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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14 April 2025
Local Division Düsseldorf, Ona v Google
Bifurcation
Order by the Court
Already before the end of the written proceedings, the Court orders that it will not bifurcate.
Comment
I have already said before that I think that such an early decision as soon as a counterclaim for revocation is filed is desirable. It involves the Technically Qualified Judge from the start of the proceedings and can only make proceedings more efficient.
14 April 2025
Local Division Düsseldorf, Ona v Apple
Same decision as Ona v Google above.
14 April 2025
Local Division Munich, Shanghai v Longi
Service
Facts
Defendants 1, 5, 6 were served.
Defendant 4 was informed by the German Post Office (after they were sent a registered letter with acknowledgement of receipt which they did not accept) that they could pick up the documents for a period of two weeks but failed to do so.
For Defendants 2, 3 and 5 service is still outstanding.
Request
The claimant requested the Court to order that Defendant 4 (a German company) would be deemed validly served.
The Judge Rapporteur (JR)
Referring to R. 271.6.b RoP, the JR rules that Defendant 4 is validly served.
Comment
The German Patent Office stated that “the recipient has been notified”. What does that mean? I suspect that that is a simple card in the letterbox stating that the documents can be collected for a period of the upcoming 14 days. There is no guarantee that defendant 4 was actually aware or could have known (for instance because they refused receipt) that they have been sued. I have serious doubts whether that should be deemed a valid service.
14 April 2025
Local Division Düsseldorf, Maxeon Solar v Aiko
Security of legal costs
Facts
There are 8 defendants in this case.
Defendant 1, 2 and 4 belong to the same group.
These defendants argue that claimant’s financial situation is bad and request a security payment of € 123,200 for legal costs.
The claimant argued that the claim was unfounded, and that even if it were founded, a security €60,000 would suffice.
The Court
- The Court ruled that defendants 1, 2, and 4 bear the burden of proof regarding the claimant’s alleged poor financial situation, and that the claimant would subsequently have to rebut that. In this case, defendants 1, 2, and 4 are correct.
- The Court furthermore held that the ceiling for recoverable costs is €200,000.
- The Court also noted that there are two groups of defendants (defendants 1, 2, 4 and defendants 3, 5, 6, 7, 8). Each group is entitled to claim with a ceiling of €100,000.
- Lastly, the Court stated that it should also take into account the claimant’s right to an effective remedy, and concluded that it is fair, reasonable, and proportionate to set the security at €100,000.
Comment
- A lot of time was spent by the full Court and the parties on a security for costs decision, while one party asked for €123,000 and the claimant, realizing its position was weak, offered €60,000. Why can the representatives not pick up the phone and settle this at
€90,000? Why can the JR not send a message to both parties suggesting to settle at €90,000? - Defendants 1, 2, and 4 did — if I read the decision correctly — not calculate the ceiling correctly. It would also have been wise to already request a default judgment (R. 355 RoP) in case the security was not provided in time.
- I count 8 defendants. There is no good explanation why the ceiling for defendants 1, 2, and 4 is 50% of €200,000. It should have been three-eighths (3/8) of €200,000 =
€75,000. - After stating that the ceiling is €100,000, the Court said it had to take into account the claimant’s right to an effective remedy, as well as fairness, reasonableness, and proportionality, and then concluded — without stating that this had no effect on the ceiling — that the security should be €100,000.
- My conclusion: not very efficient, and not a very convincing decision by four judges!
14 April 2025
Local Division Munich, Headwater Research v Motorola cs and Flextronics
Separation of proceedings
Facts
- Headwater requests to separate the proceedings against defendant Flextronics from the proceedings against Motorola c.s., and to order that Headwater does not have to pay new Court fees. Flextronics argues that application be rejected.
- The reason for the request is that the case has suffered substantial delay because a company that did not exist was served.
The Judge-Rapporteur (JR)
- The JR notes they have discretion to order separation of proceedings, taking into consideration the benefits for procedural efficiency and whether or not parties would be disadvantaged.
- The JR rules that in this case the proceedings against defendants 1–4 are much further advanced than those against defendant 5. However, the same questions arise for all defendants, so it is better to address them in the same case. Moreover, the delay was caused by the claimant itself, as it served a non-existent company.
Comment
- A logical decision. Before initiating proceedings, a representative should carefully verify the legal status of potential defendants to ensure that the correct (and existing!) company is sued.
- Defendant 5 was a Dutch company. What would have happened if the separation had been ordered? Would the Munich Division still have had jurisdiction? In my view, only if the Dutch company was also infringing in Germany, because jurisdiction could no longer be based on the fact that defendant 5 is a co-defendant.
14 April 2025
Court of Appeal, Stadapharm v Accord/Novartis
Public access to register
Facts
Stadapharm applied for access to the Statement of Claim for a DNI declaration, including 36 exhibits, filed by Accord against Novartis.
The Milan Local Division dismissed the request because Stadapharm had not demonstrated a legitimate interest during the proceedings.
Stadapharm appealed.
The Milan Central Division allowed withdrawal of the main case by Accord.
Both Accord and Novartis no longer objected to Stadapharm’s request.
Court of Appeal
Allowed the request.
Comment
The proceedings had ended. Therefore, unlike in first instance, no special interest was required to access the documents. The parties also no longer objected. A logical decision.
14 April 2025
Local Division Düsseldorf, Seoul Viosys v Expert Klein
Cost proceedings
Background
Seoul won the infringement proceedings and initiated cost proceedings.
During oral argument, the parties had agreed on €100,000 in costs for the prevailing party. However, they later disagreed on whether this included court costs (€11,000), travel expenses, and the cost of a test purchase!
Decision of the Court
The Court decided that the €100,000 covered representation only. The Court therefore also awarded the additional costs.
Comment
- I have often advocated that parties should agree on costs. Here we finally see German representatives doing so — and it goes wrong because they are not used to it! If you make a cost agreement, be clear that it covers all costs the winner can claim!
- If, as here, such an agreement is made during oral argument, the presiding judge should ensure both parties understand what they are agreeing to.
- Ideally, the agreement is made a few days before oral argument. The representatives know what they’ve spent on representation and can reasonably estimate remaining costs. They know the court fees and what they’ve spent on travel — and even pizza (for late nights).