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.
On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on Spotify or Apple Podcasts.
7 April 2025
Local Division Milan, Dainese v Alpinestars
Amendment of claim
Background
Dainese filed infringement proceedings against Alpinestars based on EP 117 and EP 364.
At first instance, the Opposition Division of the EPO had maintained EP 117 unamended. However, on appeal the Board of Appeal had restricted EP 117 to the combination of claim 1, 6, 8 and 9.
Facts
On 17 February 2025 Dainese requests:
- to exclude EP 117 from the proceedings
- to maintain the claims based on EP 364
- to be partially reimbursed for court fees for an amount of € 12,000.
On 27 March 2025 the defendants answered requesting an award of:
€ 100,000 to each of three defendants based on R. 265(2) RoP arguing that in fact Dainese’s request was a partial withdrawal governed by R. 265 RoP rather than R. 263 RoP (amendment of claim or case).
The Court
- This request is a request for amendment ex R. 263 RoP, which, if it concerns a limitation, must be granted.
- Costs cannot be awarded after an amendment ex R. 263 RoP. The costs will be decided at the end of the case.
- No reimbursement of court costs, since this is not a case of withdrawal (R. 370.9(b)(1) RoP) and there was no substantive motivation justifying the reimbursement of costs.
Comment
- This decision seems correct. It is clearly not a withdrawal of the claimant’s “action” but a limitation of the claim and at that time, the defendants would be entitled to the costs they incurred at the end of the proceedings and defendants would be entitled to the costs which they incurred in defending against EP 117. However, they should specify such costs at that time and not request the unspecified amount of € 100,000 for each defendant (again assuming that parties before the oral argument cannot agree on costs which, as said many times before, would generally be the best way for clients and the Court to settle costs).
- A lesson for representatives: if you request something give reasons for your request!
4 July 2025? (on the website UPC on 8 April 2025)
Local Division Milan, Dainese v Alpinestars
Comment
- Same decision as hereabove in the same case but Milan is already telling us now what will be decided on 4 July 2025! This wrong date has not even been spotted by the (AI?) person who publishes decisions.
- The person who publishes should not publish the same decision multiple times because each defendant has its own workflow.
8 April 2025
Local Division Milan, Dainese v Alpinestars
Jurisdiction
Facts
Dainese sued different defendants including the Italian company Alpinestars, for patent infringement covering the territories of the Contracting States of the UPC and Spain. The Italian company filed a preliminary objection arguing that: the UPC lacks jurisdiction; or that the complaint was inadmissible; or that the Court had no jurisdiction regarding Spain; alternatively, that an extension of three months after the decision in the preliminary objection proceedings should be granted for the filing of its Defence.
The Court
- The lack of jurisdiction was apparently denied. I say apparently, as the reasoning and conclusion of the Court is blacked out! The only reason that the Court would not have jurisdiction against an Italian defendant could as far as I can see be that the patent is (still) opted out or that there is an agreement between the parties to have infringement of the EP decided in another forum (see Brussels Regulation Art. 25).
- The argument regarding the inadmissibility of the Complaint was rejected, as inadmissibility is not listed as a ground in R. 19.1 RoP.
- The argument that the Court lacks jurisdiction for Spain against the Italian defendant was rejected as incorrect (see BSH-Hausgeräte).
- The request for an extension for the Statement of Defence is refused because you cannot ask for that in a preliminary objection.
Comment
- It is peculiar that the decision does not mention the arguments concerning the lack of jurisdiction and the reasons why the Court rejected them. They are all blacked out, and even if certain information was confidential, you can still make some general statements to shed some light on the case. Decisions should be reasoned and I cannot imagine that the whole reasoning of the Court is sensitive for confidentiality reasons. The Court fails to give any explanation.
- The decision also fails to mention the representatives of the parties. Is that also confidential information?
At least Alpinestars which made the objection is advised to read the case law of the Court of Appeal (start by buying my booklet, Case Law of the Court of Appeal 2023-2024 page 65) because their representative would then likely not have lodged two objections based on grounds not mentioned in R. 19.1 RoP! Objections based on grounds not listed in R. 19.1 RoP cannot be raised. - In my view, the JR provides a very extensive exposé with respect to the jurisdiction for Spain. That is good for students but a simple reference to BSH-Electrolux would have sufficed.
