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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24 March 2025
Court of Appeal, Amazon v Nokia
Further pleadings in appeal
Background
- In this standard essential patent (“SEP”), Nokia started infringement proceedings against Amazon. In its defence, Amazon invoked entitlement to a compulsory license based on EU competition law.
- Nokia, under a confidentiality regime, handed over certain license agreements with third parties, but Amazon wanted more. The Local Division Munich refused Amazon’s request. Amazon appealed on 30 December 2024. Nokia responded on 11 February 2025.
- On 20 February 2025, the Court of Appeal scheduled oral argument for 26 March 2025.
- On 20 March 2025, Amazon requested leave to respond to Nokia’s answer, attaching the response to its request.
The Court of Appeal
- The Court refused the request and pointed to the Rules, which clearly state that in appeal there is only one exchange of pleadings.
- The Court also referred to R. 233.3 RoP, on the basis of which grounds of appeal must be included in the Statement of Grounds of Appeal.
- Before the closure of written proceedings, a party may request leave to file further pleadings (R. 36 RoP, which also applies on appeal), but after closure, this is no longer possible.
- A party can always request a management order (R. 332 RoP).
- In its request, Amazon referred to a license agreement it received before the deadline for the Statement of Grounds of Appeal, and to an expert declaration dated 28 January 2025. Amazon claimed it was not possible to include all this before the 30 December 2024 deadline. The Court of Appeal was not impressed!
- Amazon will have to present its legal arguments during the oral hearing. It would be unfair to allow further pleadings just days before the hearing, since that would give Amazon two written rounds versus only one for Nokia.
- The Court was also not prepared to postpone the hearing. Doing so would undermine procedural efficiency and risk delaying the first instance proceedings.
Comment
- I have already noted earlier that I do not understand why this case has been filed in German, given that the parties involved have four different nationalities—none of them German.
- The headnote is also in German, which is understandable—why would the Court be obliged to provide a translation? Still, there was no compelling reason to use German, except to accommodate the representatives, who could then proceed in their own language. For the clients, everything had to be translated, costing extra time (which was evidently precious in this case) and money. The argument that the two German judges in the first instance can be better addressed in their mother tongue does not hold, as all UPC judges master English, and each panel in the Court of Appeal includes only one native speaker.
- This decision is a must-read for all representatives used to systems where written submissions can be filed until the night before the hearing (note the Court of Appeal’s emphasis on “equality of arms” and “fairness”). In such systems, it is also common for judges and parties to call each other without the other party (or its representative) being present. As this still reportedly happens, I stress that the drafters of the Rules deliberately excluded such practices from the UPC (see R. 8.3 RoP) for the same reasons of fairness and equality of arms. These practices create the wrong impression.
- We are no longer in national systems. The appeal procedure is front-loaded, must be efficient, and should be decided within a reasonable time. This is especially true, as the Court noted, if delays in appeal could delay the first instance proceedings.
- A different mindset is required for representatives. In this case, Amazon received the LD Munich’s decision on 16 December 2024 and the license agreement (which it now wants to address) by 22 December 2024 at the latest. That gave it 8 days to include arguments on that agreement in its Statement of Grounds, and even its expert (presumably already retained) could have finalized his report by 30 December—without missing Christmas dinner.
- Even if this may be somewhat strict, it is evident that under the UPC regime, a written submission and expert report dated 28 January cannot be filed on 20 March—six days before the hearing.
- In fact, and this is the impression one gets from the decision, the Court of Appeal might well have allowed the request if it had been submitted by 1 February, giving Nokia four weeks to respond.
- The Court of Appeal gives us a clear lesson on when and how further pleadings may be admitted. As said: a must-read for all representatives, especially those who are still holding on to national practices or have not sufficiently studied the Rules!
24 March 2025
Local Division Paris,
Tiru v Maquin UPC_CFI_813/2024
Tiru v Valinea UPC_CFI_814/2024
Saisie
Background
Tiru requested and obtained an order for a saisie against Maquin and Valinea.
