UPC Unfiltered, by Willem Hoyng – UPC decisions week 46, 2025

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20 October 2025 (late published)
Local Division Düsseldorf, Shangrao v LONGi

UPC_CFI_559/2025

Case settled

Facts

1. Shangrao filed a patent infringement action on 29 June 2025.
2. On 20 August 2025, the Court stayed the proceedings because of settlement negotiations.
3. A settlement was reached.
4. The claimant requested withdrawal and asked for the reimbursement of 60% of the court fees.
5. The defendant agreed and stated: no costs decision necessary.

The Court

The Court granted the requests.

Comment

This case could have been filed in a less busy Local Division but it did not cause too much work in the end, as it was settled before the Statement of defence!
 

24 October 2025 (late published)

Local Division The Hague, Avient v Xingi

UPC_CFI_478/2025

Service on Chinese defendants

Facts

1. This case concerns an infringement action against two Chinese defendants.
2. On 2 July 2025, the Registry initiated service of the Statement of claim in accordance with the The Hague Service Convention and received notice that the submission had been approved and transferred to the Supreme People’s Court.
3. To date, no certificate of confirmation of service (Article 6 of the The Hague Service Convention) was received.
4. On 16 October 2025, the claimant filed a R. 275 RoP application (for alternative service) and asked for permission to serve the Statement of claim during an exhibition in Germany where Xingi would be exhibiting. 

The JR

1. The Judge-Rapporteur (“JR”) found that R. 274(a)(ii) RoP applies because service has to take place outside the EU.
2. As a member of the The Hague Service Convention, China only accepts electronic service with the approval of the defendant, and does not permit direct service as indicated in Article 10 of the The Hague Convention.
3. According to the Court of Appeal, alternative service can only be allowed if normal service (here, according to R. 274(a)(ii) RoP) cannot be effected.
4. As a prior attempt had been made to serve the Statement of claim, the JR allowed alternative service.
    

Comment

1. Article 1 of the The Hague Service Convention states that “The present Convention shall apply in all cases […] where there is occasion to transmit a judicial or extra judicial document for service abroad.”
2. I therefore wonder (but I am certainly no expert on service) whether the The Hague Service Convention allows all kinds of internal “alternative service” rules or whether it should be followed for service of defendants in “Convention” countries?
3. In a case on the merits this is also possible according to Article 15 (2) of the The Hague Service Convention if no certificate of service is received six months after the Registry transfers the Statement of claim to the Chinese Central Authority.
4. So, I wonder if, by applying an internal rule (“alternative service”), you can shorten these six months.
5. Did the defendant not have a temporary place of business in the UPC territory during the exhibition and could the Registry not have simply used R. 271.5(a) RoP to effect service?
6. In any case, all claimants should know by now that if they sue a Chinese defendant in a case on the merits, there will be a delay of at least six months. If you do not want such a delay, start preliminary injunction (“PI”) proceedings and invoke Article 15 (3) of the The Hague Service Convention, and there should be no delay.

7. However, the JR’s decision shows that the Local Division in The Hague was willing to act quickly in order to keep the delay as minimal as possible. I would advise to use this Local Division to initiate PI proceedings against Chinese defendants, as PI proceedings against Chinese defendants in the Dutch national courts have never been delayed due to the unreserved application of Article 15 (3) of the The Hague Service Convention, while I see still a struggle with this article in the busy German Divisions (which, if possible, should be avoided to keep their workload manageable). 

    

7 November 2025 (late published)

Court of Appeal, Lepu v Occlutech

UPC_CoA_900/2025 

Suspensive effect

Facts

1. On 21 October 2025, the Local Division Hamburg granted a preliminary injunction (“PI”).
2. Lepu appealed and asked the Court of Appeal to suspend the order of the Hamburg Local Division.
3. Lepu argued that the order contains apparent legal errors and refers for these errors to its appeal brief. 

The Court of Appeal

The Court of Appeal dismisses the request. Only manifest errors may justify suspension.

Comment

Bij now representatives should know not to waste their clients’ money on these requests. If you want to stand a chance with such request you should be able to point to a clear manifest error which you mention (also) in your application for suspension and for which you do not need more than one or two paragraphs to convince the Court of Appeal.   

11 November 2025

Local Division Düsseldorf, Hewlett Packard (HP) v Rentmeister v Shenzen Moan

UPC_CFI_515/2025

Service of PI application

Facts

1. The applicant filed for a PI on 13 June 2025.
2. The application with respect to the defendant 2, a Chinese company, was sent to the Central Authority in China. No further processing took place by the Chinese authorities.
3. The applicant asked the defendant 2 to accept service voluntarily, which was refused.
4. The applicant asked the Court to rule “good service” under R. 275.2 RoP, i.e. service by an alternative method. 

The Court

The Court granted the request considering the Registry did everything possible to serve in accordance with the The Hague Service Convention.

