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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22 April 2025
Local Division Düsseldorf, Orthovox v Mammut
UPC_CFI_16/2024; 121/2025; 124/2025
Cost procedeedings
Facts
The claimant seeks protection of confidential information for (the essential parts of) its statement of claim in the cost proceedings.
The Judge-Rapporteur (“JR”)
- The request of the claimant for protection of confidential information is granted.
- The JR states that all the conditions of R. 262A RoP have been fulfilled.
- Specifically, the JR cites para. 5 of R. 262A RoP “whether the grounds relied upon by the applicant significantly outweigh the interest of the other party to have full access to the information and evidence in question”.
- The JR states that the representatives of the claimant have an interest in keeping the costs which result from their representation secret. The argument that R. 262A RoP refers to a party who wants to keep information secret (and not a representative) does not change this, for two reasons.
a. also the party may have an interest in keeping this information secret.
b. Art. 58 UPCA states that third parties may also ask for protection of trade secrets.
Comment
- We will not know how many hours the representatives of the claimant spent on this case and what their hourly rate is. The same applies to the patent attorneys from a different firm.
- The JR mentions that only the defendant has an interest in having all these details as it can then dispute certain costs.
- This also means that not only can defendants not divulge that information but also that the public at large—after the cost proceedings have been terminated—will not get the information when they make a public access request.
- Apparently the general interest in knowing what a UPC proceedings costs would not play a role. The question is whether such total lack of transparency is acceptable.
- I give a (frequently occurring) example. The general counsel of a US company sued in the UPC receives all kinds of cold calls from representatives offering to represent them. They can tell all kinds of stories about (their) costs. He knows that another US firm, whose general counsel he knows, has just terminated UPC proceedings. He calls his friend asking about his experience with the firm(s) which represented his company. He cannot give any information because he is under a confidentiality order.
- Have you ever seen an architect, builder, surgeon, or fiscal adviser have you sign a secrecy agreement about their costs?
22 April 2025
Court of Appeal, Amazon v Nokia
Settlement
Background
- Nokia sued Amazon in first instance.
- Amazon wanted to obtain several documents and information without redacted parts. The Local Division in Munich refused.
- Amazon appealed. Nokia replied, and on 26 March 2025, an oral argument took place.
- On 9 April 2025, the Local Division accepted Nokia’s withdrawal of the main case.
- On 4 April 2025, Amazon informed the Court of Appeal that the parties had settled and that they assumed that the case in the Court of Appeal would also end with the Local Division’s decision that the main case had ended.
The Court of Appeal
The Court of Appeal refuses the Appeal on the basis of R. 360 RoP.
Comment
- R. 360 RoP states that if an action has become devoid of purpose, the Court may dispose of the action by order at any time.
- The Court of Appeal understandably decides that ‚Court‘ in R. 360 RoP also means the Court of Appeal.
- I understand this decision to mean that the Local Division’s decision that the main case had ended did not automatically mean that the appeal regarding R. 190 RoP (‚Order to produce evidence‘) had ended.
- So, if the parties would have preferred no decision in this case, the appellant should have lodged an R. 265 RoP request (which Amazon did offer to do!).
- I still think (as I have said several times before) that a simple letter from both parties to the Registry stating that they have settled the case and want it to be ended (in this case, mentioning both the main proceedings and the appeal) should be sufficient. The Registry informs the Court(s) and mentions the termination of the cases in the Register.
22 April 2025
Local Division Düsseldorf, Atlas v TP-Link
UPC_CFI_417/2024;679/2024;738/2024
Stay of proceedings
Order of the Court
At the request of defendant and with the consent of the claimant the case is stayed according R. 295(a) RoP.
Comment
The reason for this stay (see R. 295(a) RoP) is that a decision in Opposition Proceedings is expected rapidly. This is not necessarily a decision of the Board of Appeal but can also be a rapid decision of the Opposition Division (See also Hoyng, Case Law of the Court of Appeal 2023-2024, p. 93).
Note: the Court may stay the proceedings, but if both parties agree it makes sense to grant such a stay.
22 April 2025
Local Division Munich, Shanghai v Longi
Extension of term/service
The parties (except defendant 4) agreed that the representative for the Longi companies in Europe would also act for Longi China, so service in China is not necessary. In return, the claimant agreed to a somewhat longer term for the answer, which then also results in an answer on the same date for all defendants (1, 2, 3, 5, and 6).
Comment
- This represents very practical streamlining by the JR, avoiding long delays due to service requirements in China. That is exactly why the UPC has chosen to have a JR involved from the start of the proceedings.
