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.
Interested in more of this? Stay tuned and subscribe here for weekly updates.
On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on Spotify or Apple Podcasts.
15 June 2025
Local Division Düsseldorf, Headwater v Samsung
Request for security of costs
Facts
The defendant asked for security of €400,000 because (1) the claimant is based in Texas and there are no international treaties between the US and the EU about enforcing judgments and (2) the claimant is a Non-Practicing Entity (“NPE”) and there is no publicly available information about the claimant.
The claimant argues that the US system is safe and reliable, and there is no insolvency risk because of the 96 patent families it holds worldwide.
The Court
The Court considers that the defendant did not prove that enforcement in the US is unduly burdensome.
The fact that the claimant is NPE is as such insufficient to give rise to a risk of insolvency. The claimant generates license income.
The Court therefore dismisses the request.
Comment
The lesson is that having to execute a cost order in the US is as such not enough to justify a demand for security for costs, and the same is true for the fact that the claimant is an NPE. You have to put forward credible, concrete facts from which it becomes clear that there is a serious and realistic risk that you will not be able to recover your costs.
In this case in which the claimant also has 96 patent families worldwide including 59 patents and applications registered at the EPO, some of which apparently generate license income, the whole request had – in my opinion – no merit as there were more than enough assets already in the UPC area.
16 June 2025
Local Division Düsseldorf, 10x Genomics v Curio
Claim construction
Background
Claimant had sued defendant in Preliminary Injunction (“PI”) proceedings and had partly prevailed.
The Court held claim 1 not infringed and claim 14 as infringed. The appeal of the claimant against the PI order had been withdrawn. This is the main case.
The Court
The Court confirms the PI decision.
The Court cites among others Nanostring and Hanshow (UPC_CoA_1/2024 and CoA 768/2024) for claim interpretation.
The Court holds that a purely functional interpretation is not acceptable under Art. 69 EPC.
The Court grants all the secondary measures except publicity of the decision because defendant did not specifically object to a recall and destruction order.
Comment
- Although I agree with the Division’s decision, I find it somewhat unsatisfactory that the same panel hears both the PI case and the case on the merits. Once the Court has already given a detailed decision in the PI proceedings, it seems particularly difficult to convince them that that decision was wrong.
- In this case the Court refers even specifically to what it already has decided during the PI proceedings. See e.g. consideration 61: “As the Court has also already established in the PI proceedings etc.”.
- Maybe it would have been wiser for the plaintiff to have pursued the appeal of the PI and have a few fresh eyes looking at their arguments with respect to the infringement of claim 1.
- Another solution may be to start the case on the merits in another (competent) Division.
- The Court in Düsseldorf is very explicit in refusing any role of the prosecution file or of prior art not mentioned in the patent with respect to the interpretation of the claims. This is in my view a view which goes against the views of most jurisdictions in EPO countries and leads to angora cat tactics and accepting a claim interpretation such that it might cover something already known in the prior art or non-inventive over the prior art. The arguments that it is not mentioned in Art. 69 EPC and legal certainty sound hollow. This approach leads to granting exclusivity for something which does not deserve it, or it rewards dishonesty by allowing a patentee to obtain a patent with a limited claim meaning and then try to remove a competitor from the market by giving that claim a broad interpretation. As to Art. 69 EPC, even the Court accepts that it refers to the description. Like the claim, the description is also language which has to be interpreted. So, certainly the history of such language can play a role, and that history can often be found in the filewrapper.
16 June 2025
Local Division Hamburg, Steros v Otec
PI proceedings
Facts
- Steros seeks a preliminary injunction against Otec.
- Claim 1 (for the disputed part) reads: a set of solid electrolyte particles, comprising solid particles that retain a conductive solution (…) and a non-conductive fluid immiscible in the conductive solution < > the non-conductive fluid when being at rest at room temperature non-significantly conductive.
- Defendant argues that it uses already from before the priority date a set of solid electrolyte particles which do not comprise a non-conductive fluid (that being the crux of the invention) but a conductive fluid and claims (among others) non-infringement and invalidity.
The Court
- The Court repeats the principles of claim construction from, among others Nanostring.
- The Court finds infringement despite the argument of the defendant that the liquid it has been using is an emulsion which is conductive.
- Although the Court seems to agree that an oil-in-water emulsion is conductive (unlike a water-in-oil emulsion mentioned in the description as a non-conductive fluid), it finds infringement, arguing that the oil as such is non-conductive.
- With respect to the alleged invalidity because defendant already publicly used his product, the Court states that for prior public use you have to prove as a defendant (which invokes the invalidity) that all the elements of the claim were present in the alleged prior (public) use.
- The Court holds that that is not the case.
- The Court states that in the weighing of interest that if the invention opens a new market and the infringer enters that market, then all the transactions of the infringer are lost opportunities for the claimant.
- Security for the execution of the PI order requires a reasoned application by the defendant.
Comment
- I do think that every person who knows something about patents would find it strange if a patent is given a scope of protection which includes products already publicly sold at the priority date.
- Such result can be achieved by giving a claim element (here non-conductive fluid) a meaning which includes certain conductive fluids and/or by using different interpretation of a claim element for invalidity and infringement purposes (which leads to so-called angora cats).
- The decision is a confirmation that also in PI proceedings (except ex parte) it will be very difficult to avoid an injunction by arguing the balance of interests, and even obtaining a security order is very difficult.
- In principle, I agree with such strict application because it is important that you can enforce patents in an effective way, and it is also in line with the goals of the Enforcement Directive: high level of protection.
