14 February 2025
Court of Appeal, Abbott v Sibio
Appeal of preliminary injunction
Background
The Local Division (LD) The Hague refused to grant a preliminary injunction (PI) because it was more likely than not that the patent was invalid due to added matter.
The Court of Appeal
- In the Grounds of Appeal, a party may refer to its submissions and evidence relied upon in the first instance. A general reference is sufficient if the appealed decision does not address them.
- Court of Appeal (CoA) discusses the description and formulates the object of the invention.
- Claim construction: CoA refers to Nanostring (UPC_CoA_335/2023)
- Sibio’s limited reading of the term “connecting support” (arguing “it must contain only one element”) with reference to the description is rejected.
- “Configured to” means “suitable for”; a means-plus-function feature must be understood as “any feature suitable for carrying out the function.”
- Added matter: Disclosed in the application (here: the earlier application, which is the basis of this divisional application) is everything that the skilled person would derive directly and unambiguously, using their common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed. Implicitly disclosed subject matter (i.e., matter that is a clear and unambiguous consequence of what is explicitly mentioned) shall also be considered as part of the content.
- What the applicant stated at the EPO as basis for the application is not decisive for the question of added matter.
- COA: there is no added matter.
- A claim does not have to use the exact same wording as in the original application.
- No decision is necessary whether auxiliary requests filed for the first time on appeal are admissible.
- Novelty, inventive step and infringement: It is on the balance of probabilities not more likely than not that the patent is invalid due to a lack of novelty or inventive step, and more likely than not that there is an infringement.
- Urgency and weighing of interests: There was urgency, and in weighing the interests of the parties, the patentee’s interests outweigh those of the infringer—also because the patentee’s damages (price erosion) are more difficult to quantify.
- No justification to extend injunction to Ireland. Abbott should have raised that at first instance.
- Subsidiary claims (recall etc.) can be granted in PI proceedings and are granted if there is an urgent interest for them.
- Security for enforcement is not necessary, given Abbott’s financial capabilities and presence in Europe.
Comment
- This is an important and, in my opinion, very good decision, particularly on added matter. First, what has been said and argued before the EPO is not decisive. This is, of course, correct. The Court takes an objective approach to the question of added matter, and the patentee can use all arguments—including those not made before the EPO.
- The extreme literal approach sometimes applied by the EPO is not followed. Implicitly disclosed matter is not considered added matter (keeping in mind that we are discussing what a skilled person with common general knowledge would derive, not a layperson without any understanding). This also means that different words in a claim can still be “covered” by different words or phrasing in the application.
- Again, the Court of Appeal makes clear that in general an element of a claim cannot be given a more limited meaning than its normal meaning by referring to (an example in) the description.
- Unlike in the US, a means-plus-function claim covers any means suitable for performing the function, and is not limited to the means mentioned in the description.
- It is not surprising that in PI proceedings, all auxiliary measures can be obtained (provided the Claimant can successfully argue that an urgent interest in such measures exists).
- Finally, regarding proportionality: even in PI cases, the interests of the patentee will, in general, outweigh those of the infringer. If you are an alleged infringer and wish to remain in the market, at least offer a (serious) payment for each product sold during the proceedings on the merits and/or provide a (very serious) bank guarantee.
14 February 2025
Local Division Munich, GXD-Bio v Myriad
Preliminary objection
Background
Defendants lodged a preliminary objection in an infringement case, arguing that requests concerning acts committed before certain dates in certain countries should be rejected. They claimed that before these dates, the claimant was not the registered owner and, therefore, has no standing for such claims.
Decision of the Judge-Rapporteur (JR)
The preliminary objection can only be raised on the grounds mentioned in R. 19.1 RoP.
Lack of standing of the claimant is not one of those grounds.
Comment
- As the JR points out, the Court of Appeal has already decided that preliminary objections can only be raised based on the grounds listed in R. 19.1 RoP (jurisdiction, competence of the Court, competence of the Division, language of the Statement of Claim). See CoA 188/2024 re Aylo v Dish.