- When a judgment makes reference to a judgment of the ECJ or the Court of Appeal then mentioning the names of parties is helpful as that is the way most lawyers remember them.
- Finally, the JR refused the requested extension on formal grounds but even if defendant had lodged the request for extension on the basis of R. 9 RoP, I assume that JR would have refused it anyway. A preliminary objection is in general no reason to grant an extension for filing the Statement of Defence.
9 April 2025
Local Division Mannheim, Corning v Hisense
Separation of proceedings?
Background
Corning sued 9 defendants belonging to three groups of companies. The different groups requested separation of the proceedings because they wanted to avoid the other groups getting sensitive information about their activities.
Decision of the JR
The JR refused the request.
- The problem is caused by the fact that all defendants have chosen the same representative and therefore had to file a single defence brief.
- There are various ways of avoiding the problem without the necessity of splitting the proceedings.
Comment
The decision makes sense. If this poses a genuine problem, then they should not use the same representative. In that situation every group of defendants can file their own brief and ask for a confidentiality regime for truly sensitive information.
The three different representatives can of course coordinate their briefs as long as it does not pertain to sensitive information. For instance, they could include the same invalidity attacks.
9 April 2025
Local Division Munich, Edwards v Meril
third party: Krahbichler
Background
A third party, Krahbichler, applied for access to the file. Edwards and Meril objected.
Thereafter Krahbichler withdrew its application.
Meril wants costs. The JR ordered Meril to provide written evidence of all costs requested.
JR
The JR referred to and agreed with the decision of the Paris Central Division of 8 January 2025.
- No cost decisions in R. 262 RoP requests (access to file) or withdrawal of such requests.
- Confidentiality is granted according to R. 262.2.
Comment
I refer to my comment in week 2 under the Paris decision. Confidentiality under R. 262.2 means that the requester receives the information but is subject to an implied duty of secrecy. The public does not get access to the information. This, of course, does not prevent another person from requesting access to the file and disputing the R. 262.2 order.
As observed with regards to the Paris decision, the information that parties typically do not want to be disclosed includes the work performed and the hours spent on it, the hourly rates and discounts.
In my view, this likely reflects the wish of the representative to keep this information secret. However, as previously mentioned, hourly rates do not reveal the whole story. Efficiency, avoiding useless appeals, etc., are all factors which influence the total price and in the end the Dutch saying “goedkoop is duurkoop” (a cheap purchase is an expensive purchase) can also hold true in litigation. Quality of the representation should be the first consideration when you engage in litigation.
9 April 2025
Local Division Munich, Promosome v BioNTech and Pfizer
Security for costs
Facts
The defendants requested security for costs to the amount of € 2,500,000 for both BioNTech and Pfizer.
The Claimant said that it was willing to provide security, but questioned the demanded amounts pointing to costs awarded in other cases (around €900k) and the fact that BioNTech and Pfizer were represented by different counsel.
JR
The JR held that, at that time, he was not considering to raise the ceiling for recoverable costs and told the parties to try to come to an agreement.
Thereafter parties agreed on the amount of € 1.5 million, to be equally distributed among the parties.
Comment
The JR was Judge Kupecz (who, before being elevated to a legal judge position, was a practicing litigator). He knows from experience that (reasonable) parties can often agree on costs before the end of the proceedings (when it is still uncertain who prevails). Let us hope for the Court and the clients (since fights about costs incur extra expense) that representatives will follow that advice. German representatives should realize that the “Rechtsanwaltsvergütungsgesetz” (which language can beat German with the length of words!) is not applicable in the UPC as the UPC is not a German Court. For non-German speakers, the word translates roughly to (my free translation) “the law on the compensation of lawyers” (be careful: not patent attorneys!).
9 April 2025
Local Division Düsseldorf, Tridonic v Cupower
Correction of judgment
Decision of the Court
- The requested correction concerning the text of the petitum was made.
