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.
31 March 2025
Local Division Munich, JingAo v Chint
Change of claim (R. 263 RoP)
Background
JingAo wants to change its requests because:
- a new version of the infringing device came on the market;
- claim 13 was amended by the OD;
- the auxiliary requests filed in the response to the counterclaim for revocation.
The Court
1. R.30 RoP also allows the patentee to amend the patent in a way which is not directly related to the counterclaim for revocation.
2. Amendments to the patent in the counterclaim proceedings can also be made in an infringement action.
3. The amendment to bring claim 13 in conformity with the decision of the Opposition Division is allowed.
4. The timely introduction of a new version of a claim to take account of an infringing product is allowed.
5. The Court extends the time for the rejoinder for defendants.
Comment
1. As the Court states R. 30 RoP makes it possible to amend the patent in response to a counterclaim for revocation. I disagree with the Court that as soon as there is a claim for revocation any amendment is allowable. Amendments which are not in response to the claim for revocation should in principle not be allowed. If a claimant wants to improve their infringement position by an amendment of the claim, they should have done so before initiating the litigation.
2. This may be different if the defendant introduces a new infringing product during the litigation and the claimant had no knowledge about this at the time of starting the infringement action. If a claimant wants to change their claim in infringement proceedings other than in response to a counterclaim for revocation, they will need to file an amendment request based on R. 263 RoP.
3. Again, it seems to me that there is some confusion about auxiliary requests. No auxiliary request is necessary to argue that dependent claims remain valid even when the main claim is invalid. This is the same in infringement proceedings, as long as of course the claimant invokes dependent claims. If the claimant clearly restricts themself to infringement of claim 1, they will need an amendment of their relief sought (R. 263 RoP) to invoke a dependent claim. It is therefore prudent for a claimant to also invoke in their Statement of Claim the dependent claims of which infringement is alleged.
Assume a patent has 4 claims.
Claim 1 claims A
Claim 2 claims claim 1 + X
Claim 3 claims claim 1, or claim 2 + Y
Claim 4 claims claim 1, or claim 2, and/or claim 3 + Z.
If in their Statement of Claim the claimant invokes all 4 claims then this means that they allege infringement of:
- A
- A + X
- A + Y
- A + X + Y
- A + Z
- A + X + Z
- A + X + Y + Z.
These are all independent (different) claims which the claimant alleges to be infringed. Even if claims 1-6 are invalid, claim 7 can still be valid. Since claim 7 was claimed in the patent, no auxiliary request is necessary. The Court revokes claim 1 to 3, and claim 4 as far as claim 4 claims A + Z (claim 5) and A + X + Z (claim 6).
4. If the Court has decided that amendments made with respect to the counterclaim can also be made in infringement proceedings, I agree. However, an amendment is only necessary when the patentee wants to form a new claim which has not already been formulated in the patent, by including subject matter from the description.
5. To allow the claimant to bring claim 13 into conformity with the decision of the OD seems reasonable, assuming that the claimant has accepted the OD’s decision with respect to claim 13 and has not appealed that decision.
6. Also to allow the introduction of a new (allegedly) infringing version of the product into the proceedings seems efficient and reasonable, certainly as the Court has given the defendant more time to react.
31 March 2025
Court of Appeal, Phoenix v ILME
No suspensive effect
Background
On 28 March 2025, the JR granted Phoenix an extension of 3 days for filing its appeal response (see for my commentary on that decision, Unfiltered Week 13). On 27 March ILME asked the Court of Appeal to suspend the proceedings in first instance until the decision in appeal of its R. 19 RoP objection.
Decision of the JR
- The JR reiterates the general principles governing UPC proceedings (see the recitals of the UPCA and the Preamble to the Rules).
- The JR also refers to the obligation of the parties to cooperate with each other (Preamble 7 and R. 332(a) RoP).
- The JR refuses the request to stay the first instance proceedings.
