# News Detail Share now [](https://www.linkedin.com/uas/login?session_redirect=https%3A%2F%2Fwww.linkedin.com%2FshareArticle%3Fmini%3Dtrue%26url%3Dhttps%3A%2F%2Fhoyngrokhgroup.com%2Fnews-insights%2Fdetail%2Fupc-unfiltered-by-willem-hoyng-upc-decisions-week-32-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2032%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 32, 2026 10 August 2026 UPC Unfiltered News Hot Topic News Below, [Prof. Willem Hoyng](https://hoyngrokhgroup.com/our-team/legal-experts/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**](https://mailchi.mp/8fbd8890d03b/upc-unfiltered-by-willem-hoyng) for weekly updates. Find all decisions, commentary and more on our [**UPC Intelligence Platform**](https://upcintelligence.hoyngrokhmonegier.com/). 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**](https://open.spotify.com/show/53wwzF7LNSqqouR0wzXgJD?si=ae84739b09904ee1&nd=1&dlsi=71b6a174bdbd4f32) or [**Apple Podcasts**](https://podcasts.apple.com/us/podcast/willem-hoyngs-upc-unfiltered-ai-podcast/id1806092389). #### **3 August 2026** #### **Court of Appeal, Kodak v Fujifilm** [UPC\_CoA\_28/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/6095a3b1-3074-416f-beb0-d41c87279916.pdf) ***Penalty sums*** **Facts** 1. On 20 January 2026, the JR ordered Kodak to pay a penalty of € 1,720,000. This order was confirmed by the Court of First Instance (“CFI”). 2. On 16 February 2026, Kodak appealed. 3. The decision that Kodak had infringed, on which the penalty proceedings were based, was reversed on appeal. **The Court of Appeal** 1. Both parties (rightly) argue that there is no longer a basis for penalty proceedings referring to *Nanostring v 10X Genomics* (UPC\_CoA\_470/2023), which related to a preliminary injunction (“PI”) order. The same is applicable if a decision on the merits is revoked by the Court of Appeal. 2. The remaining questions are the value of the (enforcement) proceedings and the costs. 3. In case of an appeal by a defendant, the value of the proceedings remains the same as it is the interest of the claimant in having the decision upheld which determines that value. 4. Fujifilm’s interest in the penalty proceedings on appeal is not the amount forfeited by Kodak, but its interest in enforcing the decision. Fujifilm stated € 1 million. Kodak did not object and the CoA agrees. 5. Fujifilm is the losing party. The fact that Kodak’s behavior contributed to the costs of the enforcement is irrelevant, as there is no legal basis for considering Kodak’s behavior. There was no legal basis for the penalty order, and Kodak retroactively was not obliged to comply with any order. 6. Enforcing a decision pending appeal proceedings is at the risk of the party enforcing it. 7. The Court of Appeal: 1. set aside the (penalty) orders; 2. set the value of the proceedings at € 1 million; 3. ordered that Fujifilm bear Kodak’s legal costs; 4. ordered that already paid penalty payments are to be reimbursed. **Comment** 1. This all seems quite logical to me. If you win on appeal after losing in first instance, it means that everything what has been decided in first instance should be considered as having never happened. That means that there was never a basis for enforcement proceedings. So, they should have been considered as having never taken place and the Court has to return any penalty payment which has already been made. 2. The lesson is therefore that if you win in first instance and the other side appeals, you better wait until you have also won the appeal before starting enforcement proceedings. This, of course, does not prevent you from writing letters pointing out the non-compliance and reserving all your rights to start penalty proceedings and to claim further damages. I think that it is even necessary, to avoid being confronted later with the defence that your behavior led the defendant to believe that you agreed that a certain action or inaction was not an act of non-compliance with the first instance decision. 3. It is of course not satisfactory if, after a favorable decision in first instance, the defendant simply continues the infringement. However, that is of course also a very risky behavior because it may lead to the forfeiture of penalty sums after the appeal. On the other hand, the decision to make the declaration under R. 118.8 RoP and therewith enforcing a first instance decision also carries a risk. If the Court of Appeal overturns the first instance decision, you are liable for the damages suffered because of the compliance with the first instance decision by the other party. Finally, representatives should realize that preliminary (provisional) injunctions are immediately enforceable because R. 118.8 RoP is not applicable. So, if you do not want that (because you want to have, for instance, some room to negotiate after a favorable decision), you should ask the Court to rule that the PI is only enforceable after notification to the representative of the defendant. #### **3 August 2026** #### **Court of Appeal, Nera v Xiaomi** [UPC\_CoA\_692/2025; UPC\_CoA\_854/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/90bd0b1e-8c48-44bb-bcd1-4be39810cfcd.pdf) ***Settlement*** **Facts** 1. The Local Division Hamburg dismissed the infringement claim and invalidated the patent EP 2 642 632. 2. Nera appealed. 