- The requested addition of an attorney’s name was not made.
Comment
- The correction was necessary because during the proceedings the claimant had slightly changed the language of the request, which the Court had overlooked.
- Poor Herr Rechtsanwalt Bach was not mentioned as one of the three representatives, which was rather harsh for him because he was present during the oral hearing (it is not stated if he also said something during the hearing). The Court, although perhaps slightly harsh, is correct: R. 353 RoP does not cover such situations. This means that he can now not have the relevant page of the decision with his name mentioned exposed in a nice frame on the wall of his office, but that is hardly disastrous for him since that is more a US custom than a German one, where lawyers are known for their modesty. With this, at least for the few readers of my comments, I have given Mr Bach the recognition he deserves as a victorious representative before the UPC.
9 April 2025
Local Division Düsseldorf, Epson v Dolby/Beko
Access to Register
Background
Dolby sued Beko for infringement with respect to all TVs with Android TV, version 5.0 or more recent. The written procedure had ended. Dolby also sued Epson in Hamburg with respect to the use of Android TV version 5.0 or more recent in beamers.
Epson still has to answer in these proceedings.
Epson wanted to gain access to certain documents in the Düsseldorf proceedings.
Dolby resisted.
The Court
The Court referred to the criteria in Ocado v. Autostore (CoA 480/2024). The Court decided that the special interest of Epson (which gives the possibility to request access during proceedings) was limited to documents and evidence pertaining to the interpretation of the claim and the validity of the patent, and granted access to such documents.
Comment
This decision is in my opinion fully in line with Ocado v. Autostore.
10 April 2025
Milan Central Division, ALIUD Pharma – Accord v Novartis
Access to documents
Background
ALIUD filed an application for access to documents, specifically the Statement of Claim (of Accord) and the Statement of Defence (of Novartis) in a DNI action.
Novartis opposed the request.
A month after the application, the parties (Accord and Novartis) reached a settlement. Thereafter Novartis informed the Court that it no longer objected, with the exception of the redaction of personal data.
The JR
- Since the proceedings between Accord and Novartis were closed, Novartis could no longer file a redacted version itself.
- The JR instructed the Registry to produce the documents, blacking out personal (sur)names.
Comment
I do not understand why Novartis could not produce redacted versions after the main proceedings closed, especially since the access to documents proceedings themselves were not yet closed.
Why should the poor Registrar have to do this work? The JR should have ordered Novartis to produce the redacted version. Assuming ALIUD would not have objected against what Novartis redacted that would have resolved the matter. Ultimately, I think if Novartis only wanted a redacted version released, they could have filed such a version with the Statement of Defence or at least in their response to the request of ALIUD. Since they failed to do so, the JR could arguably have refused the late redaction request instead of burdening the Registry.
10 April 2025
Local Division Düsseldorf, Härtwich v Talbert
Use of patent application
Background
The claimant and defendant had entered into a development agreement under which the claimant developed several frames for caravans. The defendant began using these frames, under the assumption that the claimant ‘had not asked for patent protection’. However, the claimant had done so, and subsequently sued the defendant after withdrawing its earlier opt out.
The claimant included Ireland in the proceedings.
The defendant filed a cross complaint for invalidity.
The Court
Ireland
- The claimant withdrew its claim concerning Ireland (R. 265 RoP). Defendant in its counterclaim had invoked the patent’s invalidity for Ireland only contingently upon Ireland becoming a UPC member state. As this condition was not met, a formal withdrawal of this part of the counterclaim was deemed unnecessary.
- The Court affirmed its jurisdiction regarding acts initiated prior to the UPC’s entry into force that continued afterward.
- The patent and all associated claims were found to have been validly transferred to the claimant.
- Regarding infringement, the Court reiterated the criteria of the 10x Genomics-Nanostring decision of the Court of Appeal and explained the meaning of certain words in the claims.
- The claim was a product by process claim. In such claims the invention lies in general in the product, and the process generally serves only as a method to obtain the inventive product, but does not restrict the scope of protection. If, however, certain product properties can only be achieved via that specific process, then the scope of protection is limited to products which have been made with that method. The decisive factor is whether the description makes clear that the process steps must be followed for technical reasons, in order to reach the inventive properties of the product. In this case that was not the case.