- It remains unclear whether a party can still dispute the Court’s international jurisdiction under the Brussels Regulation (e.g., to grant an injunction covering the UK) in its Statement of Defence, if it has not done so through a preliminary objection. It is safer not to take risks and to raise such objections via a preliminary objection.
- In infringement proceedings, the material owner of the patent should be the claimant. The person listed in the Register is presumed to be the material owner unless proven otherwise.
15 February 2025
Central Division Munich, EOFlow v Insulet
Costs after PI proceedings
EOFlow requests costs after winning first-instance proceedings for provisional measures in which it was the defendant.
Insulet has filed an appeal of the decision.
EOFlow has also initiated a revocation action.
Decision of the Judge-Rapporteur (JR)
The JR finds that the request is not well-founded.
- Costs can only be awarded if there is no case on the merits. Otherwise, R. 150 RoP applies, meaning costs will only be considered after the final decision on the merits.
- The JR refers to a Court of Appeal decision (CoA 283/25), which establishes that if a PI case is followed by a case on the merits, the costs—including those of the PI—will be decided after the main case.
Comment
- Since a revocation case without a counterclaim for infringement does not definitively determine whether infringement has occurred, in my view, that does not serve as a case on the merits in this context. The reasoning about efficiency (delaying cost decisions until the overall outcome is clear) is understandable, especially given that the PI is still under appeal.
- While efficiency is important, one must consider that the winner of a PI—particularly if it was the defendant, who did not choose to be involved in proceedings, as in this case—must now wait a long time to recover a substantial amount in costs. This delay could be burdensome for an SME and might even result in non-payment if the PI claimant later goes bankrupt.
- I therefore believe that in PI proceedings, it should be (and in my view still is) possible to request costs by submitting a clear and verifiable cost statement 24 hours before the hearing, including an estimate for the hearing itself (to be adjusted if necessary during the proceedings). This would be a relatively simple, efficient process and would avoid unnecessary separate cost proceedings.
17 February 2025
Local Division Düsseldorf, Per Aarsleff v IMS
Withdrawal of action
The parties settled before the closure of written proceedings.
Decision JR
Withdrawal was allowed, and court costs were reimbursed.
Comment
As is customary, R. 265 RoP was used to effect the settlement! See my previous comments on why this is unnecessary and inefficient.
17 February 2025
Local Division Paris, Seoul Viosys v Laser Components
Time limits during oral proceedings
The JR provides a summary of the interim conference outcome, including:
• The JR does not consider it necessary to call a witness, as Seoul Viosys did not contest the written witness statements that were submitted.
• The JR fixes the time for oral argument and sets an agenda for a hearing from 9:00 to 13:00 (in reality, until 13:40).
• Both parties receive a total of two hours for their submissions.
Comment
- I think it is very good to limit the speaking time and announce this before the hearing. Instead of starting with questions, the JR during the interim conference indicated the contested issues. In that way giving thus an indication what the parties should discuss.
- It is clear that the different Local Divisions have very different ways of carrying out an oral hearing and an unexperienced representative should make sure that he knows the local habits.
- When all first-instance judges meet, I wonder whether they could agree on a more standardized approach to oral hearings. On the other hand, even courts within the same country often have differing styles, so perhaps it is up to the representative to adapt?
17 February 2025
Nordic Baltic Regional Division, Imbox v Footbridge
Costs after withdrawn application for inspection
Background
- Imbox requested a court order for inspection, including during an exhibition.
- The court wanted to hear the defendant’s position.
- Imbox agreed.
- The defendants filed an extensive brief, including confidential information about their product.
- Imbox then withdrew its application, having been convinced there was no infringement.
- The defendants requested costs (not in euros but in SEK) and confidentiality for some exhibits in their brief.
Decision by Single Judge
- Confidentiality granted.
- The parties agreed on a dispute value of €250,000. This means the ceiling for recoverable representation costs is €38,000. This ceiling is independent of the number of defendants.
- The defendants requested €44,000, which was deemed reasonable, but the court found no justification for exceeding the cap.
- Each defendant is awarded SEK 225,000 (SEK 450,000 ≈ €40,000).