- What is happening with defendant 4? That remains unclear, but it is a company established in Germany, so there are no service problems?
23 April 2025
Local Division Düsseldorf, Labrador v Biomerieux
Bifurcation
Order by the panel
- The panel decides early (before the end of the written proceedings) to bifurcate and proceed with the infringement action.
- As there is already a revocation action pending in the Central Division in Milan, the claimant requested that the counterclaim for revocation be sent to the Central Division in Milan. The defendant did not object. The Court does not see strong counterarguments to refuse.
Comment
- If revocation proceedings are already pending, the decision seems logical as it avoids conflicting judgments and saves the parties and the Court considerable time.
- I trust that Milan and Düsseldorf will coordinate to ensure the Milan decision is known before the oral argument in Düsseldorf. This is possible, especially if the Milan Division ensures the interim procedure is short, planning the interim conference shortly after the closure of the written proceedings, which can occur immediately after the last statement. Early planning of the interim conference and the date for the oral argument is essential so that all judges are available.
- All that is not only my wish but also a duty of the JR in Milan (see R. 40 RoP sub b). This avoids the undesirable old national German procedure with infringement judgments rendered without a decision on invalidity. However, Düsseldorf should issue a decision within 12-14 months.
23 April 2025
Local Division Munich, Maxwell v Samsung
Date of Statement of Defence
The Judge-Rapporteur
There are 4 different defendants who were served at different times. The Korean company (defendant 1) has not been served. However, the representative for the other Samsung companies stated that defendant 1 will appear in Court if the proposed date for filing the defence for all defendants is accepted.
The JR decides to set the date for the answer at the proposed date.
Comment
It is wise to streamline the different dates for the Statement of Defence (and to require one Statement of Defence for all defendants) and especially to ensure that a non-EU defendant appears on reasonable notice.
We have seen this streamlining happen before, and it shows the advantage of early participation by a hands-on JR.
23 April 2025
Local Division Düsseldorf, Maxeon Solar v Aiko
No bifurcation
Order by the whole panel
As in the previous Düsseldorf case, an early decision on bifurcation was made.
Comment
- If there are no special circumstances, the rule is no bifurcation, which is logical. It is more efficient to handle both infringement and validity in the same proceedings, which also means that the same claim interpretation is used for both.
- It is a bit strange that Judge Thomas states that he is acting as JR while the whole panel issues the order. Judge Thomas is in the panel acting as Presiding Judge but not as JR. Being the JR in the panel is different from acting alone as JR, but I agree, I may be starting to be too picky!
23 April 2025
Local Division Mannheim, Dish v Aylo
Oral argument
The Judge-Rapporteur
Two weeks before the oral argument, the JR issued an order to prepare for it, indicating that the points mentioned do not prevent the parties from raising other points. The very detailed order raises the following points:
- clarification of the infringement question with respect to the different streaming services mentioned by the claimant;
- whether what the claimant claims is too vague or broad;
- a quantification of the penalty sums;
- the influence of the patent’s expiration (by the time of the oral argument) on the claims;
- did the claimant change its claim in light of the counterclaim for invalidity?;
- questions relating to claim interpretation;
- questions regarding extension of subject matter (Art. 123(2) EPC);
- questions regarding novelty and inventive step;
- if the Court has to apply national law, are the UPC judges supposed to know it, or do the parties have to prove it?;
- if the Court applies UPC law, how does it deal with the doctrine of equivalence, as nothing is stated about it in the UPCA? Does the UPC have to develop a standard valid for the entire UPC, or, as there is nothing in the UPCA, should the theories of the relevant member state be applied?;
- the same question (as under 10) arises regarding participation in infringement without being a direct infringer.
Comment
- It is commendable that the JR provided such an extensive roadmap for the oral hearing. However, under the Rules of Procedure, many of these points (especially the procedural ones) could have been settled during the interim conference. This might also have led to a one-day oral hearing (as preferred by the Rules) instead of the two days now planned.
- Of course this means that the JR would have to have prepared himself much earlier and then again has to prepare for the oral hearing which is not efficient and may not even be possible in a busy Local Division.
- From the questions, it also seems the claimant could have done a better job during the written procedure, as some questions appear triggered by the lack of clarity or vagueness of the claimant’s statements.