Comment
- In the first instance proceedings, 17 June 2025 had been fixed as the date for oral argument. It is clear that the Court of Appeal can and will render a decision before that date.
- The rule is that procedural appeals do not have suspensive effect. Allowing such effect would make it very easy to delay proceedings, which would prevent a decision within the 12–14 month timeline!
- ILME tried to achieve this.
- The JR did the right thing: no suspension!
31 March 2025
Court of Appeal, Hand Held v Scandit
Settlement before judgment
Background
In first instance, Hand Held obtained a PI against Scandit.
Scandit appealed.
The oral argument in appeal took place on 9 January 2025.
On 13 March 2025 Hand Held withdrew its claim for PI measures.
Scandit agreed.
Parties did not request a cost order.
Court of Appeal
The request was granted.
Comment
- Apparently, the parties settled after the oral hearing. I was not present during the hearing on 9 January and do not know whether something said by the Court triggered the settlement, but note that the Court had still not rendered a decision by 13 March.
- I have said numerous times that R. 265 RoP was not written with settlement in mind. However, in this case the withdrawal of the application means that the decision of the Court of First Instance (granting the injunction) is also removed. To achieve that, a party has to withdraw its application. If the parties had simply informed the Registry that the case was settled, the PI decision would have remained in force.
1 April 2025
Court of Appeal, NJOY v VMR
Decision by default
President of the Court of Appeal
- The appellant filed an appeal against a dismissal of a revocation action by the Paris Central Division.
- The appellant informed the Court of Appeal that they would not pay the court fee and expected the Court to reject the appeal by a judgment by default.
Decision
The appeal was rejected as inadmissible by a decision by default.
Comment
Apparently, the appellant decided not to pursue the appeal and did not pay the required EUR 20,000 court fee. As long as that fee is not paid, the appeal will, I assume, not be served by the Registry on the defendants.
I also assume that the winning party can check the Register to see whether an appeal was filed in time (even if the fee was not yet paid), so that it can assess whether its win is final.
1 April 2025
Local Division Munich, Headwater v Samsung
Different workflows
Background
Headwater lodges three different requests:
- review of a case management order;
- amendment of the claims of the patent;
- amendment of the relief sought.
The Court had Samsung given 10 days to respond. Samsung requested a three-day extension, to which Headwater agreed.
The Court
Agrees and grants the extension but asks parties not to submit the same request across different workflows in the future, as this multiplies the Court’s workload.
Comment
In the CMS system, you need to use a different workflow for each distinct request. It is therefore not illogical that, since the request for extension pertained to all three requests, Samsung filed the same request in all three workflows. The Court now asks parties not to do this, which is also understandable. It all highlights that the CMS is unsatisfactory and burdensome for both users and judges. Let us hope the new CMS will make life easier!
2 April 2025
Local Division Mannheim, Fujifilm v Kodak (EP 3 476 616)
Defense not admissible
Background
Fujifilm filed an infringement suit against Kodak. Kodak filed a counterclaim for revocation.
The Court
- The case relating to the alleged infringement in the UK has already been separated.
- The Court has no jurisdiction to hear claims based on national EPs that had expired before the entry into force of the UPC.
- The patentee’s arguments based on the validity of the dependent claims are inadmissible because no R. 30 RoP request (auxiliary request) was filed.
- The patent is revoked.
- The infringement claim is dismissed.
Comment
- The Court held that the infringement action was inadmissible for national parts of the EP that had lapsed before 1 June 2023 (the date of UPC entry). That seems correct, as Article 3(c) UPCA provides that the UPCA applies only to European patents which have not lapsed. The phrase “without prejudice to Article 83” simply means that national jurisdiction remains available for these lapsed patents. “European patent” in Article 3(c) UPCA refers to each national part of the EP, as is standard practice. Although the defendants apparently raised this only during oral argument, I believe the Court should have applied Article 3(c) UPCA ex officio since it relates to subject-matter jurisdiction. The same would apply if an infringement suit were filed based on a national or US patent.