The saisie (and inspection order) was carried out, and subsequently the experts rendered their reports.
The Court (with the assistance of an expert) decided which documents were relevant, which should remain confidential, and who should have access to the confidential material. I assume the defendants were heard before any document was handed over to Tiru.
My note: in my view, this is how a saisie and inspection order should be conducted.
Maquin (and Valinea) requested revocation of the (ex parte) order.
The Court held a hearing (R. 197.4 RoP).
The Court
- Maquin argued that in its application, Tiru failed to disclose prior public use (prior art) known to it, which would destroy the novelty of the patent.
- The Court held that the judge-rapporteur deciding the request for saisie is not the judge who decides on validity. Therefore, a patentee is not required to disclose all potential validity attacks in such a request.
- Maquin argued that there was no risk of destruction of documents, so an ex parte order was unjustified. The Court considered all circumstances (including that another saisie took place simultaneously with respect to Valinea for the same alleged infringement) and concluded that there was sufficient risk that documents might no longer be available.
- The Court ruled that there was sufficient urgency.
Comment
- As already noted, the saisie was conducted as it should be—a good example for Local Divisions with less experience in this area. This was not disputed by the parties.
- The findings on “risk of destruction of documents” and “urgency” are no surprise. As to the former, this argument is largely a dead letter, as the risk can almost never be excluded in practice. As to urgency: frankly, I do not see an urgency requirement in R. 192 RoP. A different requirement is proportionality—is the saisie (especially at a competitor’s premises) really necessary, or could the necessary information be obtained by less invasive means (e.g. through a publicly available video showing all relevant features)?
- I agree that the judge deciding the ex parte saisie is not the judge handling validity, and that the applicant need not mention all prior art already known to the examiner. However, if the applicant is aware of very relevant prior art—such as certain public prior use not before the examiner—then that should be disclosed. The UPC judges are patent specialists and should assess whether such prior art presents a prima facie strong case of invalidity (e.g. lack of novelty). In exceptional cases, that could be reason not to grant the saisie. It would be incorrect to suggest that such arguments are never relevant at this stage.
26 March 2025
Local Division Düsseldorf, OTEC v STEROS
Saisie and Inspection Order
Decision of the full panel
The request for an inspection during an exhibition and (alternatively) seizure of documents was granted.
Comment
A very practical order stating that the defendant must actively cooperate—for example, by demonstrating the operation of the two devices, providing necessary passwords, and following the expert’s instructions so that the expert can verify whether claim features relating to the functioning of specific parts are met.
26 March 2025
Local Division Mannheim, Panasonic v Oppo
Request R. 262 RoP by Ampersand
Facts
Ampersand, a firm of IP lawyers, requested access to all pleadings and evidence in the proceedings.
The JR
- The JR referred to the Court of Appeal decision (UPC_CoA_404/2023): access is normally granted to non-confidential pleadings and evidence after a decision has been issued.
- The JR explained that due to the case’s size, the numerous workflows, and the unreliability of the CMS system (which might lead to accidental disclosure of confidential material), access would initially be granted only to certain specific documents. Ampersand could request further access if needed.
Comment
A practical solution given current CMS limitations. The new CMS is reportedly scheduled for July 2025 (as announced during the last Administrative Committee meeting).
26 March 2025
Court of Appeal, Stäubli v X
Costs
Facts
- After X had claimed that Stäubli infringed its patent, Stäubli responded by stating that X’s patent was invalid and requesting confirmation that X would desist.
- X did not agree, but suggested a settlement (e.g. a licence).
- Stäubli declined and reserved the right to take action if X continued to assert its position. X maintained that the patent should be respected unless invalidity was proven.
- Six months later, without further warning, Stäubli initiated revocation proceedings, citing new prior art not previously mentioned.
- In response, X accepted invalidity, surrendered the patent, and one month later filed a request for withdrawal at the EPO (Art. 105a EPC).
- The parties agreed on termination under R. 306 RoP («no longer any need to adjudicate»).
- Stäubli requested costs. X also claimed costs.
