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. Interested in more of this? Stay tuned and subscribe here for weekly updates.
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”.
28 February 2025 (published in March)
Central Division Munich, UPM v Virdia
Substitution of party
Background
UPM sued Virdia on 24 December 2024 for revocation of EP 2611800. During 2024, the patent had been assigned to International N&H Denmark. The defendant, Virdia, requested on 14 February 2025 to be replaced by International N&H (R. 305.1 sub c RoP).
The claimant was asked to comment on the request and agreed with the request.
Decision
- The request is well founded. See R. 42 RoP.
- No costs are awarded.
- The date of service, 14 January 2025, for Virdia will also count as date of service for International N&H.
Comment
- A person mentioned as the owner of a patent in a national register is only presumed to be the owner but may not be the actual owner. In this case, the assignment had not been recorded, but the Rules foresee such a situation. However, I note that a request to replace the defendant must be made as soon as possible, which was done in this case, with the parties cooperating and the claimant not claiming costs, ensuring no delay was caused.
- If a patent is assigned during litigation, R. 305 RoP can also be used to substitute the new owner for the old owner.
- What happens if no substitution takes place? The case will continue, and if the patent is revoked with a final decision, the Court will send a copy to the European Patent Office and, in the case of a European patent, also to the national offices of the UPC countries for which the EP has been revoked. The fact that the case was litigated against a person who is not the owner of the patent does not matter if that person is registered as the owner (R. 8.6 RoP).
3 March 2025
Court of Appeal, Curio v 10x Genomics
Withdrawal of appeal
Facts
Curio appealed from an order of the Local Division Düsseldorf requiring it to provide €200,000 as security for costs. After the response on 7 January 2025, the JR summoned the parties to an oral hearing. A week later, Curio filed an application to withdraw the appeal. 10x Genomics did not react to that application.
The Decision of the Court of Appeal
- Granted the request (R. 265 RoP).
- A cost decision was deemed unnecessary.
Comment
- It is puzzling why Curio filed an appeal (which did not appear hopeful, to put it mildly) only to withdraw it later.
- 10x Genomics did not react and claimed also no costs while they must have incurred costs as they filed an answer to the appeal.
- There may be a reasonable explanation for all this, but we may never know!
3 March 2025
Central Division Paris, Suinno v Microsoft
New representative
Facts
After the decision of the Court of Appeal of 11 February 2025 (confirming that the present representative of claimant could not represent claimant with respect to a request ex R. 262A RoP) the JR asked the parties to comment on the issue of the inability of the representative of claimant to serve as representative of claimant.
The claimant asked the Court either to allow the same representative to continue or, alternatively, to correct the representation.
The defendant requested the Court:
- To reject the claimant’s infringement action based on R. 361 RoP.
- To issue a decision by default revoking the claimant’s patent.
- To order the claimant to pay costs.
The Central Division
- The claimant’s representative cannot act in that capacity. The documentation filed does not overcome the objections (specifically, the representative’s lack of independence).
- The Central Division refers to the Court of Appeal’s decision of 8 February 2024 (which ruled that a member of the public requesting pleadings and evidence must be represented by an authorized representative).
- The Court grants the claimant 30 days to appoint a new representative, who must declare that they ratify the written pleadings already lodged by the claimant.
Comment
- This is my opinion a fair and practical solution. The Central Division does not follow a decision of the Court of Justice (which applied to ECJ proceedings), as it was unnecessary and would not have led to a desirable outcome here.
- The decision is particularly justified since little time is lost. The new representative must accept the already lodged written submissions, and the delay is not detrimental to the defendant. Moreover, this is the first case in which the Court of Appeal has ruled on the independence of a representative.
- The decision does not exclude the possibility that, in a future case where it is clear that a patent attorney should not act as a representative for their company (which, in my opinion, is undesirable anyway), a different decision with more serious consequences may follow.
4 March 2025
Local Division Düsseldorf, GSK v 14 entities belonging to the Pfizer group
Background
On 5 August 2024, GSK filed an infringement action against Pfizer.
On 14 August 2024, the patent was granted.
On 14 August 2024, some defendants filed a revocation action at the Milan Central Division.
On 14 November 2024, the other defendants filed a counterclaim for revocation.
