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.
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11 August 2025
Local Division Munich, Syntorr v Arthrex
UPC_CFI_ 114/2025; UPC_CFI_358/2025
Security for costs
Facts
The defendant asks the Court to order security for a total amount of € 3.300.000. The claimant requests the Court to order no security, or to lower the amount and to allow the security to be in the term of an “anti-avoidance” insurance with a licensed EU insurer.
The JR
- announced the appointment of a Technical Judge;
- confirms the agreement on the use of visual aids during the hearing;
- informs the parties that during the oral hearing they have to discuss the points raised by the Court and will get 20-30 minutes for a closing argument;
- sets the value of the dispute;
- orders that one week before the hearing parties will give a legal cost estimate;
- states that parties are encouraged to talk (about settlement);
- sets the hearing date: 22 August 2025 at 10 a.m.
Comment
- As far as can be seen this is only an infringement case which explains the late appointment of the Technical Judge which is not an obligation in (only) an infringement case, but parties/the Court can request this. Apparently, that is what happened.
- If the Court wants to organise the hearing as indicated, it is hoped for the parties that a few days (week) before the hearing they receive the points the Court wants to discuss. Representatives should make sure that they raise all other points which they consider important as they will not be able to do that (for the first time) on appeal.
- The Court is apparently aiming at an agreement on costs so that separate proceedings are not necessary. As both counsels are Dutch and are used to try to settle costs by agreement, it is likely that clients can be spared the costs of separate cost proceedings.
12 August 2025
Local Division Düsseldorf, Headwater v Samsung
Change of language
Facts
Both parties ask to change the language of the proceedings to English (the language of the patent). The JR grants the request.
Comment
That of course makes sense between two international companies. You only wonder why the German representative of a claimant, acting for a US company, started the case in German, thereby causing, we assume, quite some extra translation costs for their clients.
12 August 2025
Local Division Düsseldorf, American Wave Machines v Surftown
UPC_CFI_837/2024; UPC_CFI_349/2025; UPC_CFI_394/2025
Confidentiality
Facts
The defendant no longer objects against the natural person of claimant who gets access to the confidential information.
The JR
The JR changes the confidentiality order issued on 1 August 2025 accordingly.
Comment
A hopeful sign of a cooperative representative and party!
12 August 2025
Court of Appeal, Lionra v Cisco
Extension of term
Facts
On 19 February 2024, the Local Division Hamburg rejected Lionra’s infringement claim and Cisco’s counterclaim for revocation. Lionra appealed.
On 19 June 2025, Lionra filed its Statement of Grounds in Appeal together with a R. 262A RoP and a R.262.2 RoP request for confidentiality. On 17 July 2025, Cisco got access to the unredacted version of the Statement of Grounds.
Cisco asks for an extension for answer and cross appeal until 17 October 2025. Lionra states that one week or alternatively 10 calendar days is sufficient.
The JR
One month is too long as the confidential part of the Statement of Grounds is very small.
One week/ten days is too short because Cisco has to redo its expert report.
Decision: Cisco gets a two-weeks extension.
Comment
These representatives have not yet learned to pick up the phone, being reasonable and agree with the same result. They spent their client’s money on drafting arguments and waste the time of the Court of Appeal, forcing the Court of Appeal to draft a reasoned order.
13 August 2025
Local Division The Hague, Winnow v Orbisk
UPC_CFI_327/2024; UPC_CFI_557/2024
Decision on the merits
Facts
Winnow sues Orbisk for infringement. Orbisk denies infringement and files a counterclaim for revocation.
The Court
- Claim interpretation: the Local Division cites Court of Appeal re Nanostring v 10x Genomics of 26 February (11 March) 2024 and refers also to G1/24 of the Enlarged Board.
- Parties more or less agreed on the skilled person.
- The Court ruled that the claim element “cleaning calculated weights” should be given a very broad meaning and can present any type of cleaning relating to weights and/or categorising.
- The patentee agreed that it could not rely on priority because the priority document did not contain the invention as claimed.
- During the interim conference, it was decided not to decide on the R. 190 RoP request (Evidentiary Seizure with respect to alleged prior public use) and decide on it during or after oral argument. In view of the non-infringement outcome the request is not relevant anymore and is dismissed.
- With respect to inventive step the Court holds the following in no. 35:
“According to Art. 56 EPC, a claimed invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. An objective approach must be taken to the assessment of inventive step. The subjective ideas of the applicant or inventor are irrelevant. Inventive step is to be assessed from the point of view of the Skilled Person based on the state of the art as a whole, including the Skilled Person´s common general knowledge. The Skilled Person is assumed to have had access to the entire publicly available art on the relevant date. The decisive factor is whether the claimed subject matter follows from the prior art in such a way that the Skilled Person would have found it, on the basis of that person’s knowledge and skills, for example by obvious modifications of what was already known. As a tool to assess whether a claimed invention was obvious to a Skilled Person, the Court will follow the problem and solution approach (“PSA”) as suggested by the parties and as also used by the EPO and the Munich Local Division. Given that parties followed the PSA, the Court need not decide if the PSA is the (only) approach to be followed. Any approach in fact would render the same result in this case. In this context it is necessary to determine a realistic starting point in the state of the art. There must be a justification as to why the Skilled Person would consider a particular document in the state of the art as a realistic starting point. In selecting the starting point, the first consideration is that it must be directed to a similar purpose or similar effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, such prior art is generally that which corresponds to a similar use and requires minimal structural and functional modifications to arrive at the claimed invention.”
7. The Court decides based also on the broad interpretation of “cleaning” that the patent is invalid. The first and second auxiliary requests are equally invalid. The third auxiliary request is valid but it is not infringed.
Decision: infringement claim dismissed.
8. Costs (agreed by the parties but parties left it to the Court to decide the split in case of partial victory) in favour of Orbisk: 100% for infringement and 85% for the revocation.
Comment
- If you defend a broad meaning of a claim element because you want to argue infringement, then such broad meaning is also the starting point in invalidity proceedings. In this case this leads to invalidity and the infringement did not have to be discussed anymore.
- The Court applies the problem solution approach (PSA) because the parties also used this to discuss the revocation. The Court expressed (different from the Local Division in Munich) that it left open the question whether or not it was obliged to apply the PSA. It added that a different approach would have led to the same result. This makes it a convincing decision while leaving it for the Court of Appeal to decide what test to apply with respect to infringement. I hope that the Court of Appeal is not going to make the PSA the compulsory approach (which is also not the case at the EPO), but will give guidelines on how to decide about Art. 6 EPC as it did with respect to claim interpretation, while not excluding the PSA.
- Parties agreed about costs leaving it to the Court to make the decision if there was a partial judgment (like here with respect to validity). No cost procedure necessary. That is exactly what parties should do. It saves their clients a lot of costs and the Court time. The Local Division of The Hague clearly promotes this. We saw the same last week with respect to the security of costs.
13 August 2025
Court of Appeal, Boehringer v Zentiva