Comment
- This outcome seems reasonable. The defendants undertook significant work to convince the claimant that there was no infringement, thereby avoiding further disclosure of confidential information and likely saving the claimant (the cost of) additional legal measures.
- The awarded amounts appear to be within the cost ceiling. This case serves as a reminder that adding defendants does not automatically increase the cap on recoverable costs.
17 February 2025
Local Division Munich, Edwards v Meril
Rectification of order
Meril asked for rectification of the order of 15 November 2024 (UPC_CFI_15/2023) which was partly granted.
Comment
- R. 353 RoP allows a party to request correction of clerical mistakes, errors in calculation, and obvious slips within one month.
- This can be significant for appeal purposes. However, it is not a means of having the court reconsider its decision (as is possible in the US). Some national courts share confidential draft decisions with parties before issuance, allowing comments under an R. 365 RoP-style process. This might be preferable to having to correct errors publicly.
- In this case, multiple corrections were needed. Is this a sign that the Munich Local Division has too much work? By now, claimants should realize that there is no reason to go to Munich instead of using other Local Divisions.
17 February 2025
Central Division Paris, Aylo v Dish
Security for the claimant’s costs
Background
Aylo initiated revocation proceedings against Dish. Aylo is also the defendant in parallel infringement proceedings in the German courts in Munich.
Aylo requests security for costs. The parties exchanged written submissions, and the request was discussed during the interim conference.
The JR referred the request to the panel.
Decision of the Court
- Although Article 69(4) UPCA refers to defendants, a claimant may also request security for costs (R. 158.5 RoP states that « a party » may request security).
- However, because the claimant initiated proceedings, strict requirements apply before security can be ordered.
- There is no clear indication that the defendant will be unable to pay.
- Request denied.
Comment
- The UPCA specifies that defendants may request security for costs. I do not believe that the RoP, which refers to « a party, » can override this. The court itself acknowledges that there are good reasons why claimants should not generally be entitled to demand security from defendants. A defendant does not choose to litigate and should not be barred from defending itself also if it is unable to provide security.
- It would be unacceptable for a defendant to lose an infringement case simply because it cannot provide security while in fact it is not infringing (imagine a startup defending itself against a baseless patent claim).
- If claimants can request security at all, it should be only in exceptional cases, such as when a wealthy parent company uses an empty subsidiary for infringing activities.
19 February 2025
Local Division Düsseldorf, Maxeon v Aiko
Request for extension of time periods
Judge-Rapporteur (JR) Decision
A request for an extension due to the Christmas period was denied, as such circumstances had already been accounted for when the original time periods were set. However, since Chinese New Year also occurred during this time and Chinese clients were unavailable, the JR granted a one-week extension.
Comment
The JR rightly notes that a one-week extension will not disrupt the Local Division’s timetable. It is good that the court clarifies that respondents should stop requesting extensions based on holidays such as Christmas and Easter. Respondents are responsible for managing their time, and if they prefer not to work during these periods, that is understandable—but if they fail to plan accordingly, they might be better suited for a job with fixed hours (and, in some countries, retirement at 62)!
19 February 2025
Local Division Paris, ArcelorMittal v Xpeng
Applicant: Posco
Application for inspection
Background
Ongoing proceedings. Posco (a third party) seeks access to a submission and evidence (R. 262.1 RoP).
Judge-Rapporteur Decision
- Both the claimant and the applicant are active in steel manufacturing for the automotive industry.
- The applicant has filed an opposition at the EPO against the patent invoked in this case.
- The applicant is interested in claim construction in these infringement proceedings, as it could be relevant to the (accelerated) opposition proceedings currently before the Board of Appeal.
- The JR grants access to the claimant’s Statement of Claim.
Comment
A logical decision in line with the Court of Appeal’s guidelines in UPC_CoA_335/2023 and UPC_CoA_1/2024.
19 February 2025
Local Division Munich, Swarco v Yunex
Order to preserve evidence – No need to adjucate
Background
The Local Division in Vienna has already ruled that the patent in question was infringed. In the present proceedings, Yunex argues that the Vienna Division misinterpreted the patent in relation to the same products, which were also at issue in the Vienna case. Swarco requests an order to preserve evidence to establish the physical properties of certain Yunex products.
