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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1 September 2025
Local Division Munich, Knapp v Becton
UPC_CFI_848/2024; UPC_CFI_612/2025
Extension of time periods
Facts
Due to issues with the CMS, the deadlines for the Statement of defence and the Counterclaim for revocation are different, resulting in different due dates for the Reply in the infringement case and the Defence to the counterclaim for revocation or potential Application to amend the patent.
The claimant requested an extension of time periods for all the submissions until 9 September 2025. The defendant agreed.
The JR
Granted an extension to 5 September 2025 because an extension until 9 September 2025 (as well as 6, 7 and 8 September 2025) would, due to the weekend, lead to a time schedule for the next statements that would leave insufficient time for preparing the interim conference, which is scheduled for 16 January 2026.
Comment
- A very good decision. Despite the parties having agreed, the JR wants to make sure that the planned time schedule can be met!
- This is all due to the fact that there are different workflows for the infringement and the revocation cases, and the formal checks by the Registry. In the Drafting Committee of the Rules, I always opposed these formal checks by the Registry, as they cost time, manpower and are in the end not necessary. If there is something wrong, the other party can raise it in the proceedings. I have also opposed the necessity of raising a Counterclaim for revocation. Why can you not raise the invalidity as an inter partes defence? In cross-border cases, where you only raise the invalidity inter partes, this now also leads to complications. However, I was outvoted every time! You win some, you lose some!
1 September 2025
Court of Appeal, Centripetal v Keysight
Discretionary review
Facts
The JR and, following a R. 333 RoP application for panel review, the panel of the Court of First Instance refused a request for further exchange of pleadings (R. 36 RoP).
On 27 August, Centripetal filed a request for discretionary review by the Court of Appeal (R. 220.3 RoP). Centripetal argued that the decision was manifestly wrong because Keysight had changed its product and wanted the Court to take this into consideration.
The JR of the Court of Appeal
Denies the request, stating that you always have the possibility to bring separate proceedings against newly released products.
Comment
- When do representatives realize that a review of an order of the JR in first instance (R. 333 RoP) and a subsequent request for discretionary review by the Court of Appeal can only be successful in very exceptional cases?
- The argument that the decision of the Court of First Instance is manifestly wrong and deprives the patentee of an effective remedy is not convincing, given that the decision fully recognizes the fact that the issue of a new infringing product was raised only four months after its release.
- Why continue to have representatives spending their client’s money and the precious time of the Court on requests with zero chance of succeeding?
1 September 2025
Local Division Paris, Emporia v Seoul
Strawman
Facts
In a preliminary objection, the defendant Seoul asked the Court to dismiss the case because an infringement case relating to the same patent was already pending between the same parties. Seoul argued that In fact, Emporia acted as a strawman for the defendant, ex-pert Klein, as Emporia delivered the allegedly infringing products to ex-pert Klein. The Counterclaim for revocation had been dismissed by the Düsseldorf Local Division.
The Court
A straw company is characterized by its lack of effective operational activity. In this case, there are two companies with their own business activities.
The Court rejects the preliminary objection by Seoul.
Comment
This is a logical decision. The patent was not revoked by the Düsseldorf Local Division. This does not mean that a different company cannot now initiate revocation proceedings based on perhaps better prior art or better arguments. In this case, Seoul could have avoided the action by Emporia by not only suing ex-pert Klein in Düsseldorf but also Emporia its supplier of the infringing products. However, that would not have excluded the possibility of another third party starting revocation proceedings.
2 September 2025
Court of Appeal, CeraCon v Sunstar
Amendment of case
Facts
- Infringement proceedings lodged by Sunstar against CeraCon.
- CeraCon filed a Counterclaim for revocation.
- On 8 May 2025, CeraCon filed an Application for leave to amend its case with an additional ground of invalidity, namely novelty based on a patent application published in 2021.
- The JR of the Mannheim Local Division rejected the application on 6 June 2025. After review, the panel of the Court of First Instance rejected the application on 8 August 2025. Leave for appeal was rejected by the Mannheim Local Division on 29 August 2025.
- CeraCon filed a request for discretionary review (R. 220.3 RoP) on 27 August 2025.
The JR
The request is dismissed as the decision is not manifestly wrong. The Division is right that it is no excuse that the service provider instructed for the prior art search did not find the document, which was only found later by the patent attorney dealing with the case.