On 13 January 2025, the claimant filed a defence against the counterclaim for revocation and an application to amend the patent.
On 13 January 2025, the claimant also filed its defence in Milan and a request to amend the patent.
The Order
- The Local Division invited the parties to comment on an early decision regarding bifurcation (see R. 37.2 RoP).
- Both parties supported bifurcation. The claimant wanted to proceed with the infringement case, while the defendant requested a stay (« high likelihood that the patent is invalid ») and a two-month extension for their rejoinder to the defence to the counterclaim for revocation.
The Decision
- The Local Division decided on bifurcation and sent the case, including the request to amend the patent, to Milan.
- The Court continued with the infringement case..
- The filed auxiliary requests remained subject to the infringement proceedings..
- The claimant’s request to limit the case to the granted version of the patent was rejected.
- The term for filing the rejoinder to the reply was extended by one month..
Comment
- This decision makes sense as it avoids delays and duplication of work. However, it is regrettable that the Milan Central Division (which is certainly not overloaded with cases) has scheduled the oral argument for 10 November 2025 which is 14 months after the start of the revocation proceedings! Now that LD Düsseldorf has sent the counterclaim to Milan and continues with the infringement proceedings, it is hoped that this date will be changed to an earlier one. That is what R. 40(b) RoP requires (« The JR shall accelerate proceedings »). A hearing should be possible much earlier, allowing for a decision in August, which would enable LD Düsseldorf to hold an oral hearing in early September, knowing the outcome of the revocation proceedings, and to reach a decision about 14 months after the start of litigation.
- Note that the infringement proceedings began before the grant of the patent. This is permissible as long as the text to be granted is known. An infringement action can be initiated as long as the statement of claim clarifies whether a Unitary Patent will be sought or for which countries the EP will be validated so that the defendant knows exactly what they are defending against.
- The decision that the defendant must also defend against the auxiliary requests is practical. If Milan decides to maintain the patent based on one of the auxiliary requests, the infringement proceedings will not be delayed, as the infringement question regarding such auxiliary requests will have already been discussed. To clarify, I note:
- Auxiliary requests are not dependent claims. If the claimant has also invoked dependent claims, the defendant must defend against those as well.
- All such claims are granted independent claims, and no auxiliary request in revocation proceedings is necessary to defend their validity and if claimant does not specifically invokes their invalidity they will (should) not be revoked..
- The result may be that only some claims survive, but since they were already part of the granted patent, no auxiliary request is necessary.
- An auxiliary request pertains to a new claim that was not in the granted patent and is based (partly) on the description and/or drawings.
- Again, it is essential to realize that we are at the UPC, not the European Patent Office.
4 March 2025
Local Division Düsseldorf, Hartmann v Omni-Pac
Further pleadings
Facts
In the rejoinder to the counterclaim for revocation, the claimant also argued about infringement and, for the first time, raised equivalence.
The JR
- Such a statement contradicts the Rules of Procedure. In the rejoinder to the counterclaim for invalidity, a party can only respond to the reply concerning the counterclaim (my note: see R. 32.3 RoP).
- Arguments regarding the meaning of claim language are permitted insofar as they relate to the invalidity discussion, but introducing equivalence is not allowed.
- The claimant’s reference to R. 20.1(b) (my note: which concerns the obligation to argue in the answer to amendments why the amended claims are still infringed) is not applicable, and the request to submit further written statements (to repare this) is refused.
Comment
- Why is a Danish company litigating in German?
- When litigating at the UPC you have to know the Rules, which other that in certain national systems do not allow for endless written submissions and last minute surprises.
4 March 2025
Court of Appeal, Sumi v Syngenta
Provisional measures
Facts
- Syngenta holds a patent for a herbicidal composition. One of the claim integers is that the composition does contain at least one fatty acid with a weight ranging from 1% to 95% of the composition.
- Syngenta purchased Sumi’s product Kagura (Kagura 2023) in the Czech Republic in June 2023 and analyzed it in its own lab.
- Syngenta obtained another sample in Bulgaria on 4 July 2024 (Kagura 2024) and presented its analysis as new evidence before the Court of Appeal, which accepted it, finding that this evidence could not have been presented earlier.
- Syngenta argues that Kagura contains more than 1% fatty acids.