During a hearing and in subsequent submissions, Yunex ultimately confirms the facts that Swarco sought to establish.
Court Decision
Since the facts were confirmed, there was no longer a need to adjudicate the request.
Comment
The court handled this efficiently, using the interim hearing to avoid unnecessary proceedings for evidence preservation.
19 February 2025
Local Division Hamburg, Lionra v Cisco
Art. 69 EPC
Background
Infringement claim limited to Germany.
Counterclaim for invalidity, also limited to Germany.
Infringement is based on method claim 1 and product claim 6.
Court Decision
- Only the material owner of a European patent can initiate an infringement suit. While the patent register is not conclusive in determining ownership for enforcement purposes, it serves as a key indicator and is considered decisive unless proven otherwise.
- When applying for an amendment of the patent, it is not necessary to submit a full set of amended claims for each modification, as required by the European Patent Office.
- The Court follows the approach established in Nanostring (UPC_CoA_335/2023) to determine the scope of protection of the patent.
- Regarding a patent directed at mitigating transmission delays in the processing of data packets—particularly headers during transmission in a wireless network—the Court finds that there is no infringement and upholds the validity of the patent.
- The Court apportions costs as follows: 40% to the claimant and 60% to the defendant.
Comment
- As the decision does not mention the starting date it is not clear how long this case lasted. However, between oral argument (11 December 2025) and decision (19 February 2025) the Court took (a bit) more than 6 weeks.
- The headnote states that claim interpretation must express disclosures in the description of the patent specification, in addition to the claim wording. However, we should not interpret this language (as is imaginable that one could) differently than what we have learned from Nanostring, since the Court itself specifically refers to Nanostring. The non-infringement decision does not appear to involve any surprising claim interpretation.
- The Local Division demonstrates flexibility in applying the « frontloaded » principle, ensuring fairness to both parties, consistent with the Court of Appeal’s approach.
20 February 2025
Local Division Milan, Oerlikon v Himson
Applicant: Bhagat
Public access
Decision of the Local Division
Bhagat requests access to pleadings and evidence in ongoing proceedings.
The court, applying UPC_CoA_404/2023, denies access.
The court also refuses to award costs to Oerlikon, referring to the Central Division’s decision in UPC_CFI_189/2024.
Comment
See my comment under the Local Division Paris decision in Unfiltered week 2 (2025).
As I have said before, the decision not to award costs is correct, as it protects the public’s right to access information.
20 February 2025
Local Division Brussels, Cretes v Hyler
Extension of term
Background
Both parties write to the Court after a request of the Court that the date of 16 September 2024 shall count as the date of the Statement of Defence.
On 11 February 2025, Cretes requested the removal of the Rejoinder to the Reply to the Statement of Defence and the Reply to the Defence to the Counterclaim for Revocation, arguing that they were filed one day late, i.e. on 16 January 2025 instead of 15 January 2025.
As a subsidiary request, Cretes asked for the removal of certain paragraphs, a new infringement claim, and a certain document.
As a further subsidiary request, Cretes asked to be allowed an additional pleading.
Hyler was invited to respond.
Cretes later filed a reaction that was not requested by the Court and was therefore not considered.
Decision of the Court
- From the correspondence between the lawyers, it became clear that they had agreed on 16 January 2025 as a deadline. Although parties cannot deviate from the procedural deadlines set in the Rules of Procedure by mutual agreement, very small deviations can be accepted by the Court. That was the case here, and therefore, the primary request was refused.
- Hyler sought to introduce a document containing proposed changes to its allegedly infringing machine and, based on these changes, added a claim for a declaration of non-infringement—without following the correct procedure under R. 263 RoP (request for amendment of claim). The Court rejected both the document and the amended claim.
- Consequently, the Court also did not accept Hyler’s new non-infringement arguments in the proceedings.
