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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28 July 2025
Local Division Düsseldorf, DDP v Greenchemicals
Withdrawal of PI proceedings
Facts
Claimant filed an application for provisional measures on 7 March 2025.
Parties settled.
Claimant requests withdrawal.
Defendant consents.
Parties do not ask for costs.
Claimant requests the return of 60% of the court fees.
The Court
- Permits withdrawal and orders 60% reimbursement of court fees.
- The hearing of 30 July 2025 is cancelled.
Comment
I do not understand why a party that withdraws an application for preliminary measures gets 60% of the court fee back. It seems clear to me that Rule 370.9 RoP is not written for such applications, but for actions with a written procedure, interim procedure, and oral procedure. 60% is not justified. Settlement took place shortly before the oral hearing. Thus, 20% would have been more than enough. As I have advocated earlier, the whole fee payback system should be abolished (except perhaps in exceptional cases), but it certainly should not be used in such a generous way as in this case.
28 July 2025
Local Division Lisbon, Ericsson v Asustek
No bifurcation
The Court
- No bifurcation.
- Asks the President of the Court of First Instance to appoint a Technical Judge.
- Sets the date for the interim conference on 22 January 2026.
- Sets the date for the oral hearing on 25 March 2026.
Comment
The panel is the same (except for the Technical Judge) panel that, in PI proceedings, held there was no urgency, but provided an obiter dictum that the patent was infringed. The panel’s expectation may have been that, after that obiter dictum, the parties would settle. That was not the case. It will be interesting to see what the decision of that same panel will be, but now with a Technical Judge in the proceedings on the merits.
28 July 2025
Local Division Munich, Papst v Roborock
Extension of term
Facts
In this case, there are three Roborock defendants: a German, a Dutch, and a Chinese entity. These defendants ask for an extension of about a month for R. 19 RoP objections and for the Statement of Defence/Counterclaim for Revocation. If the request is granted, the Chinese entity will agree to appear. Claimant agrees.
The Judge-Rapporteur (JR)
Rules accordingly.
Comment
- This extension does not cause delay and has the advantage that the problem of serving a company locally in China is resolved, and the time limits for all defendants are synchronized. This is all very efficient, and a scheme like this should – in my opinion – be included in the revised Rules.
- In this case, defendants approached the JR by email, who consented the same day. This is an unofficial but efficient way of communicating. However, I remind representatives that you must always copy the representative(s) of the other party (or parties) at the same time. The same is true for telephone conversations with a Judge. You cannot have such a conversation without the other representative present. I refer to R. 8.3 RoP. Judges are also advised not to phone a representative without the other party present. It will be clear that communication in writing (email) is to be preferred, as there cannot be any misunderstanding about the contents of the conversation. I write this because I note that old habits die hard. As in most national jurisdictions, this is a strict rule; the Drafting Committee concluded that such a rule should be written down in the Rules for representatives from jurisdictions that are not familiar with such a rule.
28 July 2025
Central Division Paris, X v Essetre
Claim interpretation
Facts
On 17 May 2024, X started a revocation action to revoke claims 1, 3, 4, 5, 6, 9, and 10 of the patent of Essetre, arguing that these claims lack novelty and are not inventive. On 8 August 2024, the defendant filed a request for amendment and filed an amended claim and five auxiliary requests. In its answer, X invokes lack of clarity (Art. 84 EPC) and non-compliance with Art. 123(2), 54 and 56 EPC.
The Court
- Claim interpretation: The Court applies the principles as stated by the Court of Appeal in UPC_CoA_335/2023 (Nanostring v 10x Genomics).
- The patent is its own lexicon.
- New claims do not lack clarity.
- There is no added matter.
- With respect to novelty, the Court remarks: “It must be borne in mind that for the purpose of the application of Art. 54(1) EPC an invention is considered part of state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features.”
- This novelty issue is to be addressed from the vantage point of the notional skilled person, taking into account the skilled person’s common general knowledge at the publication date of the cited document.
- The patent is novel
- With respect to inventive step, the Court states: “In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop an invention or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art (see, Munich CD, decision issued on 17 October 2024, UPC_CFI_252/2023; Dusseldorf LD, decision issued on 10 October 2024, UPC_CFI_363/2023).”
- The claims are inventive.
Conclusion
Revocation dismissed.