- In its Statement of Claim, the claimant alleged direct infringement of claims 1–7 and 9–10, and indirect infringement of claim 13.
- In its counterclaim, the defendant argued that the patent should be revoked in full for lack of novelty or inventive step and raised an additional “added matter” objection concerning claim 6.
- In its response to the claim for revocation, the claimant (in the infringement case) inter alia argued that at least the dependent claims are valid.
It is quite a surprise to see that the Mannheim Local Division calls the defence inadmissible, invoking the formality that the claimant did not file “a proper application to amend the patent”, referring to R. 30 RoP. - As I explained above in relation to JingAo v Chint, so-called dependent claims are in fact nothing else than independent granted claims. Dependent just means that the claim includes all the limitations of the main claim (and – often – of the further dependent) claims.
- Thus, if a claimant (as here) alleges infringement of both claim 1 and dependent claims (because the accused product incorporates the subject matter of such claims) and the defendant wants to raise invalidity as a non-infringement defence, then the defendant must argue that the dependent claims are also invalid. In this case, the Court stated that the defendant indeed argued that the whole patent should be revoked. That then means that the defendant did indeed argue or at least is of the opinion that also the dependent claims are invalid.
- It is of course unsurprising that the patentee will defend their independent claims and, if they are prudent (for in case the independent claim(s) will not survive), one or more dependent claims. The drafters of the Rules specifically mentioned that in a Defence to the counterclaim for revocation a defendant should do so (R. 29A sub c RoP). There is no requirement to request an amendment, because there is nothing to amend – it pertains granted claims. I note that R. 30 RoP makes clear that even for a true amendment of claims (where the claim is changed) a formal request is not necessary if it is submitted in response to the counterclaim for revocation. Only if thereafter the patentee wants further changes to his patent claims, a request is necessary (see R. 30(2) RoP).
- There is certainly nothing surprising for a court which is used to deal with infringement and validity in the same proceedings (such as the French and Dutch courts) that a patentee would assert the validity of dependent claims during invalidity proceedings. German national courts, which deal only with infringement, may be less familiar with this practice—and in my opinion that seems to be reflected in this ruling.
- My impression is that the Court focused on the validity of claim 1 (and independent claim 13) and is now invoking a procedural formality to avoid having to deal with the validity arguments regarding the dependent claims.
- As I have said repeatedly: defending granted dependent claims does not require auxiliary requests. You also do not have to file an “auxiliary request” if for infringement you (also) rely (as here) on dependent claims.
- The Court refers to R. 30 RoP. As explained above, R. 30 RoP requires a formal request only when new (amended) claims are submitted after the initial auxiliary requests. However, when defending the validity of granted dependent claims, there is no amendment of the patent. You just defend the different granted claims of the patent. If one argues that an amendment of claim 1 is invalid and only claim 2 and following survive, then that has nothing to do with R. 30 RoP. The meaning of R. 30 RoP is that you want to defend new claims. This follows also very clearly from R. 30.1(a) RoP makes this clear: [the Application shall contain] “(a) the proposed amendments of the claims of the patent concerned and/or the specification”.
- I also believe the Court’s reliance on this formality is inconsistent with Article 138(2) EPC. The Court revoked the entire patent despite the fact that, based on its reasoning, the grounds for revocation only affected part of the European patent.
- In a situation where there is no precedent from the Court of Appeal or any Local Division, the Court should at the very least have given the patentee an opportunity to submit the amendment it deemed necessary before revoking what may be a valuable and innovative patent. This approach in my view seems contrary to the principles of “flexibility, fairness and equity” cited in Preamble 2 of the Rules of Procedure.
Disclaimer:
This case was handled by a team from my firm. I am not a UPC representative and was not part of that team. All opinions expressed above are strictly personal and do not necessarily reflect the views of the firm or the representatives involved.