- The Court concluded that the patent is valid. With respect to inventive step, the Court did not apply the problem-solution approach. The Court found that you should look for a realistic starting point or starting points. A starting point is considered realistic if it relates to a similar product or method addressing a problem similar to the one solved by the invention. The subsequent question is whether the invention in such a way follows from the prior art such that the skilled person would have found it and whether the skilled person had the necessary motivation to take that solution into consideration.
- The Court can also addressed the issue of compensation for the use of a patent application. As there is no common standard in the UPC, the Court will apply the national laws of the relevant UPC states, insofar as Art. 67(1) EPC is not applicable in those states.
- Regarding infringements occurring both before and after the UPC’s entry into force, the Court applies UPC law, not national law.
- The Court rejected the license-based defences.
- As to the period of limitation (Art. 72 UPCA) the Court, referring to the French and English text, decided that the limitation period commenced from the date of the last act justifying the action. The Court accepted that that was 20 June 2023. The 5-year period thus started on that date, so there was no limitation.
Comment
- This case shows that if you enter in a joint development agreement you must clearly define who owns which rights otherwise it can be a route to disaster, as this decision shows.
- If you have not done so and a disaster threatens (and my impression in this case is that defendant’s position was rather weak) then the best approach is usually to attempt settlement (which was attempted in this case, but the offer of the defendant was in my view meagre – see the decision for the specific figures).
- If the claimant is unwilling to settle and insists on litigation, realize that apart from winning the case (and the defendant tried) it is crucial to argue proportionality (referencing generous settlement offers made) with respect to each and every claim.
- All the legal decisions of the Court seem to me absolutely correct. I am a bit surprised that the Court didn’t explicitly state that UPC law governs infringement instead of national law, but reaches the same outcome by stating that a party believing national law offers a better position must argue (and prove) it, which did not occur here. It seems abundantly clear that for infringement, the UPC should apply Art. 69 EPC and Art. 25 – Art. 29 UPCA. (See the considerations of the UPCA “no fragmented markets” and the order of applicable law in Art. 24 UPCA.)
- I applaud the Local Division Düsseldorf for clearly distancing itself from the (often artificial) problem-solution approach despite the presence of the Presiding judge of the The Hague Local Division which has been applying this test.
- Indeed, the Court is clearly competent regarding the consequences of unauthorized use of the patent application and will need to apply national law where it differs from Art. 67(1) EPC. Of course, the specifics of that national law must be proven by the claimant. As an example: in The Netherlands you can (only) get a reasonable compensation for use of a patent application, but foreign patentees rarely secure this because in order to be entitled you need a writ served by a bailiff indicating precisely which part of the patent description is relied upon. A Dutch patent attorney filing your patent might inform you of this, but I do not think many foreign patent attorneys know this provision!
11 April 2025
Central Division Milan, EOFlow v Insulet
Security for costs
The JR
- The Court refused further written statements, closed the written proceedings, and set a date for an interim conference during which the parties can also discuss the decision of the Court of Appeal between the parties (UPC_CoA_768/2024) and during which the Court intends to discuss claim interpretation.
- The Court refused admission of a further prior art document which was filed in response to the defence to the claim for invalidity.
- Insulet’s request for security for costs was granted in the amount of € 500,000 (50 percent of the recoverable costs).
Comment
- In principle, I do not object to discussing claim construction during the interim conference, if the JR’s goal is to explore whether parties can (partially) agree on the construction as this can make the oral hearing more efficient. However, the JR should not make any final decision during or after such interim conference. This might be different if the interim conference were held with the full Court present.
