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”.
17 March 2025
Local Division Munich, Edwards v Meril
Confidentiality
Background
In these cost proceedings, Edwards asks for costs with interest calculated the German way and requests to impose a confidentiality regime with respect to (certain) information about these costs.
Judge-rapporteur (“JR”)
After the JR’s suggestion that defendants could get full access but not the public (R. 262.2 RoP), implying that Meril has to keep the information confidential, Edwards amended its claim according to the JR’s suggestion.
The JR decides accordingly.
Comment
- As the JR also notes, R. 262.2 RoP is drafted such that it is triggered by a request by the public for pleadings and/or evidence, and the party or parties concerned invoke confidentiality within 14 days after being informed of the request.
- However, it can be practical to already decide about this confidentiality during the proceedings ex officio (without a third party having asked for the documents) and that is what the JR does.
- Of course, as the JR also decides, such decision automatically triggers that the other party should not make the information public.
- The JR rightly takes in consideration the interest of the public at large and states that although it may be interesting for a potential litigant to have information about the costs of lawyers, such information is not of great interest, as it is based on agreement between the client and the lawyers.
- The JR is nice to the lawyers, but I can imagine that the users of the system could be interested in seeing what a law firm charges for a case. Of course, I assume – although I sometimes doubt it – that users first of all go for quality and thereafter for price. They will also realize that hourly rates are certainly not a very good yardstick for costs, as efficiency is important. As general counsel of Windsurfing International, my experience was also that some lawyers and patent attorneys are very bad in estimating the costs (being (too) optimistic as they want to get the case). So one of my colleagues (a GC of another company) told me that in his report to management, he always doubted the estimate!
18 March 2025
Local Division Munich, Sun v Roku
R. 19.1 RoP
Background
Claimant opted out in May 2023 and withdrew the opt-out on 21 May 2024. The defendant raises a preliminary objection on the basis of R. 19.1 RoP in the infringement suit started by the claimant. The defendant argues:
- The defendant argues that the Court has no jurisdiction because the UPCA is contrary to EU law. The UPCA is contrary to Art. 267.1 of the EU Treaty and therefore invalid. The national courts have jurisdiction.
- The changes made after Opinion 1/06 of the CJEU dated 8 March 2011 on the “draft UPCA” have not resolved the fundamental problem that it concerns an agreement between Member States without the participation of the EU which agreement has taken away competence of national (patent) courts, without the UPC being part of the national courts of such member states.
The Court
- The Court considers that R. 19.1 RoP is not applicable with respect to all arguments based on the ground that the UPCA (and the UPC) violates EU law.
- The Court dismisses the argument that the withdrawal of the opt-out was not valid because the CMS does not show the power of attorney of Mr. Vigand (representative for the plaintiff with respect to the withdrawal of the opt-out). Such power of attorney is not necessary for a representative.
- Also not mentioning the withdrawal of the opt-out in the Statement of Claim (R. 13.1 RoP) is not a ground under R. 19.1 RoP and therefore no basis for a preliminary objection.
- The Local Division is competent because among others infringement has taken place in Germany, also if this happened before the entry of the UPCA.
Comment
- The defendants have spent a lot of time and money on all the arguments why the UPCA would violate the EU Treaty and the UPC therefore would not be able to deal with patent infringement. That, according to the defendant, is for the national courts.
- In reading all this, I wondered:
a. Does the defendant really believe that, after the decision of the ECJ on the Spanish and Italian complaints, the advice of the ECJ and the constitutional complaints in Germany, the ECJ is going to blow up the UPC, creating complete chaos?
b. And what would be the result of all that? It would be a case in a national court. The Dutch defendant would be sued together with the US parent in The Netherlands with as a result (after BSH Hausgeräte) a cross-border decision! - The JR in Munich has a good solution with respect to the EU story. He decides that R. 19.1 RoP is not applicable. A very practical solution, although R. 19.1 RoP states under “a” as possible objection that the Court is not competent. Is that not in essence what the EU story is all about?
- The argument that there was no power of attorney for the representative in the CMS with respect to the withdrawal of the opt-out was (of course) dismissed. A representative who claims to act for a party shall be accepted as such. See R. 265 RoP.
- I see no express obligation in R. 13.1 RoP for the claimant to state in its Statement of Claim that the patent was opted-out and that the opt-out was withdrawn, but one can perhaps read that in R. 13.1(g) RoP. Anyway, the JR was right that this is not an objection to be made under R. 19.1 RoP and that claimant has also no interest to raise it.