Comment
- R. 263 RoP is clear: leave should not be granted if you could have raised the new argument earlier acting with reasonable diligence, and/or if the other party is unreasonably hindered by the amendment. The JR correctly stated that the presence of one of these grounds alone has to lead to refusal of the request.
- The case highlights the dangers of relying on service providers. The fact that the patent attorney found the novelty destroying document shows that the search was not conducted diligently. CeraCon should have realized that this was a hopeless fight. If it would have started separate invalidity proceedings immediately in May based on the novelty destroying document, that may have been a better strategy.
2 September 2025
Nordic-Baltic Regional Division, Edwards v Meril
Rectification?
Facts
On 21 July 2025, the Court decided that the patent as amended was valid and infringed.
The Court ordered Meril to bear 100% of the reasonable costs of the claimant in the infringement proceedings, and to bear 75% of the costs in the revocation proceedings.
Meril requested a rectification of the decision and to include in the cost order that Edwards has to bear 25% of the costs of Meril in the revocation proceedings, arguing that omitting this addition was an obvious oversight.
The Court
This was no oversight. This was intended: Meril has to pay for its own costs in the revocation proceedings.
Comment
- If you read the decision, it appears that the amendment to claim 1 was a very minor change and that Edwards dropped the dependent claims. It is therefore clear that, in fact, there was an almost complete victory for Edwards.
- It seems that Meril was not very strong in math. Meril stated that they should have been awarded 25% of their own costs. To keep things simple, let us assume that both parties spent the same amount on costs. In that case, the net result would have been that Edwards would have received only 50% of its costs. This was clearly not in accordance with the Court’s finding that Edwards was largely successful in the revocation proceedings.
- The Court could also have decided that Meril had to pay 87,5% of the Edwards’s costs and Edwards 12,5% of Meril’s costs. Assuming the costs of both parties were the same, this would not have made a difference, but would it have made Meril happier?
2 September 2025
Local Division Munich, Shanghai v Longi
UPC_CFI_119/2025; UPC_CFI_401/2025
Stay
Facts
All parties except for defendant 4 asked for a stay because of settlement discussions, and want an order that, upon resumption of the proceedings, the claimant is given the full two months for its Reply and Defence to the Counterclaim for revocation. They also requested that the dates for the interim and oral hearings be cancelled.
Regarding the defendant 4, they asked for a stay for reasons relating to the proper administration of justice.
The JR
Grants the request.
Comment
The very busy Munich Local Division is understandably happy to agree. In general, the Court will grant such request, but I add a small warning. The Court is not obliged to agree, and it may not do so, for instance, a few days before the oral hearing which at that time they have prepared. In such case, parties have to settle before the hearing or have the hearing taken place (which of course does not prevent them from settling after the hearing). It would be understandable that a Court does not want to run the risk that they have to prepare a second time for a hearing.
3 September 2025
Local Division Düsseldorf, Hewlett-Packard v Zhuhai and Andreas Rentmeister
Preliminary Injunction
Facts
HP filed an application for a preliminary injunction (“PI”) against Zhuzai, a Chinese company that manufactures and offers cartridges for inkjet printers in the UPC territory.
Rentmeister sells the same cartridges.
The request has not yet been served on Zhuzai.
The representative of Rentmeister informed the Court that they had reached an agreement with HP, whereby they would not appear in court and HP would withdraw its demand for interim damages.
The Court
- Decides in a reasoned decision on the basis of the statements of the claimant that it is more likely than not that the two invoked patents are infringed and not invalid, and that there is urgency and necessity!
- The Court holds that it is not obliged to issue a default judgment as this is not mentioned in the Rules of Procedure regarding PI’s, and it is also undesirable because a party can lodge an application to set aside a default decision.
- The Court grants the injunction.
Comment
- I do not understand why no PI is granted against the Chinese defendant which simply can continue to offer cartridges on the internet also for UPC customers. The last paragraph of art. 15 of the 1965 The Hague Service Convention makes that possible. In The Netherlands, this article has always been interpreted as making a decision in PI proceedings possible as soon as the writ of summons (in the UPC “Statement of Claim”) have been sent to the Central Authority. Of course, the Court should make sure that the defendant knows about this and when the PI proceedings take place.
- The decision shows that, even when a defendant agrees with the Statement of claim, this does not necessarily mean that the Court will automatically grant the claim. On the contrary, as we have seen in other iesefault situations, the court also in this case judges if the claim is justified on its own accord.