2 April 2025
Local Division Mannheim, Fujifilm v. Kodak
Separation of proceedings
The Court confirmed the separation of proceedings because the ECJ’s decision in BSH Hausgeräte was not yet known at the time of oral argument. Although the outcome was known by the time of the decision, the Court did not want to decide before giving the parties an opportunity to comment.
Comment
- In my opinion, the decision is correct. If proceedings are separated in order to await an ECJ ruling, then once that ruling is handed down, the parties must be given an opportunity to comment.
- However, the claimant also sought a provisional injunction for the UK. The ECJ had already ruled on this issue in Solvay v Honeywell. There was no reason not to address that request, since BSH Hausgeräte did not concern provisional measures.
- Do we see here a re-emergence of national habits in some countries (unlike the UK—when it was an EU member—or the Netherlands), aiming to avoid cross-border decisions? Such tendencies should not prevail in the UPC after BSH Hausgeräte. The CJEU has made clear that the UPC should enable efficient enforcement of European patents, including outside the UPC territory, against defendants who reside within it and defend themselves in their home division. The Local Divisions in Düsseldorf and Paris appear to have adopted this correct approach.
2 April 2025
Local Division Mannheim, Fujifilm v Kodak (EP 3 511 174)
Prior user right
Background
The patent is only valid in Germany and the UK.
The UK case was separated because the decision in BSH Hausgeräte was not yet available at the time of oral argument.
The claimant alleges infringement.
The defendant filed a counterclaim for revocation and asserts a prior user right in Germany.
Decision of the Court
- In frontloaded proceedings, all facts and arguments concerning a prior user right should be included in the Statement of Defence. In the Rejoinder and Reply, parties in principle may only respond to the arguments of the other side.
- The Court applies German law to the question of whether a prior user right exists in Germany. Conclusion: no prior user right.
- The Court again confirms that it has no jurisdiction over patents that expired before the UPC entered into force.
- The Court (in my view: correctly) finds that no Rule 263 RoP request is required to adapt the infringement claim when the patent is only maintained on the basis of an auxiliary request. The claimant can simply refer to the amended claim in its response to the revocation counterclaim. Rule 30(b) RoP expressly permits this.
- The same holds true (no formal Rule 263 RoP request required) for clarifications or modifications made in response to a JR’s order. (I find this a practical approach, as such request implies of course that the clarifications or amendments demanded by the JR are also allowed.)
- The Court rejected the argument that the priority claim should be denied, noting that it suffices if the claimed subject-matter is disclosed in the priority document. It need not be claimed in that document. The Court properly relies on EPO decision G2/98. (Note: the Court also cited German case law applying the same principle. In my view, suggesting that UPC interpretation should follow German precedent is not supportive for promoting the UPC as a Court for 18 states. The case law of all participating countries (not referred to in the decision) is equally (un)important. Practitioners familiar with more than just German law will know that multiple UPC states have decisions applying G2/98.)
- The Court also rejected the added matter objections, applying the correct standard: “directly and unambiguously disclosed to the skilled person.” This time the Court cited a decision of the Local Division in The Hague, which is more persuasive than references to national case law.
- The Court found the amended patent valid and infringed.
- The Court also clarified that a claimant must explain the interest behind each request, as the Court may refuse to grant relief if there is no interest, or on proportionality grounds.
Comment
- In my opinion, this is a convincing judgment. The view that the UPC cannot rule on infringement of EPs in countries where the patent expired before UPC entry into force is in my view correct (see my comment before).
- This decision makes the previous decision (regarding EP 3476616) all the more questionable. In that case, the Court insisted on a formal Rule 30.1 RoP request for amendment and therefore considered inadmissible the arguments of Fujifilm with respect to the validity of the granted (unamended!) dependent claims. Here, by contrast, the Court accepted an alignment of claims (which did mean a change of granted claims as—an amendment under Rule 30.1 RoP—without any formal request. This is the correct approach. A formal request is only needed for further amendments submitted later. In the earlier case, there was no amendment at all. The dependent claims were part of the granted claims! Moreover, the validity of these claims was defended in the Statement of Answer to the Counterclaim for Revocation.
