) were unsuccessful.
3. Huawei stated that the defendant was aware of the content of the Statement of Claim because it has the same managing director as the German company and that the defendant itself was responsible for the impossibility of effecting service.
4. On 7 October 2026, the JR ruled that the attempts to serve were to be considered as a valid service under R. 275.2 RoP and that the defendant had to file its defence by 28 October 2026.
5. Given that the method by which, according to the JR, this order should be transmitted to the defendant had proved unsuccessful, the JR was requested to order an alternative method.

The JR

1. The JR gave the order to also upload the order in the two cases against the other Sercomm defendants which had been served.
2. The JR gave the order to send a paper copy to the representative of Sercomm Germany.

Comment

1. Again, within the UPC, the sub registry and the claimant have not been able to serve the Statement of Claim since April 2026. So much for efficient UPC proceedings!
2. Questions:
   1. Why did the claimant (a Chinese company) start these proceedings against a Taiwanese company and its subsidiaries before the busy Munich Local Division in German?
   2. Why did the sub registry not use Art. 20 of the EU Service Regulation and send the Statement of Claim (with an Italian translation) to an Italian bailiff (ufficiale giudiziario) competent to serve in Italy? (I say this because I do not see from the JR’s order that such service has been tried).
3. I have serious doubts that the “alternative” service of R. 275 RoP constitutes valid service, as it does not comply with the Regulation (and such service in compliance with the Regulation is still available).
4. Note that the JR does not even require that at least an English translation was provided for the “alternative service”. One of the requirements under the EU Service Regulation is that the Statement of Claim is served in Italian or in a language which the defendant understands. Assuming that everybody in Italy (and, for that matter, in Taiwan) understands German is not realistic.
5. Not for the first time, I suggest to change the Rules of Procedure and to leave the task of service to the claimant.
6. If there is no such amendment to the Rules, the Registrar should make sure that all sub registries are provided with information on how to serve Statement of Claims in all countries of the world. One of the instructions to the sub registry should be that, for a service outside the country where the sub registry is established, claimant should always provide (at least) a (translated) copy in English.

12 October 2026
Court of Appeal, Promosome v BioNTech

UPC_CoA_146/2026; UPC_CoA_147/2026; UPC_CoA_148/2026

Extensions?

Facts

1. The appellants, Promosome, filed a request in all three of their appeals for a one month extension for filing the Statements of Grounds of Appeal.
2. They cited “a heavy professional workload” as exceptional circumstance.
3. They further referred to the Bavarian summer school holiday period and the Bavarian autumn school holidays.

The JR

The JR refused the application.

Comment

1. This request makes me laugh! Does this representative really think that a heavy professional workload and school holidays are a reason for an extension?
2. The same counsel prepared the case at first instance, so we may assume that they know the case inside out. Now they have four months to explain why they do not agree with the decision. One very busy litigator can easily work (I speak from my own experience) at least 600 to 800 hours during such a period. However, here we do not have one representative working on his own but working in a substantial Dutch/German law firm. So, as the JR also remarks, it is all a matter of organization.
3. There is a lack of schoolteachers, so if the representative does not want to work during the Bavarian school holidays, I advise them to become schoolteacher.
4. School holidays may even be a help! Teenage children can earn a bit of money by helping in the office with copying, making coffee and, in the case of the brighter ones, perhaps even do some research with the help of AI.
5. Let this all be a lesson for representatives: do not bother the UPC with this kind of requests.

13 October 2026
Local Division Munich, Swarco v Yunex

UPC_CFI_245/2025; UPC_CFI_618/2025

Too late!