- The Court provides extensive reasoning for not allowing a further prior art document into the proceedings. The Court is right that the principle of front-loaded proceedings is crucial, but as the Court of Appeal has also ruled this does not mean that you should never allow a new document. If it is clearly responsive to another party’s statement and could not reasonably have been filed earlier, its admission may be warranted. Certainly in invalidity proceedings where a plaintiff often selects from numerous potential prior art documents, an unexpected procedural turn might warrant, for instance, conducting a further search which may uncover a relevant document. Of course, if such document is a document which the other party knows (because it is a publication by that party) a somewhat more liberal approach might be possible. The relevance of the document in invalidity proceedings should also be an element which is important as if at all possible, the UPC should not keep invalid patents alive if there are procedural ways to prevent it. However, the starting point remains the front-loaded nature of the proceedings, meaning it is best practice to file any potentially relevant prior art you have.
- Regarding security for costs, I believe it’s important to realize (as is here the case) particularly when invalidity proceedings are initiated because a party faces an infringement action (in this case, preliminary injunction proceedings). It is important that SMEs even if potentially facing financial difficulties, are able to defend themselves against patents which – they consider – should not have been granted. For a small company (which in this case does not seem to be the case) a security of € 500,000 means that the company has € 500,000 less working capital which may severely impact their earning capacity. It would of course be even worse if the SME would simply not have the money to provide security. On the other hand, we should not encourage frivolous lawsuits. So also here there should be (as so often in law) a fair balance!
11 April 2025
Court of Appeal, Motorola v Ericsson
Reimbursement of fees
Parties agreed to the withdrawal of the counterclaim for revocation with each party bearing its own costs.
Court of Appeal
- The Court allowed the withdrawal.
- It clearly stated that no cost decision is necessary if parties agree despite R. 265.2(c) RoP.
- 60% court costs reimbursed to Ericsson.
Comment
For the Local Division point 2 of the decision is important as it avoids unnecessary work.
11 April 2025
Court of Appeal, TGI v AIM
Amendment of claim
Addition of defendant
Background
- At first instance (Helsinki) TGI filed a Preliminary Objection (PO) which was upheld and the case was dismissed.
- The Court of Appeal set aside that decision and remitted the case back to CFI.
- TGI argued that the amendment of claim should not be allowed and also objected against the addition of a further defendant.
- The Helsinki Division allowed AIM to amend their case and granted TGI three months to respond.
Court of Appeal
Dismissed the appeal and pointed to the discretion of the Court of First Instance with respect to decisions about the amendment of claim and the adding of a new defendant.
Comment
A logical practical decision of the Helsinki Division, and also totally fair to the defendant. That decision should not have been appealed.
11 April 2025
Local Division Munich, 10x Genomics v Bruker
Continuation of written procedure
Decision of the Local Division
The proceedings had been stayed, inter alia to await the decision of the Opposition Division and at the request of the Court of Appeal which had to decide about the number of auxiliary requests which are allowed (initially more than 70 were filed). However, after the decision of the OD, the claimant restricted the number to 4. The Local Division considered this permissible and therefore ordered the continuation of the written procedure.
Comment
This appears to be a perfectly logical decision. However, it would be good to have a ruling of the Court of Appeal on what constitutes a reasonable number of auxiliary requests, but that decision will probably be that this very much depends on the circumstances of the case! However, what we see at the EPO should not also become the standard at the UPC!
11 April 2025
Düsseldorf Local Division, GlaxoSmithKline v Pfizer
Withdrawal
The parties settled and pursued what, in my view, was an unnecessary path under R. 265.1 RoP to terminate proceedings.
The Court
The Court accepted the withdrawal and (see Court of Appeal today) did not issue a cost decision.
13 April 2025
Local Division Düsseldorf, Maxeon Solar v Aldo
Confidentiality information
Facts
The defendants 1, 2 and 4 requested an amendment of the confidentiality order that was already in place.
The JR
- When confidentiality of certain data has already been ordered that covers also these data when repeated in different statements.
- Requests which are vague will not be granted.
- Added certain new confidential (commercial) information to the order.
Comment
- The JR repeated that you do not have to ask for a new order if information which is covered by a confidentiality order is repeated in a different context (I add: in the same proceedings). This is also the case in an appeal of such proceedings.
- If you ask for protection of confidential information you have to be concrete and precise as to the information which you want to be protected and give reasons why the information is confidential.
– All comments above are Prof. Hoyng‘s personal opinions –
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”.