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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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