- However, such strict application are only acceptable in PI proceedings if PI decisions are also almost always correct, which means that “the more likely than not” criteria issuing PI orders have to be taken very seriously and also that not all cases are fit to be dealt with in PI proceedings.
- As an example: In this case, the Court states rightly that for prior public use you have to prove that all claim elements are fulfilled in the prior use. That is as such correct, but apart from the fact that (see Nanostring) you should of course use the same claim interpretation in infringement and invalidity. In my view, in PI proceedings you should be more liberal with the standards of proof for public prior use than in proceedings on the merits, also realizing that a small difference may still lead to invalidity because of lack of inventive step.
16 June 2025
Local Division Munich, Esko v XSYS
Stay of proceedings
Facts
Both parties ask for a stay in order to allow fruitful settlement discussions after the Claim, Defence/Counterclaim, and Amendment of the claims of the patent were filed.
Parties agree that neither party shall request resumption of the proceedings without the other’s consent prior to three months after the oral proceedings of the Board of Appeal.
The Judge-Rapporteur (“JR”)
The JR grants the request.
Comment
The Court may stay proceedings. I think that if such a request is granted, parties can no longer expect early hearing dates or a decision within six weeks, and such cases should not count for the statistics about the duration of UPC proceedings.
17 June 2025
Court of Appeal, Knaus Tabbert v Yellow Sphere
Inadmissibility
Background
In first instance, Yellow Sphere obtained an injunction c.s. against Knaus Tabbert. Knaus Tabbert appealed and asked for suspensive effect, or suspensive effect of the recall, or that the Court of Appeal would impose security for executing the judgment (with respect to these orders).
The Court of Appeal rejected the request on 21 May 2025.
Knaus Tabbert files a R. 9.1 RoP request (“Gegenvorstellung“) in which it basically disputed the correctness of the Court’s decision.
The Court of Appeal
- The request is inadmissible because R. 9.1 RoP is for requests for procedural measures.
- The Court stated that even if admissible, the submission would not have been successful.
Comment
- It is quite straightforward that R. 9.1 RoP cannot be used as a kind of motion to reconsider (such as known in the US).
- The decision is a hard lesson for German representatives who believe they can simply rely on German law concepts. There may be many cases in Germany, but that does not mean that the UPC is a German system. In the UPC (a frontloaded system) you have to bring your arguments in first instance and not after you lost as new arguments in a request for suspensive effect.
- It is a mistake to think as a defendant during the first instance proceedings that you will win and therefore do not pay attention to all the measures (such as recall and destruction) if you lose or about the bad financial situation of the patentee which if you win on appeal still will not be able to pay the damages. If the patentee’s financial situation is uncertain, request security for costs and for any damages caused by enforcement pending appeal. Moreover, you should try to argue convincingly that measures such as recall and destruction are unnecessary, do not make sense, and/or are not proportionate, and if you know that there will be a judgment in 6 weeks, think about possible scenarios to limit the negative consequences of an unfavorable decision.
- The UPC does not know “a request for reconsideration” after you have lost proceedings!
17 June 2025
Local Division Milan, Progress v AWM/Schnell
Results interim conference
The Judge Rapporteur (“JR”)
- The JR tried without success to settle.
- Decision with respect to the allowability of further auxiliary requests after the defence against the counterclaim for revocation is postponed to the oral hearing.
- Requests of parties (for order to produce evidence resp. translation of documents) have been withdrawn.
- Legal costs: JR gives 15 days extra to agree.
- The JR gives practical instructions (such as when to send in slides) for the oral hearing.
Comment
This shows again how useful an interim conference can be and that this (new) element of the UPC proceedings should be taken seriously, which is difficult in the (too) busy German Local Divisions as it effectively requires the JR (or the Court) to prepare the case twice. As stated more often: a better spread of the cases over all the Local Divisions would be better for the UPC, and if representatives are not prepared to do so, they should be “forced” to do so by being advised to file elsewhere if the capacity of a certain Division is reached. If the “advice” is not followed, a case will take (far) more than 14 months
18 June 2025
Local Division Düsseldorf, Roche v Tandem
Confidential information
Facts
Claimant Roche and defendant no. 6 (Rubin) have concluded a settlement agreement and want the agreement to be treated as confidential by the other defendants 1-5.
The JR
After repeating all relevant EU, UPCA provision and applicable Rules, the JR grants the request. The other defendants are obliged to keep the confidential parts of the agreement confidential, and if not, the Court may impose penalty sums.
Comment
Note that the other defendants know the contents of the settlement agreement. It is also conceivable that the claimant might wish to settle with one defendant without revealing the terms to the others. That, in my opinion, can easily be achieved by the claimant filing a withdrawal request with respect to that defendant (R. 265 RoP).
19 June 2025
Court of Appeal, Alexion v Samsung
Rehearing
Facts
Alexion lost a PI application because the Court concluded that there was not enough certainty that the patent was valid.
The Court of Appeal confirmed. Alexion requests a rehearing alleging fundamental errors, namely (1) the CoA applied a new standard and (2) based its decision on incomplete facts.
Court of Appeal
- The Court of Appeal rejects the appeal because there is no fundamental procedural defect. The Court explains that the UPC knows two instances for a decision, and only when the specific circumstances of Art. 81(1) UPCA are met, there will be a rehearing, not when the judgment contains mere errors.
- The Court of Appeal sets out the role of the parties and the Court in proceedings. The parties put forward the facts. The Court evaluates the evidence and applies the law (e.g., whether there is infringement).
Comment