Facts

1. Yunex did not dispute the constructive identity between the product inspected pursuant to the Inspection Order and the one delivered to the city of Mönchengladbach.
2. The LD decided that this fact was therefore established between the parties.
3. In view of revocation proceedings pending before the Central Division in Paris, the date of the oral proceedings was changed to 2 February 2027, and a further interim conference was set for 11 September 2026.
4. After a central limitation before the EPO, the CD Paris maintained the patent in a limited form.
5. The parties filed extensive further submissions.
6. The second interim conference resulted in the refusal of parts of Yunex’s submissions.
7. On 30 September 2026, Yunex filed a request for revision of this refusal (R. 333 RoP), calling it “another filing” and without paying the fee (R. 333.3 RoP).
8. On 1 October 2026 ,Yunex filed the same request, but this time as a R. 333 RoP request, with payment of the fee, and asked for an extension of the term for filing (which had expired on 30 September 2026).

The Court

The Court refused the request as it was filed late (payment was only received on 1 October 2026), and Yunex did not ask for reinstatement of rights but only an extension of term. Anyway, neither request could have been granted because the late filing (which is only complete upon payment of the fee (R.15.2 RoP) was due to an error by Yunex’s representative citing as it’s reason a heavy workload.

Comment

1. If you just proceed before the UPC as if you are litigating in your national system and do not study the Rules of Procedure, then you are bound to make mistakes.
2. Patent attorneys have to obtain a certificate. That does not give them litigation experience, but provides at least a guarantee that they have studied the Rules of Procedure of the UPC. In The Netherlands, if you want to become a member of the Supreme Court Bar, you have to pass an exam. In the UPC every member of a Bar can act as a representative before the UPC. No exam is required. Users of the UPC should be aware of that!
3. Filing on the last day is a habit which is not unusual among litigators. I was confronted with it as a young associate in the pre-fax era. The writ of summons in cassation had to be served by a bailiff before 8 p.m. on the last day. On that day, my mentor, Mr. Blackstone, finished the draft at 5.30 p.m., knowing that the address for service was a 90 minute drive away. He then sent me and another associate in separate cars to that address, making sure that if one of us had an accident, the writ would still arrive on time. The bailiff was waiting at the address of service as of 7.30 p.m. Later in life, I changed the same last day routine. It is all a matter of better planning. It leads to better results. It is better for the nerves, and filing just one day earlier could avoid a disaster such as this one or a failing IT system.

13 October 2026
Local Division Düsseldorf, fiskaly v Swissbit

UPC_CFI_1332/2026

Evidentiary seizure / inspection

Facts

1. fiskaly is the owner of Unitary Patent 4 285 308 for “securely registering a sequence of transactions”.
2. fiskaly obtained an ex parte order for the seizure of evidence and inspection at Swissbit’s German premises.
3. Swissbit asked for a review of that order.
4. The LD confirmed the order.
5. On 15 June 2026, the expert issued an extensive description, which was provided to the representatives of fiskaly with an order to keep its content and exhibits confidential, including from their client.
6. On 19 June 2026, the LD ordered that this secrecy obligation should be maintained until Swissbit’s request for review had been decided.
7. Swissbit requested that the confidentiality obligation be maintained for part of the report and that a confidentiality club be established for another part, which should not include anyone working in fiskaly’s research department.

The Court

1. Independently of a request for review, a defendant can ask for confidentiality.
2. The LD has already stated that, with respect to access to the results of an evidentiary seizure (including the expert report), the following rules apply:
   1. As a first step, it has to be decided if the expert report and the seized documents contain business secrets, other confidential information and/or personal data.
   2. Insofar as such business secrets, other confidential information and personal data are irrelevant to the questions of infringement and infringing acts, such information should be redacted.
   3. If the information is relevant for the infringement questions, it has to be decided whether it can be disclosed to the requesting party under a confidentiality obligation or only to a limited number of persons.
3. It is for the defendant to show that and why certain information is not relevant for the infringement questions. However, if the expert has not used certain information when discussing infringement, it is for the requesting party to show why that information is nevertheless relevant. The same applies if the expert quotes from certain documents and the requesting party wants to see the whole document.
4. Information is irrelevant to the infringement questions only if it is neither directly nor indirectly relevant to those questions and can be clearly distinguished without the risk of making the expert report less clear.