- Sumi argues that it does not sell Kagura in the UPC territory. For the UPC market, it used 0.0–0.5% fatty acids.
- Sumi further alleges that the patent is invalid.
- The Munich Local Division grants a preliminary injunction.
The Court of Appeal
- Since Syngenta at first instance argued general infringement of its patent (rather than limiting its claim to a specific product, Kagura 2023, and instead using that product as an example of infringement), Syngenta is allowed on appeal to introduce evidence regarding Kagura 2024 without amending its claim.
- The skilled person is defined as a chemist with experience in herbicide formulation (a more specific definition than Syngenta’s broader and vaguer definition).
- Common general knowledge is knowledge that a skilled person possesses or knows where to find in a textbook.
- Claim construction follows the Nanostring decision (and also from the core of the invention).
- It is more likely than not that Kagura 2024 infringes.
- Regarding invalidity, the Court of Appeal accepts that the technical effect of the claimed composition can be considered (since it was not proven that it is not achieved across the entire claim range).
- A party requesting a preliminary injunction (PI) must argue and prove why a PI is necessary. The Court must weigh the interests of both parties, particularly the potential harm of granting or denying the request.
- Given the expected price erosion (as Syngenta’s product is the only ready-made herbicide, while Kagura is 60% cheaper), a PI is necessary.
- It is not necessary to prove Kagura has the claimed commercial effect (as Sumi argues); otherwise, a PI could only be granted after the harm is done.
- Syngenta acted urgently.
- As a rule (see Art. 34 UPCA) a decision of the Court covers all UPC states for which the EP has been validated.
- Romania is also covered, as it ratified the UPCA in the meantime. On appeal, a party (even a defendant) can request different measures if it could not have made those earlier, provided the other party’s position is considered (here, it was clear to Sumi that Romania might ratify).
- The Court has discretion to order security (even if not requested). In this case, it was unnecessary—Syngenta is financially sound.
- Unlike the Local Division, the Court of Appeal rules that a costs decision should be issued in inter partes proceedings since the decision concludes the action.
Comment
- A textbook decision for PI proceedings, to be read by all UPC representatives, with regards to the requirements of necessity, urgency, the weighing of interests of the parties especially the harm to the patentee if a PI is not granted (is there irreparable harm?) and the harm to the defendant if a PI is granted. All these factors must be carefully addressed in an application for PI.
- The Court of Appeal does not explicitly mention proportionality, but in my opinion, that is clearly included in the weighing of interests.
- The Court of Appeal unsurprisingly holds that PIs can also be obtained if there is a (serious – see the requirements of necessity -) threat of infringement.
- Although it is not necessary to ask for security (for payment of damages if the PI is later overturned), I think that—if it is a serious issue—a defendant should always argue for it.
- In one of my previous « unfiltered » pieces, I argued for entitlement to costs immediately after PI decisions. The Court in this decision makes clear that a Division should make a cost decision. (As I have argued several times before, in PI proceedings, parties could also agree on costs before the oral hearing.).
- As to the material decisions about the infringement and validity there are no surprises.
a. The technical effect of a claimed product can (and should) be considered for inventive step but must be present over the whole range of the claim.
b. Common general knowledge is not only the knowledge that the skilled person possesses but also knowledge they know they can find in a textbook.
c. The skilled person (see in this case) is a person or a team who is working in the field of the subject of the patent. - The decision also highlights the front-loaded nature of UPC proceedings and the non-de novo character of appeal proceedings. However, there are exceptions—such as in this case, where the inclusion of Kagura 2024 was possible because Syngenta initially claimed general infringement, using Kagura 2023 as an example. Therefore, an amendment of the claim was unnecessary, and Kagura 2024 could also be addressed on appeal (after the Court of Appeal rightly decided that this evidence with respect to (allegedly different Kagura 2024) could not have been brought earlier).
5 March 2025
Court of Appeal, 10x Genomics v Vizgen
Withdrawal of Appeal
Background
On 1 June 2023, 10x Genomics initiated an infringement action against Vizgen.
Vizgen made three R. 190.1 RoP requests, which were (partly) granted.
10x Genomics appealed against all three decisions.
10x Genomics now seeks to withdraw these appeals.
The Court of Appeal
- 1. R. 265 RoP applies to appeals as well.