Comment
- The Court, in my opinion, stated the correct criteria. With respect to novelty I remark that, as with added matter, a claim element can be implicitly disclosed, and I can also imagine that if the document refers for an element of the invention to another document (e.g., with respect to certain materials to be used in a certain structure), that that can be novelty-destroying.
- The Court states that the prior art document should be judged at the date of its publication. I have always had my doubt about this case law. What if the teaching of that prior art document has changed between the publication date and the priority date? In my opinion the teaching at the priority date is decisive. That raises the interesting question if something that before the priority date was not novel/inventive can be novel/inventive at the priority date.
29 July 2025
Local Division Milan, Oerlikon v Bahgat
Rectification
Facts
- On 4 November 2024, the Court gave judgment in infringement proceedings in favor of Oerlikon. It ruled that Oerlikon had to bear 20% of the costs and Bahgat 80%.
- Oerlikon started costs proceedings. In a decision of 9 May 2025, the Court ordered Bahgat to pay € 80,000 as reimbursable costs.
- Oerlikon filed an application on 28 May under R. 353 RoP for correction of the judgment, arguing that the judgment, apart from the € 80,000, also added an additional amount of € 20,000 for the case on the merit and that the Court should have awarded € 100,000.
The Court
- Cites R. 353 RoP and case law.
- Refuses the application, stating that it is clear both from the motivational part of the decision and the decision itself that € 80,000 is the correct amount.
- The phrase “to this (the € 80,000 Euro) is added € 20,000 for the main proceedings” constitutes a mere typo.
- Moreover, according to the principles of R. 353 RoP, the remedy for what the applicants want (to challenge the decision of the Court) is not R. 353 RoP, but an appeal.
Comment
- The Court explains quite convincingly that a reasonable person would infer the Court indeed wanted to award €80.000,
- Oerlikon should therefore have understood that the “typo” – as the Court qualifies the error in “to this is added € 20,000 for the main proceedings” – did not make sense and could not lead to a change in judgment.
- If Oerlikon did not agree with the judgment (which awarded less than Oerlikon had asked), it should have appealed, instead of attempting to get a better result via a judgment correction as it was crystal clear that the Court had wanted to award € 80,000.
29 July 2025
Local Division Munich, Jinko v Longi
Scheduling
The JR
- States that proceedings against the fourth defendant will be dealt with later.
- Sets the dates for the interim conference and oral hearing.
- Although no formal decision is made yet, parties are told that they can assume that there will be no bifurcation.
Comment
It remains unclear what happened with the fourth defendant, a German company. It looks like the company is a reseller of the infringing products of the Longi companies and has decided not to appear in Court and not to incur any costs. This might be a good strategy if the Longi companies win the case: there will be no default judgment under those circumstances. However, it is much safer to make sure that the manufacturer defends your interests at their cost, assuming they hire a competent representative.
29 July 2025
Local Division Mannheim, Malikie v Discord
Action bound to fail
Facts
- Defendants filed a request under R. 361 RoP and R. 362 RoP.
- They argue that claimant cannot invoke the German part of the European Patent because they have not complied with Section 25(1) of the German Patent Act, which requires a domestic representative for the German part of the EP registered with the German Patent and Trademark Office if a claimant does not have residence or a principal place of business in Germany. Their conclusion is that the UPC cannot hear the case as this requirement has not been fulfilled and that therefore the case is manifestly bound to fail (R. 361 RoP).
The Court
- Section 25 of the German Patent Act is only a procedural provision, which in Germany would lead to the inadmissibility of an infringement claim but not to a judgment that the claim is unfounded.
- Being a German national provision, it does not apply to the UPC.
- The purpose of Section 25(1) is enabling somebody who is sued for infringement to immediately start a revocation action, as he can serve the writ on the representative of the patentee in Germany. This is necessary in a bifurcated system but not in the UPC, where you can counterclaim for revocation in the infringement proceedings.
- Even if Section 25(1) would be applicable, then R. 361 RoP and R. 362 RoP would not be applicable because you can remedy the failure to register a representative.
Comment
- This is a typical example of a case that should not have been brought before overloaded German Divisions, as none of the parties have anything to do with Germany.
- The defendants have spent a lot of time and money on an interesting legal point, of which the outcome was clear from the start. They get value for their money because the Court gives an elaborate, well-reasoned decision.