- Again, I am surprised that a US plaintiff starts proceedings in German with respect to a patent granted in English against another US company and a Dutch company in Munich, which is a very busy Local Division (the case started in May 2024 and the decision on the preliminary objection is rendered only now).
- It took a lot of arguments and a cooperative JR to find competence of the Munich Division on the basis of Art. 7.2 Brussels Regulation. The natural forum of one of the defendants was the less busy Division in The Hague, with English as language accessible for all the parties. A better divide over the different national divisions would enhance the international character of the UPC and its credibility. It would also make better use of the human resources of the UPC. If this is not going to happen in the natural way encouraged by registrars, judges and representatives, the UPCA should be changed to achieve this.
18 March 2025
Local Division Munich, Dolby v Roku
Preliminary Objection
The same decision as Sun v Roku reported hereabove.
Comment
In this case however, the claimant is located in Ireland. So also here, all parties are English-speaking!
18 March 2025
Local Division Munich, Hand Held Products v Scandit
UPC_CFI_73/2024; UPC_CFI_408/2024
Settlement
Requests
Both parties use R. 265 RoP for a request to withdraw their actions (claim and counterclaim) in agreement with the request of the other party and claiming no costs.
The JR
The JR allows the application. Scandit gets 40% of the court costs back.
Comment
As said many times before R. 265 RoP is not written for a settlement. Why bothering the Court with this? Just inform the Registry and the Registry can do the rest. The Registry informs the Court also about the return of fees which will be reimbursed, unless the Court flags that this is an exceptional case and rules that not (all) will be reimbursed. For settlement see Chapter 13 (R. 365 RoP). If R. 265 RoP was (also) meant for settlement, a similar provision would have been drafted in Chapter 13.
18 March 2025
Local Division Munich, Adeia v Walt Disney
No bifurcation
The Court
The court orders as follows:
- there will be no bifurcation;
- the interim conference will be on 4 December 2025;
- the oral hearing will be on 15 January 2026; and
- the written procedure will end 10 September 2025.
Comment
All very efficient, but why such a long time between the end of the written proceedings and the interim conference, and such a short time between the interim conference and the oral hearing? It seems that the Local Division is very busy. If the interim conference results in a decision that parties have to do certain things before the oral hearing, time seems awfully short.
19 March 2025
Local Division Munich, JingAo v Chint and Astronergy
Security for costs
Facts
The defendants want security for costs, because the applicant is a Chinese company and they allege that it is nearly impossible that a cost decision of the UPC can be executed in China.
JR
- As the claimant argues, it would be a form of discrimination to order security for costs only based on the nationality of the applicant.
- However, the JR cites several examples which show that China fails to fulfill its obligations under the The Hague Convention.
- Orders the security which is requested.
Comment
- Note that also defendant no. 1 is a Chinese company, which is requesting security for costs from the claimant, also a Chinese company. That seems to me quite telling about the possibility to execute a cost decision in China.
- Of course, it is unfortunate that China does not honor its obligations under the The Hague Convention and I am somewhat surprised that apparently this problem is not raised via diplomatic channels with China.
- Anyway, I think that the JR made the right decision which he motivated convincingly with examples in which China failed to abide to the The Hague Convention.
20 March 2025
Local Division Düsseldorf, Hartmann v Omni-Pac
UPC_CFI_115/2024; UPC_CFI_377/2024
No bifurcation
Decision
Before the end of written proceedings agreed by the parties, the Division decides not to bifurcate and to ask the President of the Court of First Instance to nominate a technical judge.
Comment
The Division cites all the advantages of an early decision about not to bifurcate. I think that we (the drafting committee) made a mistake to state that a decision should be made after the written procedure (R. 37.1 RoP). It would have been better to immediately do that after a counterclaim for revocation is filed, for all the reasons mentioned in the decision and in particular efficiency and planning of hearings. If the technical judge, who is appointed on a case-by-case basis, is only nominated during the interim procedure, it is likely that his or her agenda is already quite full. Of course, dealing with infringement and validity in one case is also efficient and also guarantees that the same interpretation of the patent applies for infringement and validity.
According to R. 37.2 RoP it is possible to decide earlier, and as expressed above, I think Divisions should use that opportunity and claimant and defendant would add to such efficiency if they indicate if they want bifurcation or not in case a revocation claim is made.