- Central Division Paris ordered Stäubli to pay costs. Stäubli appealed.
Court of Appeal
- The Court refers to Art. 69(1) and (2) UPCA. The normal rule is that the unsuccessful party pays the costs, but this can be different for reasons of equity.
- If, as here, a patent holder surrenders the patent after a Statement for Revocation is filed, then as a general rule the claimant should be regarded as the successful party.
- This is not different because the parties used R. 306 RoP to end the case.
- The Court of Appeal agrees with the Central Division Paris that in this case there are exceptional circumstances (see Art. 69(2) UPCA) not to follow the general rule, and that for reasons of equity the exception applies, because the claimant caused unnecessary costs.
- That is the situation, for example, if the claimant (also in revocation proceedings) does not first send a warning letter and the defendant “immediately” complies with the claimant’s requests. The risk that the patentee would opt out upon receiving a warning letter does not change this.
- The Court does not have to assess whether or not the claim of the claimant was justified.
- In the circumstances of this case, Stäubli should have first sent a letter including the new prior art and stated that it would start revocation proceedings if the patent was not surrendered.
- “Immediately” complying with what is requested in the Statement of Claim can be done — in principle at the latest — in the Statement of Defence, with (in revocation proceedings) evidence that an Art. 105a EPC request has been sent to the EPO and the fee paid.
Comment
- In my opinion, a totally reasonable decision by both the Central Division Paris and the Court of Appeal. How come Stäubli insisted that they would be entitled to costs and even pursued an appeal? They were represented by German patent attorneys, and my experience in Germany is that in these types of situations the national system is very much in favour of the claimant.
- However, we are in a different system, and I advise all representatives not only to read Art. 69(2) UPCA (see the word “equity” – German: “billigkeit”) but also Preamble 2 of the Rules (“proportionality; flexibility; fairness and equity”).
- So the lesson of this decision is for all representatives: before you do something for your client, ask yourself — is it proportionate, am I flexible enough, is it fair, and is it equitable?
- Under the circumstances of this case, do you think it was fair to start, after 6 months of “peace,” revocation proceedings with a new (deadly?) prior art document, without any warning — thus denying the patentee the opportunity to avoid substantial costs — and then, after immediate surrender by the patentee, to claim (substantial) costs? In my opinion, one could argue that this shows a lack of judgment, which in the end was only detrimental to the client.
- I have seen several examples during the first year of the UPCA. I restrict myself to the following: during the written proceedings, a party is two minutes late with filing a statement because they had internal IT problems. Do you really think the Court is going to grant your request to ignore the statement?
I add (I agree it’s a bit different): the JR suggests the parties agree in advance of the oral hearing on costs (which would save their clients later cost proceedings and the Court precious time). Is it reasonable to just ignore such a suggestion? - If parties act in accordance with the cited text of the Preamble and think and act as reasonable persons, it is not only more (cost-)efficient for their clients, but it also makes the UPC (even) more efficient.
27 March 2025
Local Division Mannheim, Dish v Aylo/Cloudflare
Demand for information (R. 191 RoP)
Background
The claimant applied for an order that third-party Cloudflare should provide information.
The defendant and Cloudflare opposed the request, and Cloudflare additionally requested access to the case file, including information not publicly available under R. 262 RoP.
Ultimately, the claimant changed its mind and asked the Court to declare that the information held by the third party was not relevant to the decision, and to withdraw the request on the condition that the Court agreed with the irrelevance of the information.
The Court
- A request to declare that the information of a third party is not relevant to the infringement question is not allowed, but it is to be understood as a conditional request — namely, to ask for the information from the third party only if, after the oral hearing, the Court concludes that it is necessary for establishing infringement.
- The request for information from the third party is put on hold.
- The request by the third party for access to pleadings and evidence is also put on hold.