- Vizgen agrees.
- Neither party requests costs.
Decision
- The withdrawal is allowed (the decision mistakenly states « with the approval of Curio, » but it is clear that this should be Vizgen).
- If neither party requests costs, it is unnecessary to issue a cost decision, despite what R. 262.2(c) RoP states.
Comment
- In my earlier comments, I wrote that in the case of a settlement, R. 265 RoP is, in my opinion, not applicable, and parties should simply inform the registry. However, in the case of a withdrawal by one party, R. 265 RoP does apply. If neither party requests costs, a cost decision under R. 265.2(c) RoP is unnecessary. The Court of Appeal has now confirmed this.
- The Court of Appeal clarifies that R. 265 RoP is also applicable in appeals. This was not entirely clear, as R. 265 RoP uses the word « Court, » which in the UPCA sometimes refers to both the Court of First Instance and the Court of Appeal, and sometimes only to the Court of First Instance. For example, in R. 262 RoP, under « a » and « b, » « Court » refers to both the Court of First Instance and the Court of Appeal, whereas under « 3 » and « 4, » it refers only to the Court of First Instance. The UPCA and the RoP must be read with a mind willing to understand!
7 March 2025
Local Division Düsseldorf, Tridonic v Cupower
Infringement / invalidity
Background
The patent at issue concerns « Boost – PFC. »
The claimant alleges infringement in Germany and France by the defendants (a Chinese company and its German subsidiary).
The defendants argue that they do not infringe and that the invoked claims are invalid.
The Local Division
- The Court confirms (unsurprisingly) that it has jurisdiction over both the infringement and revocation actions, citing the relevant articles in the Brussels Regulation and UPCA.
- The Court cites the Protocol of Art. 69 EPC and refers, among others, to the Nanostring decision of the Court of Appeal.
- The Court states that if the skilled person reads the entire claim 7 (claims 1 to 6 were not invoked) and the description, they understand that « an input » refers to one input.
- The Court further decides what “erfassen” in claim 7 means and follows the patentee’s interpretation.
- However, regarding « Entkoppelelement, » the Court rejects the patentee’s broad interpretation, as the patentee’s expert does not provide any support in the patent for this broader meaning.
- The Court ignores a new novelty and inventive step attack first raised during oral argument. The last possible moment to introduce such an argument would be through an amendment of the claim in the reply to the defence against the counterclaim (which may still be refused). Even if one considers the defendant’s argument not as an amendment of the claim but as a further revocation argument, it is still not allowed under R. 9.2 RoP.
- With respect to the question of inventive step the Local Division inter alia states the following:
a. All relevant facts and circumstances must be considered.
b. What the inventor subjectively thought is irrelevant. The test is objective: what does the patented invention add to the state of the art.
c. The question of inventive step must be assessed from the perspective of the skilled person, based on the total state of the art, including the general knowledge available to the skilled person. The starting point is that the skilled person has access to the publicly available state of the art.
d. In general, a claimed solution is not inventive when the skilled person, starting from the state of the art, would have considered the solution and implemented it as the next step in the development of the field. - The Court concludes that the counterclaim for revocation fails.
- The Court also concludes that there is no infringement because the defendant does not have an « Entkoppelelement » as interpreted by the Court in its claim construction.
Comment
- Again, a good lesson for representatives: the UPC proceedings are frontloaded. One cannot come with new (surprise) arguments during the oral hearing.
- By now we know that words in a claim alone are never clear and may have a more limited meaning than their literal (out of context) meaning.
- If an expert argues for a very broad meaning of a word in the claim, they must justify this interpretation with references to the description (or, as I would add, to the solution for which the patent was granted – the inventive idea – ). This is particularly important in the doctrine of equivalence, where the meaning of the claim wording is extended so that something not literally covered by the claim is still infringing.
- The decision illustrates a shift away from the strict problem-solution approach to a more holistic, all-facts-and-circumstances approach, which is more realistic. It starts from a practical starting point, which does not necessarily have to be the closest prior art. Different documents (or, more accurately, facts) can constitute a realistic starting point.
– All comments above are Prof. Hoyng‘s personal opinions –
📩 Want to stay updated? To receive our weekly overview directly in your inbox, subscribe here.