Comment
- The Court used correspondence between the lawyers as part of its reasoning. I do not know how that correspondence became part of the proceedings. In most countries, such correspondence is privileged and cannot be introduced in court without the consent of, for example, the dean of the bar. The Court seems to assume that national ethical rules do not apply in the UPC. Indeed, no such rule is found in the UPC Code of Conduct for representatives, but since both lawyers in this case were from Belgium, and the UPC is a Court of EU member states, including Belgium, in my opinion, they remain bound by Belgian national ethical rules. In this sense, the Brussels Local Division is wrong.
- Goodwill matters. I recommend that representatives do not object if a colleague files one day late due to an internal mistake or an IT failure, and asks the Court for a retroactive extension while also being willing to grant the same courtesy if needed. A bit of goodwill between representatives benefits the entire UPC system.
- Key lesson: even when litigating in your local language before a local division (why would you?), among local representatives, you are litigating under UPC Rules of Procedure—not national rules. This case highlights the frontloaded nature of UPC litigation, the strict requirements under R. 263 RoP for amending claims, and the fact that a Reply must only respond to statements in the Rejoinder.
20 February 2025
Local Division Düsseldorf, 10x Genomics v Curio
Release of security
Background
The Court granted a preliminary injunction (PI) against the defendant on 30 April 2024 but ordered the applicant to provide an enforcement security of €2 million, either as a deposit or bank guarantee.
The applicant deposited the money with the UPC Registry.
The applicant now wants to replace the deposit with a bank guarantee and reclaim the deposit, arguing that a bank guarantee is more economical, but at the time, as a US company, it could not immediately obtain a bank guarantee from an EU bank.
Decision
The Court allows the substitution, adding that indeed prior court approval is necessary for such substitutions.
Comment
- This decision is logical. It is justified that the opposing party should have the opportunity to comment, and that the Court must approve the substitution to ensure that the bank guarantee meets the required conditions.
- I am still wondering what happens when money is deposited at the UPC Registry:
– Is it placed in an interest-bearing account?
– Does the applicant receive interest on the deposit?
– Does the UPC charge a fee for holding such deposits?
These are practical considerations that may influence future decisions about how parties provide security.
21 February 2025
Court of Appeal, Hanshow v VusionGroup
Court fees (in appeal)
Background
VusionGroup (SES) lost PI proceedings in first instance before LD Munich on 20 December 2023 and was ordered to pay costs up to €200,000.
SES lost the appeal on 13 May 2024 and was again ordered to pay the costs.
On 18 June 2024, Hanshow applied to the Court of Appeal to fix the costs and requested an extension of the deadline (as the time limit for initiating cost proceedings is one month).
On 25 July 2024, the JR of the Court of Appeal ruled that Hanshow should apply for costs before the Court of First Instance and directed that the application date be considered as 18 June 2024.
On 2 August 2024, Hanshow started cost proceedings in LD Munich.
LD Munich dismissed the claim, stating that it was filed outside the one-month deadline (13 May–18 June) and refused to grant a retroactive extension.
Hanshow appealed, and the appeal was accepted by the JR of the Court of Appeal (R. 221.3 RoP).
On 21 November 2024, the JR instructed Hanshow to pay an additional court fee of €1,500 before 5 December 2024.
Decision
VusionGroup argued that the appeal should be rejected because:
a) The additional fee had not been paid.
b) No formal appeal and grounds for appeal had been filed under R. 224 RoP.
Decision of the JR:
a) The additional court fee was paid in time.
b) Filing a separate appeal and grounds for appeal is unnecessary if a party has already applied for review under R. 220.3 RoP, which includes the reasons for the appeal.
c) The same rule should apply to a cost decision under R. 221 RoP.
Comment
- This makes sense. As with requests for review, when applying for leave to appeal a cost decision, the reasons are typically already included in the request. Having to repeat the arguments would be inefficient.
- Note: This decision does not determine whether leave for appeal will be granted. I would be surprised if leave is granted. The one-month deadline for filing cost applications exists to protect the party ordered to pay costs—after that period, they should have certainty that no further cost claims will arise. Only exceptional circumstances should justify a retroactive extension of the deadline.
– All comments above are Prof. Hoyng‘s personal opinions –
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