Comment

1. All this makes sense and is important for representatives. It is again unfortunate that the decision is not directly available to all representatives because it is in German.
2. It again shows that the ex parte evidentiary seizure is a very invasive and far reaching measure (in this case involving the source code), which should not routinely be granted but only if infringement is likely and there is clearly no other way of establishing infringement.
3. Respondents should realize (as is also stated in the decision) that objections that the seizure is not necessary or disproportionate should be made during the possible review proceedings. The LD is, in my opinion, right that during such review proceedings no information should be disclosed to the requesting party. The representative or requesting party will have the information, but we have to trust that they (also knowing the severe consequences for disobeying) will not convey the information to their client.

13 October 2026
Court of Appeal, Rematec v Europe Forestry

UPC_CoA_88/2026; UPC_CoA_89/2026

No appeal against reinstatement decision

Facts

1. The Local Division ordered Europe Forestry to bear 25% of the costs of first instance and Rematec to bear 75% of the costs of first instance.
2. On 18 March 2025, more than a month after the decision of the Local Division, Rematec lodged an application for a costs decision and asked for retroactive extension of the missed time limit or re-establishment of rights.
3. On appeal, the Court of Appeal awarded Rematec 80% of the costs. On the last day of the month period for requesting such a decision, Rematec requested a costs decision from the Court of Appeal. On that same day, the registry of the Court of Appeal warned Rematec’s representative that the request should be filed with the Local Division.
4. Only on the next day Rematec filed its request for costs with the Local Division.
5. Having been told that the Local Division did not accept the filing date at the Court of Appeal as the filing date, Rematec filed for a re-establishment of rights or an extension of the one month period with a day.
6. The JR dismissed the requests, holding that Rematec’s representative had not acted with due care as required for a re-establishment of rights and that an extension of time was inadmissible.
7. Rematec requested leave to appeal.

The Court of Appeal

1. According to R. 320.7 RoP, no appeal is possible against a decision on re-establishment of rights.
2. An extension of time under R. 9.3(a) RoP is not permitted.

Comment

1. An important (and expensive) lesson: Patent attorneys generally have staff members who keep track of deadlines and dates in EPO cases. However, we are not before the EPO, and certainly at the beginning of a new litigation system, you have to study the (new) Rules and the case law. It is clear that the representatives in this case did not do so (and then blamed their staff for the errors!). I counted the following professional mistakes:
   1. filing late for the 25 percent of the costs awarded by the LD in its first instance decision;
   2. asking for an extension according to R. 9.3(a) RoP, which is not possible according to the case law of the Court of Appeal;
   3. asking for a reinstatement of rights when it was clear that failure to comply with the time limit was not beyond the representatives’ control;
   4. filing the request for (appeal) costs with the Court of Appeal, even though the Court of Appeal had already decided that such costs must be requested from the LD;
   5. ignoring the warning of the registry on the last day of the time limit and only filing the request with the LD the following day (one day late);
   6. ignoring R. 320.7 RoP, which clearly states that an appeal of a decision with respect to re-establishment of rights is not possible.
2. However, not all is bad. On appeal in the case on the merits, Rematec overturned the negative decision of the LD: Bravo!
3. For the future: read the “Unfiltered” or listen to the podcast (and allow your trusted staff to do the same).
4. Finally: Bravo for the (German) JR for providing an English translation for non-German readers.

14 October 2026
LD Düsseldorf, Topsoe v Sypox

UPC_CFI_1696/2025

Evidentiary seizure

Facts

1. An evidentiary seizure and inspection order is carried out.
2. The expert report contains an (extensive) description of Pilot 1 and documents relating to Pilot 1.
3. The defendant filed a review request (R. 197.3 RoP).
4. The Court confirmed the decision to grant the evidentiary seizure request but added that the requesting party had to put up a security of € 500.000 if it wanted to open the reactor.
5. Sypox, with a new representative, filed a review request ex R. 333 RoP with respect to the order to provide the requesting party with information and evidence with respect to pilot 1 which resulted from the review request (ex R. 197.3 RoP).

