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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30 May 2025
Court of Appeal, Belkin v Philips
Penalty payments
Facts
- Belkin (found to infringe by the Munich Local Division) was ordered to communicate information in relation to the extent of the infringing acts it had committed since 28 December 2016. A penalty payment was ordered of up to € 50.000 per day of non-compliance.
- The decision was served on 13 September 2024, and on 20 September 2024, Philips notified Belkin that it intended to enforce the whole decision, setting 7 October 2024 as the latest date for receiving the information.
- Belkin asked CoA for suspensive effect on 23 September 2024.
- On 7 October 2024, Belkin informed Philips it could not provide the information but that it would do so one week after the decision of the Court of Appeal.
- The Court of Appeal refused suspensive effect on 30 October 2024.
- On 7 November 2024, Belkin’s representative asked for an extension to 15 November 2024 by phone. This request was rejected on 7 November (?), but in any event on 11 November 2024.
- On 11 November 2024, Philips asked the Court to impose penalty payments.
- On 12 November 2024, Belkin sent 16 boxes with invoices and a printed table.
- Philips argued the information was incomplete (no manufacturer prices were given) and asked to impose a penalty of € 20.000 per day as of 7 October 2024.
- The Local Division decided to impose a penalty of € 46.000 and divided the costs such that 75% is borne by Belkin and 25% by Philips. The Court held:
a. Providing information in paper form is okay if electronic form is not requested.
b. Information provided on 12 November 2024 was too late. Belkin gets the benefit of the doubt, but the information should have been given at the latest on 30 October 2024. Belkin should have started to prepare the provision of the information upon receipt of the decision.
c. The information is moreover incomplete.
d. The Court orders a penalty payment of € 500 a day as of 30 October for being late. On 25 November 2024, Belkin knew it was incomplete. From that day onwards, € 1.500 per day until 17 December 2024, as requested by Philips.
Both parties appealed.
Court of Appeal
- You can cross-appeal (See Art. 73(2) UPCA).
- Penalty payments can be requested or imposed on the Court’s own motion.
- You have to fulfil all general conditions for enforcement and there should be a culpable breach.
- Setting in a judgment a maximum per day and not a fixed amount is okay. The Court should consider the circumstances, proportionality, severity of the breach, duration and the defendant’s ability to pay.
- The order (R. 118.1 RoP) was served on 23 September.
- A request for suspensive effect does not suspend enforcement.
- You must get a reasonable period to provide information. From 23 September 2024 until 7 October 2024 was too short.
- Clearly providing information includes providing the manufacturer prices, because it allows one to calculate damages.
- A punitive sanction requires fault. Defendant has to do what is possible and reasonable.
- Court of Appeal considers a period of 6-8 weeks to be reasonable. A period ending on 6 November 2024 therefore would have been reasonable.
- Result: € 40,000 instead of € 45,000!
Cross-appeal
- Philips did not appeal against the decision to end the period for penalty payments on 17 December 2024 instead of 24 December 2024 (when it received the manufacturing prices), so that cannot be awarded because it was not requested. Obiter dictum: the Court should have imposed a recurring penalty.
- The Local Division was right in finding that providing information in paper form was okay.
Comment
1. Much ado about nothing! The UPC gets € 5,000 less: parties have spent a lot of money on appeal!
2. However, many lessons to be learned:
A. for the Divisions:
a. If a party has to give information, destroy products etc., set a reasonable period for compliance after the execution of the judgment.
b. Set recurring penalties if you decide on penalty payments while the not obeying injunctions/orders continues.
B. for representatives:
a. If you do not want your whole office full with boxes, ask for information in electronic form.
b. Say nothing during telephone conversations without confirming by email (better: communicate by email).
c. Be very reasonable when you set time periods for complying with an order. Give a party preferably the possibility to ask for suspensive effect. It is also better for your client because if suspensive effect is granted he may have to send back all the received boxes!
d. If you want something additional on appeal (here: additional fines for the period of 17 September 2024 – 25 September 2024), you have to ask for it!
C. for clients:
Do you want to spend your money on these irrelevant issues which are only of interest to the lawyers?