- It is a known private international law rule that if a court has jurisdiction with respect to an international dispute (which could most of the time also be brought in a different court), the court will have to decide which national law to apply, but that the procedural law is the law of the forum (the court). The only question that can sometimes arise is if a provision of procedural law is in fact material procedural law. If the law of a country, for instance, does not have the possibility of a recall, then a court should not order a recall if it is dealing with infringement in that (foreign) country.
29 July 2025
Local Division Düsseldorf, Maxeon v Aiko c.s.
Cost ceiling
Facts
There are 8 defendants. Defendants 1, 2, and 4, and defendants 3 and 5 to 8 are represented by different representatives.
Defendants 3 and 5 to 8 ask for security for legal costs.
They refer to the (reasons for the) order already in place for defendants 1, 2, and 4 (security order for € 100,000).
The Court
- 158.1 RoP clearly states that you can ask for security at any time during the proceedings. It is therefore irrelevant that defendants asked for security 9 months after the other defendants asked for it.
- The doubts about claimant’s solvency during the first order remain in view of the financial results for Maxeon group’s fourth quarter of 2024.
- As to the amount, the Court weighs the claimant’s right to an effective remedy against defendants’ interest in security.
- The ceiling for recoverable costs for all defendants in this case is € 200.000.
- Orders a security of € 100.000.
Comment
- A textbook decision on security for costs. Also because I did not see from the decision that Maxeon argued that they would not be able to pursue their claim for infringement.
- Moreover, if you have a good case as a claimant, you should be able (at a cost!) to find finance for starting proceedings.
30 July 2025
Local Division Düsseldorf, Headwater v Samsung
Added matter / late argumentation
Facts
- Infringement and revocation case.
- After the decision of the JR to refuse an amendment of claim relating to the infringement of subclaims 2, 3, 4, and 8, only claim 1 was at issue.
- Claimant filed 52 conditional auxiliary requests, of which 26 were still relevant.
Decision of the Court
- With respect to claim interpretation, the Court refers to UPC_CoA335/2023 (Nanostring v 10x Genomics). It adds a consideration in paragraph 77. Paragraph 77 only emphasizes one of the principles of the Protocol (“ 69 should not be taken to mean that the claims serve only as a guideline and that actual protection conferred may extend to what, from a consideration of the description and the drawings by a person skilled in the art, the patent proprietor has contemplated”). The Court states: “The Protocol in using the term “extend” clearly intends to prevent a claim interpretation which extends the subject matter beyond what is actually claimed, i.e. exceeds the bounders of the claim. The underlying principle is legal certainty.”
- With respect to added matter, the Court refers to Abbott v Sibio UPC_CoA_382/2024. However – and perhaps more importantly – the Court states that the criterion for assessing added subject matter is “beyond (reasonable) doubt”, referring to its own decision in Fuji v. Kodak.
- The Court concludes that claim 1 is invalid because of added subject matter, which means that there is no infringement and it is not necessary to deal with other defenses.
- An alternative reasoning why there is no added matter in claim 1, put forward for the first time during the oral hearing, is not allowed by the Court as it is late.
- As none of the 25 auxiliary requests addresses the added matter problem, they are not relevant.
- The Court invalidates claim 1 and dismisses the infringement claim.
Comment
- National habits seem to die hard. The representatives should:
-
- have invoked the dependent claims already in the Statement of Claim
- should have done more thinking after receipt of the counterclaim for revocation and presented their alternative reasoning why there was no added matter in claim 1 in their answer to the counterclaim.
- I do not understand that if you file 50 auxiliary requests (which may be normal in the EPO, but in my opinion, should not be allowed in a court of law), why in the end none of them addresses the added matter argument of the defendant with respect to claim 1
- Why do so many turn to the German Divisions? I often hear from companies and representatives that these Division are presumed to be patent-friendly. As I have previously written: the statistics do not evidence this, and I cannot find anything in this Düsseldorf judgment that supports that presumption either.
- In my opinion, paragraph 77 seems to opt for quite a literal interpretation of the claim and justifies that with the underlying legal principle of legal certainty. I think this addition to the cited decision of the Court of Appeal does not show the right attitude towards claim interpretation. It only cites one part of the Protocol and gives that part too much weight. It basically pleads for a (rather) literal approach to claims, which in my opinion is wrong. The Protocol is not only about legal certainty but about a balance between a just reward for the patentee and a reasonable (and NOT absolute) degree of certainty for third parties.