The Court

1. The request is admissible, as the decision to provide the requesting party with the evidence concerning Pilot 1 is a case management order.
2. The defendants argue that Pilot 1 was not subject of the original order for the evidentiary seizure/inspection.
3. A R. 197.3 RoP review concerns only the question of whether the order for seizure/inspection was justified at the time it was issued. Such a review does not concern the execution of the order or the information obtained during its execution.
4. In any event, the Court disagrees with the defendants and holds that the order for seizure/inspection also concerns Pilot 1.
5. A R. 333 RoP review cannot serve as a basis for raising new complaints which should have been made during the R. 197.3 RoP proceedings.

Comment

1. If a party does not agree with the granting of an ex parte order for seizure of evidence/inspection, it can request a review within 30 days after the execution of the order. Such a review only determines whether the order was justified at the time it was issued.
2. If a party disagrees with the decision concerning the release of information and/or evidence obtained during the seizure, such as, in this case, the release of information relating to Pilot 1, then that is a case management order for which a review can be requested (R. 333 RoP).
3. This seems all quite logical to me! See also hereabove fiskaly v Swissbit.

14 October 2026
Court of Appeal, Fives v REEL

UPC_CoA_42/2026

Confidentiality

Facts

1. This case concerns the appeal against the decision of LD Hamburg in UPC_CFI_274/2023.
2. REEL filed a Statement of Response containing a confidentiality request.

The JR

1. The JR grants Fives an extension until 20 October 2026 to respond.
2. Pending the decision on confidentiality, only Fives’ representatives, their team members and experts may have access to the information. They may only disclose the information to other lawyers, patent attorneys and support staff, provided that they ensure that each such person complies with the provisions of the order.
3. The information may not be used outside these proceedings, unless it was obtained from a source on a non-confidential basis and that source was not bound by a confidentiality obligation.

Comment

This seems to be a rather standard provision, but one wonders who all these persons are (apart from team members) “lawyers, patent attorneys and support staff”? Are they from the same firm as the representatives? What about Fives’ French lawyers and patent attorneys, not to mention in house patent attorneys? Who belongs to the team? I think that, at this stage, disclosure to Fives’ representatives and their support staff and independent experts is sufficient, as all the attorneys at the law firm Bonabry Partnerschaft are, according to the decision, representatives. If this law firm is cooperating with independent patent attorneys, they should have stated so in their Statement of Claim, and those patent attorneys should then be included.

15 October 2026
Local Division Paris, Merz v Viatris

UPC_CFI_1901/2026 ; UPC_CFI_3259/2026

Bifurcation / stay

Facts

1. Merz filed infringement proceedings for infringement of EP 2 377 536 after it had previously obtained a preliminary injunction.
2. Viatris filed a counterclaim for revocation.
3. Viatris requested to stay the revocation proceedings until the decision of the national French court in revocation proceedings with respect to the same patent.
4. Viatris also requested to send the revocation proceedings to the Paris Central Division.

The Court

1. In the infringement proceedings, Viatris had already asked for a stay for the same reasons as in it’s preliminary objection. The JR refused such a stay.
2. There is now a new element in the case namely the filing by Viatris of the revocation proceedings. The request for a stay because of national revocation proceedings has to be decided on the basis of Art. 29 and Art. 30 of the Brussels Regulation.
3. Merz does not object against the request for bifurcation. The Court bifurcates and will continue with the infringement proceedings.
4. This means that now the Paris Central Division has to decide the request for a stay because of the lis pendens.

Comment

1. Merz obtained a preliminary injunction and is now obliged to start main proceedings.
2. Viatris apparently thinks that it has a better chance to invalidate the patent (an SPC) in French national proceedings than in the UPC.
3. It is now for the Central Division to decide if it is staying the revocation proceedings. The French national proceedings only affect the SPC in France and therefore such a stay does not seem very practical.
4. I note that Viatris asked for a stay because of lis pendens. Assuming that Viatris started the revocation action before Merz started the present proceedings and the French proceedings are between the same parties, I think the Paris Central Division has to stay the case for France (Art. 29 Brussels Regulation) but nothing prevents it to continue for the other countries.