- For the neutral reader, the points the Court raises under 9, 10, and 11 are the most interesting.
a. I think the UPC judges can be expected to know and apply UPC and EPC law. However, they are not expected to know national law. If national law is applicable (for instance, because the Court deals with infringements that occurred before 1 June 2023 or with defenses under national law such as prior use), then it is up to the parties to state and prove national law, just as one must allege and prove any fact (if disputed). This must apply generally, even when the UPC case is heard in a division with one or two national judges who know the applicable national law. It would be wrong to suddenly handle it differently, contrary to the UPC’s nature as an international court.
b. It is very good that the JR asks the question about the doctrine of equivalence. This is a better approach than taken by the Local Division in The Hague, which simply applied the Dutch approach to equivalence which was recently developed. Ultimately, it is for the Court of Appeal to establish criteria applicable for all UPC divisions. Let us hope it is neither the Dutch one (which yields unpredictable results) nor the German one (which nobody has yet been able to explain to me), but rather one that is relatively simple and accepted outside the UPC. As the UK is part of Europe and an EPC country, it will also often be subject to UPC proceedings following the CJEU’s decision in BSH/Electrolux. I think the criteria developed in Actavis by the UK Supreme Court would be excellent. Alternatively, the function-way-result test from the US would be an understandable and applicable criterion (accepted by the Dutch Supreme Court as another way to apply Art. 69 EPC and the Protocol).
23 April 2025
Local Division Düsseldorf, Cup&Cino v Alpina
UPC_CFI_519/2024; 47/2025;52/2025
Confidentiality
Background
Infringement and revocation proceedings.
On 10/11 April, the defendant handed in its written submission and requested a confidentiality regime under which only the claimant’s representative and its chief financial officer should get access.
The JR
The JR granted the request, partly because the claimant did not object.
Comment
If the other party does not object and it is clear to the JR that the information constitutes a business secret, such a decision is expected. The presiding judge (acting as JR) acted very quickly, meaning there was hardly any delay.
This is all very much in the spirit of the UPC – a lesson for representatives who ask for extensions because of Easter!
24 April 2025
Local Division Paris, Seoul Viosys v Laser Components, Photon Wave
Decision
Background
The case started on 5 December 2023.
The defendant, Laser, called its Korean supplier, Photon Wave, into the proceedings. The defendant did not file a counterclaim for revocation.
The intervener asked for an extension of the term for the defence to also prepare a claim for revocation, which was refused.
Photon Wave started revocation proceedings in the Paris Central Division; this Division referred the case to the Paris Local Division, which considered such a referral impossible (see order of 24 January: UPC_CFI_238/2024).
The JR proposed using English as the language of the proceedings, as English was the language of the patent, two parties were Korean, and the French defendant was a subsidiary of an international company. However, the parties refused.
Decision of the Court
- 1. The Court explains the patent, which concerns an improved LED.
- The Court interprets certain contested elements of the claim.
- The claimant (patentee) relies on internal analysis and a report by an independent laboratory, Tescan, to prove infringement.
- The Court considers the Tescan report credible and finds that the products of Laser Components infringe.
- The Court concludes that, contrary to what the claimant alleges, Laser Components does not manufacture the products.
- The fact that Laser Components states it did not know and (due to the complexity of the products) could not have known it was infringing is irrelevant regarding an injunction.
- The fact that the defendants did not contest the demanded measures for Germany, the Netherlands, and the UK does not mean these should be granted, as it is up to the claimant to prove infringement in these countries.
- It is clear that the defendant only sells in France. In other countries, other companies within the Laser group sell the products.
- As the claimant argued nothing regarding the justification for the demand of €150,000 in provisional damages, nothing will be awarded.
- The Court grants an injunction only for France and orders communication of information to establish the amount of damages, plus payment of €50,000 as a provisional cost award.
Comment
Unfortunately, this case is not a showcase for the UPC!
- The Paris Central Division referred a revocation procedure to the Paris Local Division without realizing that this was not possible.
- Foreign parties refused the Court’s proposal to handle the case, which concerned an EP patent, in English. I cannot imagine that the Korean companies and the Laser group do their business in French. Consequently, everything had to be translated, making communication slow and difficult. I can only guess that the French representatives preferred to use French. That may be understandable, but it serves as a lesson for foreign litigants (including the Korean claimant here, who could easily have chosen English as the procedural language): ensure you choose experienced representatives willing and capable of conducting proceedings in English.
- Why did the claimant sue only the French subsidiary of Laser and not the parent company or the subsidiaries infringing in other EP countries? The claimant won in France, but Laser can continue infringing elsewhere!
- Why did the defendant and the intervenor not file a counterclaim for revocation? Was communication difficult due to language barriers? However, within three months, starting work on day 1, it should be possible to file such a counterclaim.