21 March 2025
Local Division Düsseldorf, Hand Held Products v Scandit
Settlement
Parties settled via R. 265 RoP and got 60% of the court fees back.
Comment
See my comments above regarding the decision of 18 March, between the same companies about a different patent.
21 March 2025
Paris Local Division, IMC v Mul-T-Lock
Preliminary objection
Facts
IMC starts infringement proceedings against Mul-T-Lock France and Mul-T-Lock Switzerland also with respect to Spain, the UK and Switzerland.
Mul-T-Lock files a preliminary objection and asks to declare that the Court lacks jurisdiction for Spain, UK and Switzerland.
In its response, IMC withdraws its demand with respect to the Swiss company and declares that it only demands an injunction against the French Mul-T-Lock (the parent company) for the UPC (based on a Unitary Patent) and for Switzerland (based on the European patent for Switzerland).
The Court
- The Court seems to ignore that IMC withdrew its case against the Swiss company and with respect to the UK and Spain, although based on R. 263.3 the Court’s consent is not necessary (see consideration 7 of the decision of the Court).
- The Court refers to Art. 4 and Art. 8(1) of the Brussels Regulation (BR) and states that the Treaty of Lugano (applicable for Switzerland) has the same provision as Art. 4 BR, in the sense that the court in the place of domicile of the defendant is competent.
- The Court refers to the CJEU in BSH Hausgeräte v Electrolux and repeats the contents of that decision:
a. the court is competent to deal with the infringement for other EU countries but not with respect to the validity; it can suspend if there is a reasonable not to be ignored possibility that the patent is invalid;
b. with respect to non-EU countries the Court can decide about the invalidity inter partes (as Art. 24 (4) BR is not applicable). - The Court rejects the Preliminary Objection.
Comment
- I am surprised about the fact that the Court ignores the claim limitation by the claimant although the Court refers to “the corrections to the Statement of Claim” (see consideration 3). The reason is possibly that claimant apparently did not choose the way of R. 263 RoP to amend its claim.
- The Court correctly cites and interprets CJEU BSH Hausgeräte v Electrolux as far as the French company is concerned (which is an Art. 4 (1) Brussels Regulation (BR) defendant and an Art. 2 (1) Lugano defendant).
- The BSH Hausgeräte v Electrolux case was restricted to an Art. 4 sub 1 BR defendant. The Court apparently without saying anything (probably because the parties did not discuss it) applied the decision also to an Art. 8 (1) BR (Lugano Art. 6 (1)) co-defendant, who of course is not defending himself in his natural forum – his place of domicile – .
- I think that with respect to the EU and Lugano countries, this is acceptable but what about a Swiss company who is infringing a UK patent? And even more serious: can the UPC claim jurisdiction over a UK company via Art. 8 (1) BR with respect to an infringement in the UK where the validity of the UK patent is at issue, or are there rules of international comity to abstain from such cases?
In one such (PI) case in The Netherlands, the UK Court was prepared to set a hearing date for a request for an antisuit injunction, while making sure that during the period up to the hearing, the claimant was injuncted to seek an anti-antisuit injunction in the Dutch Court. - Moreover (this was also not argued by the parties) one also can question whether or not Art. 22 (4) of the Lugano Convention should be dealt with in the same way as Art. 24 (4) BR. It seems rather logical and there are good reasons to do so but it was not discussed.
- The most important lesson is that as far as UPC defendants is concerned, the UPC has effectively become the Court which can deal with the complete European patent for all countries where the European patent is validated. So we are then almost where we failed in the sixties, which resulted then in settling for a central granting authority (the EPC) and giving up on a central jurisdiction for infringement and validity!
21 March 2025
Local Division Brussels, Barco v Yealink
Preliminary Objection
Background
The application for a preliminary injunction (“PI”) was filed on 2 October 2024 against Yealink China, which was sued together with Yealink Europe B.V. from the Netherlands.
The Court sets dates for submissions.
In its objection against the PI, Yealink raised a preliminary objection with respect to the incompetence of the Brussels Division and requested a Technical Judge.
The Court
- Barco argues that the preliminary objection was filed too late. The court decides that R. 19.1(b) RoP is not applicable in PI proceedings.
- Yealink argues there is no (threatened) infringement by the defendants in Belgium (and the UPC). Any websites which offer (allegedly infringing) products are owned by third parties.