16 October 2026
Local Division Düsseldorf, Aesculap v Boijn Medical Instrument

UPC_CFI_307/2025

Correction decision

Facts

1. The LD has given an injunction for the UK under a “aufschiebenden” condition that the patent in the UK will not be declared (partly) invalid. This is German for the injunction being stayed until the UK court has ruled that the patent is not (partly) invalid.
2. Claimant asks for the LD to correct the word “aufschiebenden” in “auflösenden” which would mean that the injunction works as long as the patent has not been (partly) invalidated.

The Court

1. The Court refuses because it is not a mistake which qualifies as a clerical mistake, an error in calculation or an obvious slip and therefore R. 353 RoP is not applicable.
2. The Court further justifies its decision by stating that its decision is in conformity with the decision of the Court of Appeal in Fujifilm v Kodak where the Court of Appeal held:

”Where it concerns either EU/LC EPs (in view of Art. 24(4) Br I bis and 22(4) LC) or non-EU/LC EPs (in view of comity):

a. the Court may […] issue a decision including its orders under the condition subsequent that the patent is not held to be wholly or partially invalid to the extent the infringement is based thereon in first instance or appeal proceedings before the national court competent to hear the revocation case in relation to such an EP (R. 118.2 RoP and Solvay v Honeywell (C-616/10) mutatis mutandis).”

Comment

1. The Court renders the correct decision that this (alleged) mistake is not covered by R. 353 RoP.
2. However, the Court should not have tried to justify its decision because in my opinion claimant gives the correct interpretation to the above mentioned consideration of the Court of Appeal and the correct translation of “condition subsequent”.
3. Moreover, the interpretation of the LD means in practice that such an injunction would not make any (practical) sense. Why would defendant start revocation proceedings? That could only lead to a finding that the patent is valid which would mean that the injunction starts to work!
4. The patentee itself starting invalidity proceedings with respect to the validity of its own patent? I have never seen that before!

16 October 2026
Court of Appeal, Barco v Yealink

UPC_CoA_145/2026

Late application to amend the patent

Facts

1. Barco lodged infringement proceedings under EP 3 732 827 based on claims 1, 6, 11, 12 and 13.
2. Yealink filed a counterclaim for revocation for only the claims that were invoked.
3. Before Barco started the infringement proceedings, Yealink had already filed opposition proceedings.
4. In the opposition proceedings, Barco filed 267 auxiliary requests.
5. In its Defence to the Counterclaim for Revocation, Barco filed 5 different auxiliary requests.
6. After a negative preliminary opinion of the Opposition Division, which stated that the 267 auxiliary requests were inadmissible, Barco filed 7 further auxiliary requests in preparation of the opposition hearing.
7. These auxiliary requests were not filed in the UPC proceedings and all contained the subject matter of claims 8 and 9.
8. During the opposition hearing on 17 and 18 June 2026, one of the auxiliary requests was deemed to be novel and not insufficient or containing extension of subject matter. The discussion on inventive step was postponed by the OD until 5 November 2026.
9. On 19 June 2026, Barco filed its reply to the defence to its application to amend the claims in the revocation case and defended its original auxiliary requests it had filed in its defence in the revocation case.
10. On 20 July 2026, Yealink filed its rejoinder, discussing the original 5 auxiliary requests filed by Barco.
11. On 4 August 2026, Barco filed an application for leave to amend the patent, seeking to introduce as an auxiliary request the same auxiliary request which remained in the opposition proceedings.
12. The LD Brussels refused the request.
13. Barco appealed.

The Court of Appeal

1. The Court cites the case law concerning R. 263 RoP and the conditions mentioned in R. 263 RoP. The same principles are applicable to R. 30.2 RoP. The LD has discretionary power.
2. The LD did not exceed the limits of its discretion.
3. Claims 8 and 9 are not invoked. So they survived. In fact, Barco now tries to add claim 8 and 9 to the infringement case. However, R. 30.2 RoP cannot be used for this purpose.
4. The LD was right that Barco could have invoked claims 8 and 9 much earlier.
5. The same is true for this auxiliary request.
6. Barco should have aligned its opposition with the UPC case.
7. Even assuming the OD hearing was the triggering point, why did Barco have waited seven weeks before filing its request?
8. The LD Brussels was also right to hold that allowing the request would unreasonably hinder Yealink in its defence.

