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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25 August 2025
Court of Appeal, Sun v Vivo
UPC_CoA_758/2025 and UPC_CoA_759/2025
Confidential information (R. 262A RoP)
Facts
- Sun filed an infringement action based on a standard essential patent (SEP), asserting that it had offered a fair, reasonable and non discriminatory (FRAND) license to Vivo which Vivo does not want to accept.
- On the same day, Sun applied for a confidentiality regime with respect to certain parts of its Statement of Claim and exhibits, first with restriction of access to three employees and later for an attorney-eyes-only regime.
- The Paris Local Division granted the request but allowed three persons of Vivo to have access.
- Sun appealed and asked for a suspensive effect asking that access to the Highly Confidential Information (“HCI”) would be subject to an attorneys-eyes-only regime or, alternatively, access should be given to three Vivo employees who shall not participate in or advise on any licensing negotiations for a certain period, arguing that without suspensive effect the appeal would become pointless.
The Court of Appeal
- The Court of Appeal held that although R. 223.5 RoP states that there shall be no suspensive effect of an order, the Court of Appeal has already decided that this is possible because the prevailing of Art. 74 UPCA.
- The Court of Appeal states that suspensive effect is the exception to the rule and refuses suspensive effect because:
- Sun did not show that the three employees will not keep the information secret;
- the appeal without suspension is not devoid of purpose, because after a successful appeal the employees will not have further access and would not be able to make further use of the unredacted version or alternatively could not participate in license negotiations.
Comment
- How does this all works in practice? I assume Sun wants to produce agreements with other licensees showing that what they offered is FRAND, that Vivo is unwilling and that Sun is therefore entitled to an injunction.
- Almost all license agreements contain a confidentiality clause. So Sun had to make sure that Vivo does not get access to the content of these license agreements, and if that is not possible, at least make sure that the persons who get access do not participate in license negotiations in which they could use the confidential information, e.g. in negotiations with companies with which Sun had agreed confidentiality of the license agreement.
- One can also imagine that, if (what in practice often happens) during the litigation there are further license negotiations, Sun would not like that the persons who negotiate on behalf of Vivo have all the information from Sun’s existing licenses.
- The Paris Local Division apparently did not realize the commercial realities when issuing the order. The decision of the Court of Appeal again shows suspensive effect is only granted in highly exceptional circumstances, and the Court of Appeal considers that because of the relative short time of an appeal it is not devoid of purpose. This would of course be quite different if the three employees could not be trusted to keep the information secret or use it only for the allowed purposes.
25 August 2025
Local Division Hamburg, Med-EL v Nurotron
Service
Facts
The defendant has been represented in preliminary injunction (“PI”) proceedings by a UPC representative. The claimant is of the opinion that he can validly serve the infringement action on the merits to the defendant’s representative in the PI action.
The Court
The PI proceedings and the review proceedings of the ex parte PI order are different proceedings compared to proceedings on the merits and these latter proceedings cannot be served to the defendant’s representative in the PI proceedings and review proceedings. They have to be served in China according to The Hague Convention.
Comment
- Although very formalistic, I think the decision is correct. The representative has clearly stated that he only acts as representative in the PI proceedings and the pending review proceedings, which are indeed separate proceedings.
- However, it is clear that with these type of avoiding tactics, the client does not seem to strengthen its position in the review proceedings. Urgency and necessity seem now not difficult to establish and any material defence seems unconvincing from the start if his Chinese client uses all the tricks in the book to avoid a timely decision in the main proceedings.
26 August 2025
Local Division Munich, NEC v TCL
Public access
Facts
- The parties settled in January 2025.
- A law firm wants access to the register, specifying that it wants to receive the written pleadings and exhibits, if redacted in the redacted version.
- The parties ask to reject the requests. The claimant in the alternative asks that only the redacted versions, lodged during the proceedings in accordance with the R. 262A and 262.2 RoP requests, will be given to the law firm.
- The claimant argues that:
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- there is no reasoned request, as the reasons (educational purposes) are not the true reasons: they just filed a case based on the same patent and apparently that is why this law firm wants this information;
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