2 April 2025
Local Division Hamburg, JingAo Solar v Chint
Security for costs
Facts
The defendant requested security for costs, arguing that the claimant is based in China and it is well known that it is very difficult to enforce a German decision in China – and the same would apply to a UPC decision.
The JR
The place of residence of a party, as such, can never alone justify awarding security. The JR disagrees with the Munich Local Division and refuses the request.
Comment
- I am not impressed by this decision, as it is common knowledge that China refuses to cooperate with the service and enforcement of foreign decisions. The Munich Local Division took a far more practical and realistic approach, citing recent (UPC) experiences of non-cooperation.
- I note that the situations between the two Chinese litigants are slightly different. In Munich, the plaintiff requested security and the defendant apparently had no valuable assets in the EU.
- Here, it is the defendant requesting security, and at least the plaintiff has some assets in the UPC because it owns patents. However, if the defendant prevails and the patent is revoked, that security is simultaneously destroyed—so in practice, there is no real difference between the two cases.
- I am curious to see what my counterpart in China will say when they see one German Local Division trying to be smarter than another. Hamburg being so kind to China might just earn them an invitation to China to visit the Forbidden City!
3 April 2025
Local Division Mannheim, Corning v Hisense, TCL and LG
Preliminary objections
Background
Corning sued nine defendants belonging to three different corporate groups. The Chinese manufacturer of the allegedly infringing glass sheets is being sued in separate proceedings.
All defendants filed preliminary objections requesting either dismissal of the proceedings or joinder with the proceedings against the manufacturer, and suspension until the manufacturer is served.
The Court
The preliminary objections were rejected.
The Court found that it has jurisdiction pursuant to Article 33(1)(a) UPCA (division where the infringement occurs). Whether or not all defendants sell the same product is a matter for the case on the merits. There is no obligation to sue the manufacturer and the sellers in the same proceedings.
Comment
This is a correct decision. Defendants should have known that preliminary objections can only be based on the grounds listed in R. 19 RoP. These objections were therefore bound to fail. Moreover, R. 303.1 RoP clearly allows bringing proceedings against multiple defendants. There is no requirement that all defendants commit the same infringing act.
From an efficiency perspective, suing multiple defendants in a single action can be beneficial—allowing all invalidity arguments to be dealt with in one proceeding (avoiding conflicting decisions), and even if the infringements are not identical it is also useful to have consistent claim interpretation across allegedly infringing acts.
It may be different if the alleged acts of infringement are entirely distinct and raise different claim construction issues. In such a case, the Court can always decide to split the proceedings.
4 April 2025
Local Division Mannheim, Fingon v Samsung
Preliminary objection – opt-out withdrawal
Background
The defendant filed a preliminary objection, arguing that the withdrawal of the opt-out was ineffective. The patent had been assigned to Fingon pursuant to a patent assignment agreement effective 29 April 2024. The opt-out was declared by the previous patent holder (OLogN) on 25 May 2024 and withdrawn by Fingon on 13 November 2024.
The defendant claims the assignment was invalid, and therefore the opt-out withdrawal had no effect. The defendant also argued that the UPC has no jurisdiction over acts committed prior to the withdrawal of the opt-out.
The JR
- R. 19 RoP applies only to the existence of an opt-out, not to the validity of its withdrawal. If there is a dispute about whether the withdrawal is valid, this must be dealt with in the main proceedings.
- The UPC has jurisdiction over acts committed prior to its entry into force, provided the patent had not yet expired at that time.