- Düsseldorf also has its own idea about added matter. There is only no added matter if it is beyond (reasonable) doubt that the added matter is disclosed to the skilled person. I see no reason why you have to apply such a strict test. I think if you can establish that it is more likely than not that the skilled person (with a mind willing to understand) also has the added matter disclosed, then that is more than enough as every reasonable advisor (patent attorney) will advise so. What good for innovation is it such a strict criterion invalidates (or revokes) valuable inventions? I have seen it happening.
30 July 2025
Local Division Düsseldorf, Aesculap AG v Shanghai
Penalty payment
Facts
- The Court had issued an injunction against Shanghai due to patent infringement, accompanied by the usual orders (including information about the number of infringing products, the source of those products, the name of the makers or suppliers, etcetera).
- Claimant, after service of the decision, informed defendant that it expected defendant to perform its obligation under the judgment within one month and that it would ask the Court to issue a threat with penalty payments in case defendant would not comply.
- Defendant did not comply with all orders, and claimant asks the Court to order a penalty payment of € 30,000 for each day after one month that defendant has not performed his duties.
The Court
Grants the request.
Comment
If claimant in his Statement of Claim would have requested the Court to order defendant within a month to give claimant the information about the source of the infringing products and a daily penalty if defendant does not obey the order, then claimant would not have lost a month and this whole extra exercise would not have been necessary.
30 July 2025
Local Division Düsseldorf, Nutricia v Nestlé
Value of the action
Facts
Infringement proceedings and counterclaim for revocation. The patent in suit is revoked by the EPO. In the infringement action, claimant:
- Requests to withdraw its claim and to declare the case closed.
- To give a cost decision.
- To decide that the revocation case is closed according to R. 360 RoP (no need to adjudicate).
The defendant requests the Court to issue a cost decision and put the value of the litigation at €1 million for the claim and €1.5 million for the counterclaim. In an earlier procedural order, the Court had suggested a value of €250,000 and €500,000.
Parties disagreed about the value.
The Court
- Refers to R. 22 RoP. For deciding the value of the litigation, the Court takes into account (for deciding the value of the litigation) the value assessed by the parties and its assessment of the value. The value shall reflect the objective interest pursued by the filing party at the time of the filing.
- In cases where parties reach a settlement, it is not necessary to conduct thorough examination of each and every aspect. An estimated assessment based on the known circumstances is sufficient.
- €250,000 for the infringement action and a 50% higher value for the revocation action because of the erga omnes effect is justified.
- The Court decides € 250,000 for the infringement and € 500,000 for the revocation.
- Nutricia has to pay the costs.
Comment
- Two large, sophisticated companies cannot agree. They let their lawyers fight and let the Court spend time on establishing litigation costs.
- I would not be surprised if Nutricia is going to ask for rectification because of an obvious error. The Court states that the costs for the revocation should be 50% higher than for the infringement, which is € 375,000; not the € 500,000 the Court awards. Free advice for Nutricia: do not spend your money trying this. It is clear the Court wanted to stick to their earlier provisional suggestion.
- We will probably now get a cost procedure, spending even more time and money. That all serves the representatives, but it should not be necessary. Just agree on costs.
- The Court is absolutely right that parties cannot expect that after a settlement the Court is going to dive into each and every argument about the value of the litigation. They have better things to do.
30 July 2025
Local Division Munich, Avago v Tesla (Request of Renault)
Access
Facts
Avago has started infringement proceedings against Tesla about a standard essential patent. Tesla has counterclaimed for invalidity. Avago wrote a letter to Renault, stating Renault is infringing the same patent. Renault asks for access to the pleadings.
The Judge-Rapporteur (JR)
Grants the request as far as they are not confidential.
Comment
This is a no-brainer: it is clear Renault has an interest. Renault can, on the basis of R. 262.3 RoP, ask the Court to make certain confidential information available. The JR spent 28 considerations in beautiful German on this – in my opinion – straightforward request. This is all very interesting for scholars. In that sense, it is to be regretted that this case involving three non-German (parent) companies is not in English and all this diligent work is not accessible for all scholars and users of the UPC, which in the end is an international court.
31 July 2025
Paris Central Division, Toyota v Neo Wireless
Settlement
Facts
After the interim conference, parties asked the Court to stay the proceedings. The Court allowed the stay on 10 October 2024. On 25 June 2025, claimant filed an application of withdrawal with a request for a return of fees of 40% and indicated that it did not need a cost decision. The defendant agreed on 9 July 2025.