Comment

1. PI proceedings were initiated on 13 June 2025. As of 7 November 2025, almost five months later (!), nothing has happened.
2. The representative (in the first place), and to a certain extent the Court, do not seem to adequately handle this (apparently) urgent matter.
3. This is an application in PI proceedings: once the Registry has sent the application to the Central Authority of China in accordance with the The Hague Service Convention, the case should proceed if the Court is convinced that the defendant should have knowledge about the application. This is clearly in conformity with the The Hague Service Convention (see Article 15 (3)).
4. I note that “service by an alternative method” is not foreseen in the The Hague Service Convention and therefore seems to be a useless and unnecessary exercise!
5. A more efficient way of conducting PI proceedings would in my opinion be as follows:
   The applicant requests that the Court set a date by which it has to send its application to the Registry, as well as dates for filing an Objection and the oral hearing. The request to the Court should contain the draft application and an explanation of how the applicant will ensure that the defendant is aware of the application, as well as the dates for filing an Objection and the oral hearing.
   Once the court has granted the request, the applicant sends the application, which includes the dates for the Objection and oral hearing (referring to the applicable Rules of Procedure, including the requirement for a representative to file such Objection and to appear at the oral hearing) along with the required translation, to the Registrar. The Registrar informs the applicant of the day on which it has sent the application to the Chinese Central Authority. The applicant then ensures that the Chinese defendant is aware of the content of the application and the dates for filing an Objection and the oral hearing (making reference to Article 15 (3) of the The Hague Service Convention and warning that the Court may issue a decision if the defendant does not appear). 
   If the defendant does not file an Objection, the Court proceeds with a decision based on the application.

12 November 2025

Local Division Brussels, Organon v Genentech

UPC_CFI_407/2025; UPC_CFI_408/2025

Review of order to inspect / preserve evidence

Facts

1. On 6 May 2025, Genentech applied for orders for evidentiary seizure and inspection.
2. On 18 May 2025, Genentech informed the Court that Organon had started invalidity proceedings against EP 3 401 335 B1 in the District Court of The Hague.
3. Genentech asked to be allowed to use any obtained information and evidence also in the Dutch proceedings.
4. After a meeting with Genentech, the Court issued the requested orders on 30 May 2025.
5. The orders were executed in Belgium and The Netherlands at Organon’s premises on 27 June 2025.
6. On 26 July 2025, Organon requested a review of the orders.
7. On 28July 2025, the Court issued a time schedule for written submissions for the review proceedings and set the oral hearing for 21 October 2025.
8. On 23 July 2025, Genentech asked for a penalty payment.
9. On 24 July 2025, Genentech asked for confidentiality.
10. On 29 July 2025, Organon asked for protection of confidential information.
11. On 8 and 21 August 2025, Organon asked for confidentiality according to R. 262A RoP (again?).
12. The Court suspended all applications (8 to 11) until the outcome of the review proceedings.

The Court

1. The Court must decide whether it was right to issue an ex parte order. First, it should consider the facts which are mentioned in the application. Thereafter it should consider any facts that were reasonably known to Genentech but not mentioned in the application. The Court then has to decide whether failing to mention certain facts is a breach of the duty to disclose all relevant facts. Finally, the Court should assess all the facts and evidence submitted by the parties or publicly known in order to decide whether the order was right.
2. The decisive date for determining whether or not “ex parte” was justified is the date of the (ex parte) order. To determine whether the order was correct, the assessment should be what the outcome of inter partes proceedings should have been at the time the order was issued.
3. Anything that happened thereafter, such as the result of the seizure, is irrelevant.
4. The Court confirmed the order.

Comment

1. The Brussels Local Division apparently wanted to make a name for itself by putting a lot of work into these review proceedings, setting out all the principles (see the most important ones above), which, by the way, seem rather common sense.
2. As I have said before, evidentiary seizures and inspection orders are rather invasive measures which, in my opinion, should only be granted if the infringement cannot be proven otherwise. However, it is important to prevent an infringer from entering the market. Therefore, in this case, although no market authorization was obtained (and given the noise that Organon made about the upcoming introduction of the biosimilar), the order was certainly justified, given the considerable time it takes to obtain the information sought by such an order.
3. I am puzzled as to why Organon filed for a revision (if they are not infringing, why making such a – desperate – effort) and why they filed an invalidation case in the national Dutch Court rather than the UPC? This seems to take more time and only has effect in The Netherlands. Looking at the recent case law, I do not see a difference in the appreciation of inventive step between the Central Division Milan and The Hague. If Organon does not yet have a marketing authorization, why don’t they try to clear the way with a revocation/declaration of non-infringement action in the UPC? 

12 November 2025

Local Division Düsseldorf, American Wave v Surftown

UPC_CFI_837/2024; UPC_CFI_349/2025; UPC_CFI_394/2025

Review order JR

Facts

1. The defendant requested an extension of two months for their Rejoinder, arguing that the claimant had in fact two months extra for its Reply due to the confidentiality procedure.
2. The JR refused.
3. The defendant sought revision of the JR’s refusal.

The Court

1. The only reason cited for the extension of time was that the claimant was given more time to reply due to the confidentiality procedure.
2. These are not compelling reasons for an extension of time.
3. It would encourage parties to file confidentiality requests, if this led to longer time periods for their submissions later on.
4. The request was dismissed. 

Comment

1. Again a waste of the Court’s time and the client’s money. The defendants failed to even state why they needed more time!

2. Revisions are (almost) never successful, and if the rules are revised, the possibility of revision should be removed, since in the exceptional case that the JR is wrong, a discretionary review by the Court of Appeal remains possible. 

    

13 November 2025

Local Division The Hague, AdvanSix v Troy

UPC_CFI_321/2025

Settlement

Facts

1. On 10 April 2025, the claimant lodged a Statement of claim.
2. Service to all parties was completed on 16 May 2025.
3. The parties requested a postponement of the date for the Statement of defence due to settlement discussions, and this request was granted.
4. The claimant filed a withdrawal request.
5. The defendants agreed. No cost decision was required.

The Court

granted the request and ordered a 60% reimbursement of the court fees to the claimant.

Comment

Another settlement after the Statement of claim. You wonder why parties cannot settle before having to spend money and court fees on the Statement of claim, but apparently some defendants need to be convinced that the claimant is serious. Confronted with the considerable expense of a defence and the uncertainty of achieving a victory, they prefer to settle!

– 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”.