Comment
- I have some doubts as to whether the validity of an opt-out withdrawal can never be raised via a preliminary objection. Is this not basically saying that the Court has no jurisdiction because the patent has been opted-out? On the other hand, I fully agree with the JR that such a challenge is better handled in the main proceedings, where the defendant bears the burden of proving that the claimant was not the patent owner at the time of withdrawal.
- The fact that the UPC can also deal with infringements prior to the entry of the UPCA in a situation wherein the infringement is ongoing has already been confirmed by the Court of Appeal.
4 April 2025
Local Division Munich, Edwards v Meril
Problem solution approach (EP 3 669 818)
Timeline
Action commenced: 27 December 2023
Decision rendered: 4 April 2025 (≈ 15 months)
Note: the Court would have decided in 14 months if the original oral hearing date had been accepted by the defendants.
Facts
Edwards sued Meril for infringement of a patent covering a prosthetic heart valve. Meril contested infringement and filed a counterclaim for revocation.
At the interim conference on 19 December 2024, the Court admitted Edwards’ auxiliary requests and requested physical samples or drawings to assist the technical understanding.
Romania was added to the list of designated states for which judgment was sought. The patent was maintained by the Opposition Division of the EPO, with claim 1 maintained and claim 9 amended. No appeal was filed against that decision.
The Court
The Court rejects Meril’s preliminary objection.
- A claim seeking an injunction “within the area of application of the UPCA as of the date of the hearing” is improperly formulated. The countries must be specified. Also acceptable would be “territory of those Contracting Member States for which the European patent has effect”. The decisive moment is the date of the Statement of Claim—defendants must know from the outset which countries are at issue.
- The UPC has jurisdiction over acts of infringement committed before the UPCA entered into force.
- “The same infringement” under Article 33(1)(b) includes infringement of different national designations of the same EP by different parties using the same product or process in different UPC states.
- Narrowing claim construction (a construction in which the – broader – wording of the claim is given a more limited meaning) based on the description and drawings is only allowed in exceptional cases.
- The Court rejected arguments of added matter and lack of novelty.
- The Court explicitly applied the problem solution approach (PSA), citing the need for legal certainty and alignment with EPO/BoA case law.
- The patent was held valid.
- The Court rejected non-enablement objections.
- A mere undertaking not to infringe, given orally without a penalty clause, is insufficient.
- The Court rejected public interest and proportionality defences, noting that a compulsory licence would be available for patients in need.
Comment
- I think this is a convincing decision, and easy to read due to the way it is redacted. For each decided issue, the Court first cites the position of the parties and then states its own opinion.
- I agree that a co-defendant does not need to infringe in the same country of the UPC as the principal defendant. The UPC should be seen as one territory, at least insofar as the EP is granted for that territory.
- It is also correct that giving a feature of the claim term a narrower meaning than its literal interpretation is the exception. However, if such a more restricted meaning is justified because the inventive effect is not (always) achieved under the broad literal meaning, then such a reading is certainly justified—and more satisfactory than invalidating the claim. In general, a Court should, where possible, adopt a construction that preserves the validity of the claim.
- That said, it is arguably overreaching for a Court of First Instance to declare that the UPC should apply the problem solution approach. That is a matter best left to the Court of Appeal. Personally, I am not a big fan of the PSA. It is very artificial to have to choose a single document as the closest prior art. That, in my view, does not reflect how innovation occurs in reality. The starting point should be Article 56 EPC. The EPO’s reliance on this test is understandable given the volume of applications it processes, but even at the level of the Boards of Appeal, the PSA is often used out of habit rather than necessity by patent attorneys.
4 April 2025
Local Division Lisbon, Ericsson v Asustek
Costs in PI proceedings
Background
Ericsson lost PI proceedings against Asustek due to lack of urgency on 15 October 2024 and was ordered to pay costs.
On 14 November 2024, Asustek initiated cost proceedings (R. 151 RoP), claiming costs for representation, experts, and travel for Powell Gilbert and the defendants.