2 June 2025
Court of Appeal, XSYS v Esko-Graphics
Preliminary Objection
Facts
- On 12 May 2023, the patent at issue was opted out, and on 26 August 2024 the opt-out was withdrawn. On 27 August 2024, Esko starts infringement proceedings covering also the period before 1 June 2023, as well as the period before and after the withdrawal of the opt-out of the patent.
- XSYS lodged a preliminary objection, stating that the Court has no jurisdiction in relation to acts before 1 June 2023 and with respect to the period that the opt-out was in place.
- The Local Division rejected the PO.
The Court of Appeal
- The Court refers to the scope of the UPCA. Art. 3 (c) UPCA states: “the UPCA shall apply to any European Patent which has not yet lapsed at the date of entry into force of this Agreement without prejudice to Art. 83”.
- The Court refers to Art. 32 UPCA (under chapter VI of Part 1 “international jurisdiction and competence”), which lacks any temporal limitation with respect to alleged infringements. The absence of temporal limitation is reflected in the object of the UPCA which is to avoid a fragmented market for patent litigation.
- Also Art. 3 UPCA lacks a temporal limitation of the competence of the UPC.
- The transitional provisions provide for parallel competence, but not for partial or limited competence of the two courts (i.e. the UPC and the national court).
- Also the reference to Art. 29-32 of the Brussels I bis Regulation which applies with respect to proceedings in national courts and in the UPC, shows that the situation of parallel proceedings is regulated, but nothing suggests that one of the two is not available during a certain period of time.
- There is also no retroactivity: at the time of deciding the competence of the Court, the Court applied the applicable provision at that date. Reference to the Court of Justice of the European Union (“CJEU”) is not necessary because in fact this is all an acte clair.
- The withdrawal of an opt-out means that the patentee brings the patent back under the (exclusive) competence of the Court. The provision does not provide for a partial of limited opt-out.
Comment
-
- I think this is a convincing decision, fully in line with the correct grammatical interpretation of the Articles of the UPCA, and especially also the correct teleological interpretation of the UPCA which is indeed to overcome difficulties in exercising patent rights caused by national boundaries.
- The only question I have is about retroactive effect. Quite frankly, I do not even see that at all. When we decided in the Netherlands on 1 January 1988 that only the District Court The Hague could decide patent cases, nobody argued that that was not possible with respect to infringements committed before 1 January 1988 for which at the time a different court was competent, because that would mean retroactive effect.
- The same is true if the procedural rules of a court change. Such new procedural rules are of course also applicable in cases with respect to infringements committed before the change of the procedural rules.
- Note that the Court very specifically states that this is not a matter of applicable law. Indeed, if there is a difference between UPCA law and national law, the Court, in my view, will have to apply national law with respect to infringements before 1 June 2023. That is a matter of material law and not procedural law, and except for specific provisions in the new Act these should not work retroactively.
2 June 2025
Local Division Munich, Heraeus v Vibrant
UPC_CFI_114/2024; UPC_CFI_448/2024
Procedural order
The JR
The JR who held the interim conference together with the Technically Qualified Judge, orders the claimant to submit a consolidated version of the claims including the auxiliary requests for all the UPC member states. The JR suggests parties to renew the dormant settlement discussions, and to try to reach agreement about the costs.
Comment
If I understand what has happened correctly, the defendant only invokes the revocation of the German part of the bundle patent which (again) would raise the interesting question whether that is possible. In my view, that goes against the goal of the UPC which is avoiding fragmentation.
2 June 2025
Local Division Düsseldorf, Versah v HaeNaem
Withdrawal
Facts
Before the end of the written proceedings, the claimant requests the withdrawal against defendant 2 (there are three defendants). Defendant 2 agrees also that each party bears its own costs.
The Court
The Court agrees, but states that claimant has to bear the court costs with respect to defendant 2.
Comment
I do not quite understand the decision as I did not think that there had been extra court costs because of defendant 2. There is, as I understand it, only one fee which the claimant has paid, independent of the number of defendants. Maybe the JR wants to make clear that the withdrawal against one of the defendants cannot lead to any reimbursement of fees.