Comment

1. Why did Barco appeal? The outcome was a no brainer.
2. The outcome on appeal only confirms the complete lack of coordination between the patent attorneys handling the opposition and the representatives handling the UPC case. And that is not all:
   1. why did Barco not start litigation by invoking all relevant claims (claims 8 and 9 apparently also contain relevant subject matter to the infringement);
   2. why file completely different claims before the EPO and the UPC;
   3. why was Barco still defending the original claims on the 19 June and not (also) the remaining auxiliary request before the EPO, by filing an application under R. 30.2 RoP for that auxiliary request? On 18 June, the preliminary outcome of the opposition proceedings was known. There was a whole day left to do this!
3. The EPO proceedings keep surprising me. How can you file 267 auxiliary requests and still be allowed to file new request on the day of the hearing?

16 October 2026
Local Division Paris, Align v Angelalign

UPC_CFI_684/2025; UPC_CFI_2279/2025

Infringement action

Facts

1. This case concerns an infringement action with respect to EP 2 237 738.
2. The defendant filed a counterclaim for revocation.

The Court

1. The JR has already decided that the Court has international jurisdiction for alleged infringements in the UK.
2. The Court discusses the patent for “orthodontic repositioning appliances having improved geometry, methods and systems”.
3. After citing the general principles, the Court interprets the claim features as far as there is disagreement between the parties.
4. The Court adopts the broad claim interpretation proposed by the claimant holding among others that “patent specifications constitute their own lexicon with regard to the terms used therein”.
5. The defendant has not raised serious doubts supported by substantiated facts and/or practical examples that the skilled person is presented with an undue burden in implementing the claimed subject matter. The Court rejects the insufficiency attack.
6. The Court cites the principles with respect to dealing with an added matter attack and especially the argument of an “intermediate generalization” which is only successful if there is “an extricable link” between the omitted feature(s) and the new feature used in the claim. The Court rejects the added matter attack.
7. The inventive step attack fails because D1 and D2 do not together disclose all claim elements and, there is no pointer to combine them. Clear pointers are also missing for combining D1 and D3. The other combinations proposed equally miss the necessary pointer.
8. The Court, referring to its claim interpretation, concludes to literal infringement.
9. Claimant has only brought late and insufficient evidence about infringing acts in the UK. As a consequence, the Court dismisses the infringement action as far as the UK is concerned.
10. As the claimant accepts that patients who are already treated with the defendants’ method can continue that treatment, there is no reason not to grant an injunction because of patients’ interests.
11. Claimant did not bring enough proof that “infringing” acts started before the grant of the patent and claimed damages instead of “compensation”. The Court dismisses the demand for damages for the period prior to the grant of the patent.
12. The Court grants the requested injunction and the other requests but refuses to order security and publication of the decision (“only in specific circumstances”).

Comment

1. In my opinion a well-reasoned decision delivered in 14 months.
2. The decision confirms several general aspects of UPC proceedings, apart from the front-loaded character, which, also in this case, resulted in late filed arguments not being accepted:
   1. claim interpretation decides most of the time the infringement question. There is a tendency to a broad interpretation;
   2. intermediate generalization is only a good argument for an extension of subject matter attack in very obvious cases;
   3. if you want to obtain an injunction for a country outside the UPC you have to bring (timely) proof that the alleged acts constitute infringement in such country;
   4. no security and no publication of the judgment except in special justifying circumstances;
   5. most inventive step attacks are already not successful because of lack of pointers or incentive to combine. It does not make sense to argue a combination of documents based on a realistic starting point if you cannot explicitly and convincingly argue a pointer or incentive to combine.