On 29 November 2024, Ericsson initiated an action on the merits.
The JR
- The general principle is that the losing party bears the costs, except in exceptional circumstances of equity.
- If a PI is granted, it is normally followed by a case on the merits, and the outcome of that case ultimately determines who is the prevailing party. For that reason, in such a case, the PI proceedings may include an interim award of costs.
- Where the PI is rejected, however, the normal rule applies.
- As the Court of Appeal has already held (re Shark Ninja v Dyson UPC_CoA_297/2024), R. 150 RoP applies to PI cases.
- Although the Court states that the reason for rejecting the PI (lack of urgency) cannot be challenged in the action on the merits, it only awards travel costs in this instance to avoid any risk of double recovery should the same expert and representation costs be reused in the main proceedings.
Comment
- First, on R. 211(d) RoP: there seems to be a fair amount of confusion about this provision. It was intended for a PI filed during an ongoing case on the merits. In France, for example, one couldn’t even apply for a PI unless a merits case was already pending.
- The interim award could go to either plaintiff or defendant, depending on who prevailed. That was at least the drafters’ intention.
- The fact that it is an “interim” award doesn’t mean it is provisional or automatically reversed if the outcome of the main proceedings differs. It simply means an award granted during the course of proceedings.
- “Interim” also doesn’t mean that execution of the cost decision has to await the end of the main case.
- Of course the ideas of the drafters at the time are not decisive. In the end it is up to the Court of Appeal to apply the principles of fairness and equity.
- In my view, the reasoning of the Local Division of Lisbon reasoning does not hold up. Of course, there cannot be a double recovery of the same costs. If an expert opinion submitted in the PI proceedings is also used in the proceedings on the merits and Asustek again prevails, it can obviously not claim the same costs of the expert report a second time because they have already be compensated for that. The same is true for all the work which has already been done by representatives in the PI proceedings and reused in the main proceedings.
- In this case, I believe the Court should have awarded full costs (up to the capped amount), provided Asustek properly itemised them. As far as I understand, this may not have been done for representation costs.
- If Ericsson ultimately prevails in the main case, it cannot recover these costs because the refusal of the PI was based on lack of urgency—a ground that will not be revisited in the action on the merits. If Ericsson wishes to challenge that ground, it should appeal the PI decision itself. It would be a different matter if the PI had been refused on the (preliminary) view that the patent was invalid, and the patent were then upheld.
- I understand that Ericsson has now started a case on the merits. As previously mentioned, it would be preferable if the presiding judge appoints a different panel (at least two new legal judges and a different technical judge) then the judges which dealt with the PI, especially as the PI Court not only rejected the PI for lack of urgency but also expressed preliminary views on validity and infringement. Although that does of course not mean that they cannot come to a different conclusion in the case on the merits, it would overall look better for the credibility and neutrality of the UPC if a (party) different panel has a completely fresh look at the case and makes the decision in the case on the merits.
4 April 2025
Local Division Lisbon, Ericsson v Asustek
Bankruptcy
Background
One of the defendants was ordered by an Irish Court to be wound up. Ericsson filed an application for leave to withdraw the case against that defendant.
Decision of the Court
- The withdrawal is allowed, as defendants also agree.
- Under the circumstances of the case: parties bear their own costs.
- No stay of proceedings. Ericsson has to file an Amended Statement of Claim and Asustek gets three months to answer.
Comment
- A good decision by the Court. Asustek has tried to throw sand in the machine of justice in order to delay the proceedings as much as possible. The Court prevents that, while being fair to both parties.
- When I wrote my comment under the other decision of the Lisbon Local Division, I had not yet read this one. I note that the President of the Court of First Instance appointed the same judges as in the PI proceedings. No surprise that Asustek tries to throw sand in the machine!
– All comments above are Prof. Hoyng‘s personal opinions –
🎧 Listen now:
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”.