- This is especially true because the non-infringement arguments were weak (mostly restricted to reacting to the claims by referring to examples) and attacking the credibility of a convincing report from a neutral lab.
- If you want to obtain damages immediately, shouldn’t you provide arguments to justify such a demand?
- Why did the Court restrict the injunction to France? The defendant stated one could also order from the French website in other countries, and the defendant did not dispute that an injunction for other countries was justified if infringement was found. In my view, R. 171 RoP says the exact opposite of what the Court stated. It was uncontested that there was also a threat of infringement in the other UPC countries (where the patent was validated).
- Moreover, shouldn’t the rule be that infringing in one UPC country entitles the patentee to an injunction for all countries unless the defendant makes it absolutely clear there is no possibility of further infringement elsewhere? Of course this would not have repaired the mistake of the claimant not to also sue with the French Laser company the other Laser companies.
- Why did the Court order measures to calculate damages when the defendant argued (rather convincingly) that it did not know and could not have known it was infringing, and the claimant—as far as I can see from the judgment—did not contest this?
24 April 2025
Local Division Düsseldorf, Rädlinger v Henle
Extension of deadline
The JR
- The claimant received the USB stick containing several exhibits only on 15 April. The claimant could have found the content of the USB stick online via the links in the defendant’s written submission . However, only on 15 April could he check if the USB stick’s content matched the links in the written submission.
- The extension does not cause substantial delay and does not harm the defendant’s interests . Moreover, the defendant only handed the USB sticks to the sub-registry two weeks after the written submission for delivery to the claimant.
- The term for the reply/answer is extended from 28 May to 16 June.
Comment
This is an understandable decision.
First, I do not think one can make a written submission with several internet links and assign the other party the task of downloading them. If exhibits are put on a USB stick, one should ensure the stick reaches the sub-registry of the Local Division by the date the written submission is due. If this is done one or two days later, the term for the next written submission by the other party should arguably not start running until the USB stick has been received. However, it is safer to request an extension, as the claimant’s representative did in this case. In my opinion the representative in this case could also have argued that the submission was late, as two weeks is, in my view, far too late!
25 April 2025
Court of Appeal, Nicoventures v NJOY/Juul
UPC_CoA_5/2025; 237/2025; 7/2025
Access to documents
Background
NJOY filed infringement proceedings against Juul.
The case is currently pending before the Court of Appeal, with NJOY as the appellant and Juul as the respondent.
Nicoventures requests access to all written pleadings and evidence. In its request, Nicoventures wants:
a. certain specific documents,
b. all further written pleadings or evidence, and
c. all written pleadings and evidence in the CMS when the order is granted.
Nicoventures wants the documents because it is opposing the same patent in proceedings before the Board of Appeal.
NJOY argues that Nicoventures cannot get more than what is currently on file.
The JR
- The JR refers to UPC_CoA 404/2023 (Ocado), which indicates that Nicoventures has a specific interest in this case.
- If the request also covers documents filed after the request is made but before a decision on access is made and the other party has commented on them then these documents are included in the granted request.
- The unspecified request under (c) is not allowed, as it would require the Court to search the CMS, and the parties would not know on what specific request to comment.
- The Court can, on its own motion and in the general interest, impose certain conditions.
- The request is granted for the specified documents, redacted for personal data, on the condition that as long as the appeal proceedings are not terminated, the documents cannot be filed in other proceedings (such before the Boards of Appeal of the EPO), although mentioning the content and source is permitted.
Comment
- This all makes practical sense, although I do not see why such documents could not be filed in another jurisdiction (Integrity of the Court of Appeal proceedings? Copyright infringement of the work of the party (representative) who filed the pleading?). Anyway, a good attorney or patent attorney likely wouldn’t file the documents directly but would instead use the arguments and prior art (if relevant) in the foreign court.
- Would I have followed Nicoventures‘ complicated (and expensive) path? No. I would have called counsel for Juul and explained that it would be in their client’s best interest if the patent were revoked by the Board of Appeal (or, in fact, stayed revoked, as the Opposition Division had already revoked it). I would then ask if they could send me all relevant pleadings and evidence in their possession to help achieve this.
- As long as pleadings and evidence are not covered by a confidentiality regime nothing would prevent, in my opinion, a party to divulge the contents of such pleadings and evidence submitted by the other party. Am I wrong and implies the fact that the public has to ask access, that I am not allowed to divulge the content of the pleadings of the other party? In my own (not so liberal?) country the public has no access to pleadings (except the Statement of Claim in invalidity proceedings) but I would have no problem to help in a similar situation Nicoventures.
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