- The Court states that Yealink did not contest the international jurisdiction of the Court based on Art. 7(2) BR but only the internal jurisdiction of the Local Division based on Art. 33(1)(a) UPCA. The Court points out that the same criteria apply for Art. 33(1)(a) UPCA as for Art. 7(2) BR (see the Court of Appeal in Aylo v Dish).
- The Court (nevertheless) sees a difference between Art. 7(2) BR and Art. 33(1)(a) UPCA. The first is an exception of Art. 4 BR (domicile of the defendant) while the latter is an alternative of the domicile jurisdiction as both have equal status in Art. 33(1)(a) and (b) UPCA.
- The Court decides that it has international jurisdiction and therefore it has (certainly) territorial jurisdiction.
- It has international jurisdiction against both defendants (the Chinese and the Dutch), because both acted in Belgium.
- A preliminary injunction is an exception to the standard, which is a case on the merits.
- The Court states that Barco knew about the infringements and could have acted immediately after the grant of the European patent on 12 June 2024 and not 23 August 2024, which is the date on which the Unitary patent was registered.
- According to the Court, Barco could have started the action on 25 July 2024 but only started on 2 October 2024: No urgency.
Comment
- Barco must be terribly disappointed by this decision, but why do you make it yourself difficult if you have better options?
- First of all the Court is right that if you invoke Art. 7(2) BR for international jurisdiction against more defendants, then all these defendants have to infringe or threaten to infringe in the UPC and for territorial jurisdiction in the country of the Local Division (here: Belgium). This unnecessary hurdle was overcome by Barco because the Court held that both the Chinese and Dutch entity were active in Belgium, but especially as to the Dutch company, this could have been and was certainly disputed.
If Barco had filed in the Local Division in The Hague, there would have been no discussion about jurisdiction whatsoever, as the Dutch company was domiciled in The Netherlands (Art. 4 (1) BR) and the Chinese parent could have been sued on the basis of Art. 8 (1) BR. - Furthermore, the Local Division in The Hague has two local judges (which of course do not apply Dutch law as the Court remarked with respect to an argument by Yealink) but who have a tradition of being rather liberal about the urgency requirement for a PI. Also in the procedural UPC law, regarding urgency there is a certain discretion for the Division. It would in my opinion have been very unlikely that the The Hague Division would have come to the same conclusion, as in my opinion it does not even take a liberal view on urgency to conclude that the decision of the Brussels Local Division is wrong.
- Already the view expressed by the Local Division that a PI is an exception to what is normal (a case on the merits), shows a wrong view about a PI. First of all, the idea that if something is an exception it should always be interpreted in a restricted way, is wrong. However, also seeing a PI as an exception can be debated. In the Enforcement directive (Art. 9), there is nothing which warrants seeing a PI as an exception.
- In this case, the Court rightly states that the European patent was obtained on 12 June 2024, noting that is the date on which Barco could have started the action. However, Barco invoked its Unitary patent, which it only obtained on 23 August 2024. A Unitary patent is not the same as a bundle of European patents (which by the way, in order to be valid, first have to be validated in certain countries). The Court argues that Barco could have started with the European patents and then amended their claim. I find that all very unconvincing. R. 13.1(g) RoP states that you have to mention “details of the patent concerned including the number”. That all was only known on 23 August 2024.
I note further that obtaining a Unitary patent is not an automatic thing. There is also the possibility (if not all the requirements are fulfilled) of a refusal by the EPO. - Irrespective of the foregoing, from 12 June 2024 to 2 October 2024 is less than 4 months. If one reads the case, it is very clear that Barco had done substantial work in order to collect the necessary evidence of activities in Belgium of the two defendants. Moreover the patent is certainly not a simple mechanical device (Yealink itself asked for the participation of a Technical Judge). Is this clearly a case where the defendant could think that that patentee was not interested in urgent measures?
- I agree that without the EP/UP story this would have been a borderline case as to urgency and I do not know if Barco has made clear to the Court that it has diligently worked during the four months period on the preparation of the case (as a claimant in a PI case should) but I found the decision of the Brussels Local Division all in all very disappointing.
- The UPC was created to make efficient enforcement of patents possible. The Brussels Local Division did in my opinion not act in this spirit, looking for a very debatable (in my view wrong) reason to refuse protection. If now Barco has to start a case on the merits, it means that the first two years of its UP it did not get protection (while with respect to the Chinese defendant it may be much longer, as that defendant is likely to refuse electronic service).
– All comments above are Prof. Hoyng‘s personal opinions –
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