The Court
- Reiterates the interim procedure is closed when the final dates have been set according to R. 103, 104 RoP (R. 110 RoP). This was 16 September 2024.
- Grants the closure request.
- States (see 1) that as the case was withdrawn after the interim procedure and before the oral hearing, claimant is only entitled to a 20% reimbursement.
Comment
- The Rule about the (automatic) closure of the interim procedure is, as becomes clear from the mistake claimant made, not very well known.
- Apparently, the interim conference (during which also the Technical Judge was present) was successful in the sense that it resulted in a settlement, which is one of the stated purposes of the interim conference.
31 July 2025
Local Division Munich, Taylor Wessing v NEC/TCL
Request for public access
The Court
The Court grants an extension of the deadline for submitting comments with respect to the request for public access to 12 August.
The reason for the extension of the deadline is the absence of the claimant’s representatives.
The Court remarks that certain requests for confidentiality according to R.262.2 RoP have been made when the written statement was submitted and have been granted and adds: “Protection of confidential information must be requested when the respective written submission and exhibits are filed. Subsequent correction or review of the written submissions and exhibits filed is not possible in the pending application”.
Comment
- As said before, unavailability of representatives (other than for exceptional circumstances) should not be a ground for extension (let alone as the result of a telephone call between the judge and the representative). In a law firm, not all representatives should be absent at the same time. Now in this case, this will not lead to delay of the main proceedings, and the Court cites also the vacation of the Court, and as the Court does not have 10 or 15 colleagues who can replace, I have more understanding for the vacation of the Court.
- I disagree with the Court that you have to ask for confidentiality under R. 262 RoP at the time of filing and if granted, cannot later make any requests. Indeed, that may be the most practical solution, certainly if there is already a request for application of R. 262A RoP. However, the system of R. 262 RoP is, in my opinion, different. In principle, a party does not have to ask during filing for confidentiality but will be able to do so after a request by a member of the public is made. He then gets (see R. 262.2 RoP) two weeks to make a request for confidentiality. Now if he has already asked for confidentiality during filing (e.g., together with a R. 262A RoP request) for certain paragraphs in a submission and that request is granted, I can understand a decision that he cannot again ask for further confidentiality with respect to the same document (although one can imagine that he wishes some further confidentiality when confronted with the identity of the requestor for information). However, I cannot see why he would be prevented from exercising his right under R. 262.2 RoP with respect to other documents which have not been already ruled to be confidential. This is also a Rule that should maybe be revised in the sense that you have to ask for confidentiality at the time of filing.
31 July 2025
The Nordic-Baltic Regional Division, Texport v Sioen
Infringement
Facts
1 June 2023: warning letter from Texport to Sioen.
September 2023: Sioen files in a Belgian national court a request for a declaration of non-infringement for all the countries for which the patent was granted.
January 2024: Texport starts infringement proceedings with the Nordic-Baltic Division.
February 2024: Sioen started in Belgium a revocation action.
29 October 2024: The JR dealt with the preliminary objections and refused to decline jurisdiction as Texport is not a party in the proceedings in Belgium. Texport is the exclusive licensee of the patentee.
The Court
- For acts in Portugal committed before the entry of the UPC, Portuguese law is applicable.
- Texport is an exclusive licensee and is entitled to sue for infringement.
- Claim construction: the Court refers to the Court of Appeal in Harvard v Nanostring (UPC_CoA_335/2023).
- The Court follows the claim construction of Texport and finds infringement.
- Taking part in a public tender in Portugal is an infringement in Portugal.
The Court grants the request for a permanent injunction and further measures.
Comment
- The Belgian filings were evidently of no assistance to Sioen.
- The Court also concluded, and rightly so, that the claim interpretation of Sioen had no merit.
- Sioen filed no counterclaim for invalidity.
- Should the representatives not have advised Sioen not to spend their money on useless national actions and defending a lost case?
- Contrary to the way some of the German courts formulate orders, the Nordic-Baltic Division formulates the order in such a way that you do not have to go through complicated exercises before the defendant is actually forced to comply with the orders. All representatives should read the orders and formulate orders accordingly in their Statement of Claim.
31 July 2025
Central Division Milan, Novartis v Zentiva