2 June 2025
Local Division Munich, Biomarin v Ascendis
Scheduling
The Court
- No bifurcation, and request for a technical qualified judge.
- Biomarin complains that the vacation period ends on 6 January which leaves little time for preparation for an interim conference on 9 January 2026. The Court sticks to 9 January 2026.
- The Oral hearing is scheduled for 18 March 2026.
- Topics for interim conference to be suggested by 19 December 2025.
Comment
Very good scheduling between the end of the written procedure and the oral argument which makes it possible to order certain things to be done or commented on before the oral hearing. Quite strange that you cannot appear on 9 January 2026 because the “vacation period” ends on 6 January 2026 and so you have only two days to prepare. So these representatives stop working from 19 December 2025 to 6 January 2026? Judges apparently work after 19 December and we also published our “UPC Unfiltered” on 23 December 2024, 30 December 2024 and 6 January 2025!
2 June 2025
Local Division Düsseldorf, Roche v Tandem (6 defendants)
Settlement confirmation
- The JR reports about the settlement between the parties at the request of plaintiff and defendants 1 and 2.
- The JR orders the agreement to stay confidential.
- Each party bears its own costs.
Comment
The parties ask for confirmation (R. 365 RoP). This means that the Agreement now can be enforced as a final decision by the Court. The question is what does that exactly mean? Can you enforce the contractual obligations through execution of the agreement as a judgment? For instance if the agreement includes contractual penalties, can you just follow R. 118.8 RoP and then ask the Registrar to serve this on the other party to collect the contractual penalties and then to pay them to the entitled party?
3 June 2025
Local Division Munich, Swarco v Yunex
Intervention
Background
Dianming Technology requests to intervene in order to support the defendant. Yunex, the defendant, agrees. Swarco, the claimant, agrees as well, but asks the Court to require Dianming Technology to provide security for its costs for € 169.000.
The JR
- The intervention is allowed.
- Dianming Technology gets 10 days to react to the demand for security.
Comment
Dianming Technology probably is the manufacturer of the allegedly infringing products. I do not think that Swarco as a claimant is entitled to security. If Swarco starts litigation, it could have realized that Yunex would ask the manufacturer to hold it harmless.
The UPCA is clear: security can only be asked by the defendant, with the exception that, if the defendant lodges a counterclaim for revocation he can also ask for security for that counterclaim because he file such counterclaim in order to defend himself..
3 June 2025
Local Division Munich, FUJIFILM v Kodak
Order to provide information
Background
FUJIFILM obtained an injunction against Kodak.
The Court refused to determine a fixed time to provide information and to set a penalty for non-compliance, in order to keep flexibility if defendant should fail to provide proper information in due time. The Court also refused to order that the information to be supplied should be verified with a report of an independent accountant, because it felt that the possibility of severe penalties was enough to make sure that defendant supplied the right information.
Claimant now asked the Court to send a warming to the defendant that if the information is not supplied within three weeks, they would forfeit a penalty for up to € 30.000 for each day they would be late.
The Court
The Court refused the request, as the panel had explicitly decided not to set a fixed time and an amount of penalties.
Comment
- This is an understandable decision. The claimant tried to get the certainty that the Court had already refused to give him.
- What can be criticized is the decision of the Court in the judgment in the main proceedings. The Court should have set a period and fixed the penalty. In such proceedings, the claimant should in his Statement of Claim ask for a certain period to provide information and to ask for a penalty amount if the information is not (completely) delivered before that date. It is then for the defendant to argue that that period is too short (and the penalty too high), and for the Court to then make a decision so that the parties have certainty.
- In this case it was up to the claimant to decide what was a reasonable period for supplying the information. Claimant tried to kick the ball back to the Court but the Court returned the ball!
- As to the refusal in the main proceedings, to order a report of an independent accountant, I am also not convinced. How can the claimant find out whether or not the supplied information is correct? That is certainly not always possible. Such a report at least avoids further disagreements between the parties.
3 June 2025
Local Division Munich, Edwards v Meril