Comment
- The Court discussed — but did not decide — the interesting question of whether a third party not residing in the EU can be ordered to provide information when there is no venue in the EU with jurisdiction. Perhaps my reasoning is too simple, but I do not see why the Court could not issue such an order, as the UPC appears to allow for this under Art. 67 UPCA. I see no difference compared to summoning a witness not domiciled in the EU. The Court can, in my view, summon the witness to appear. Of course, the third party must be properly served with the request and allowed to defend or excuse themselves. The order should also be served upon them, and if they ignore it and become liable for penalty payments, those can only be enforced if they have assets in the EU.
- I agree with the Court that it cannot, midway through the proceedings, decide whether certain information is relevant. However, the claimant should — in its written submissions (normally in the Statement of Claim) — specify what concrete information a third party can provide, why it is relevant, and why it cannot be obtained otherwise. This is something that should be addressed during the interim conference, at which point the JR can decide whether to allow the request for information.
- I am not in favour of deferring this issue until after the oral hearing. If at all possible, the oral hearing should conclude the proceedings, with a judgment rendered within 6 weeks, so that first instance proceedings do not exceed 14 months.
- My impression is that some busy German Divisions (which are not accustomed to holding interim conferences) simply do not have the time to study the file twice, and thus de facto skip the entire interim procedure. Yet the issue in this case is exactly the kind of procedural matter that should be addressed in interim proceedings. This again demonstrates the importance of distributing the UPC’s workload more evenly across its Divisions.
28 March 2025
Court of Appeal, Phoenix v ILME
Extension for answer
Background
- ILME raised a R. 19 RoP objection at first instance, which was dismissed by the JR and the Local Division Munich.
- ILME appealed on 24 February 2025; the appeal was served on Phoenix on 18 March 2025.
- On 26 March 2025, Phoenix requested a three-week extension to the 15-day deadline to file its response, citing the complexity of the case and the fact that its representative was busy.
Decision of the JR of the Court of Appeal
- The JR reiterated the principles in the Preamble of the Rules, including flexibility, fairness, efficiency, and economy.
- A three-week extension would be unfair, as ILME had only two weeks to file its Grounds of Appeal («equality of arms»).
- In view of the first instance proceedings, it was important that a quick decision be reached.
- Phoenix was granted three additional days.
Comment
- The JR made the right considerations, but in my opinion reached the wrong decision.
- It is absolutely correct that ILME had only 15 days to appeal and file its Grounds of Appeal. So indeed, as the JR remarks, it would be unfair to grant Phoenix a full three-week extension.
- However, the JR gives no reason why a three-day extension is fair or necessary under the circumstances.
- The justifications provided for the extension do not, in my view, warrant any extension. “The case is complicated” — well, that applies equally to ILME. And as a representative, you are expected to be an experienced patent litigator capable of handling complex matters within a reasonable period. The second reason — “I am busy” — is, in my opinion, never an excuse. That reflects (old) national habits from certain countries. The UPC is an efficient system. If you cannot manage your workload within its procedural calendar, then perhaps you should not be acting as a UPC representative.
- Note that over three weeks passed between the filing of the Grounds of Appeal and the moment it was served on Phoenix. Why was this valuable time lost? Because of the Registry’s involvement (see R. 229 RoP), which requires a check of formalities. When we drafted the Rules, I warned that these checks were unnecessary. The phrase “as soon as possible” has in reality no meaning. I sincerely hope that when the Rules are revised, this provision will be removed. The Court is fully capable of dealing with formal defects or payment issues if raised by the other party.
- Returning to the facts of this case: the decision was issued on 10 February 2025; the Grounds of Appeal were filed on 24 February 2025. Let us assume that ILME did not send a copy to Phoenix. If they had done so, Phoenix would likely not have received an extension. In any event, Phoenix already knew the contents of the decision on 10 February. How difficult is it to anticipate what an unhappy Phoenix will say on appeal more than a month later (from 10 February to 18 March)?
- You may think: why so much fuss over a few days? But in my view, this sends the wrong message to representatives — that if you complain about being busy, you might get a few extra days. That is not healthy for the UPC. The Court of Appeal has better things to do than handle unnecessary extension requests.
– All comments above are Prof. Hoyng‘s personal opinions –
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