3. The parties settled and both filed an application under R. 265 RoP, agreeing with each other’s request and not claiming costs. **The Presiding Judge** The Presiding Judge decided as requested. **Comment** The result of the settlement is that the patent, which was invalidated in first instance, remains valid! #### **3 August 2026** #### **Local Division Munich, Julius Blum v Arturo** [UPC\_CFI\_675/2025; UPC\_CFI\_1340/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/3dd05448-e4a6-4822-b8a5-f491dfbed4ee.pdf) ***Interim Conference*** **Facts** 1. Infringement proceedings with respect to EP 3 392 438 were initiated on 28 July 2025. 2. The Interim Conference was held on 31 July 2026 3. The oral argument is scheduled to take place on 1 October 2026. 4. The JR and the Technically Qualified Judge participated at the Interim Conference. **The JR** The results of the Interim Conference are as follows: 1. Costs of Litigation were set at € 3.3 million for infringement and 1.5 times that for revocation as per the normal rule. 2. A settlement was not possible for the moment. 3. The parties reached an agreement on costs and settled on € 480,000 for costs for representatives. 4. The JR stated that Statement of claim is unclear in several points. 5. The parties withdrew their objections about late submissions. 6. For the moment, the JR did not find it necessary to hear witnesses. 7. The JR gave a preliminary view about certain claim elements. 8. The JR referred the parties, which were using the problem solution approach, to the case law of the Court of Appeal with respect to inventive step. 9. Both parties can react in writing (10 pages) to the remarks of the JR. 10. The defendant is allowed to arrange and pay for simultaneous translation (Italian-German). **Comment** 1. A hands on preparation of the oral argument. 2. The representatives of the parties are given some lessons about how to formulate the requests in the Statement of claim and with respect to the fact that we are not in the European Patent Office and the Court does not apply the problem solution approach. I sometimes wonder if representatives read the case law! 3. The case shows how unfair the language regime of the UPC is. We have an Italian defendant who has to defend itself in German in an international court. The defendant cannot ask for a change in language because the patent is granted in German. 4. Of course, the language rule should be that each defendant can ask to have the case heard in English. Unfortunately, during the negotiations for the UPCA, Germany and France decided differently with the immediate result that Spain (which proposed an all English system as a compromise) did not join. 5. The parties agreed on costs for the representatives. This means that (if parties cannot reach a further agreement) cost proceedings are still necessary for the travel costs etc. It is much better to agree on all costs. These further costs are normally a small percentage of the representation costs. So, just add 5 or 10% to an amount agreed for the costs for the representatives and avoid cost proceedings about (relatively) peanuts. #### **4 August 2026** #### **Court of Appeal, AMMS v Gilead** [UPC\_CoA\_121/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2be1bdfb-870b-4ddf-8fb1-9cde8af32cff.pdf) ***Leave for appeal / suspensive effect*** **Facts** 1. Gilead filed revocation proceedings with respect to EP 3 854 403. 2. The Central Division Milan revoked the patent and ordered AMMS to bear Gilead’s costs amounting to € 800,000 (as agreed by the parties). 3. AMMS asked to suspend the cost decision during the appeal of the main case or payment in instalments. The Central Division did not grant suspensive effect and ordered payment of the full amount within 4 weeks. 4. The Central Division ruled, among other things, that the automatic suspensive effect for revocation proceedings did not extend to the cost decision in such cases. **The Standing Judge of the Court of Appeal** 1. The Standing Judge of the Court of Appeal granted leave for appeal as the question of whether or not Art. 74(2) UPCA, i.e., the suspensive effect of an appeal against a revocation decision, also extends to cost decisions has not yet been decided. 2. Suspensive effect was refused because AMMS failed to demonstrate that its interest in not paying until the appeal exceptionally outweighs Gilead’s interest. **Comment** 1. Although I think that it seems pretty clear that the exception of Art. 74(2) UPCA (no suspensive effect for revocation decisions) does not apply to cost decisions (as the reason for the non-applicability of suspensive effect with respect to revocation decisions is not applicable to cost decisions), I fully agree with the Standing Judge that this should be resolved by the full Court. 2. The decision confirms that a request for suspensive effect during appeal is (almost) never granted. #### **4 August 2026** #### **Local Division Düsseldorf, OTEC v ANCA** [UPC\_CFI\_1536/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/78ca0031-bd04-4743-ba42-781bff075ebb.pdf) ***Settlement ex R. 365 RoP*** **Facts** 1. OTEC obtained and executed an *ex parte* evidentiary seizure and inspection order against ANCA during an exhibition. 2. The parties settled after the release of the report of the expert. 3. The parties asked the Court to confirm the settlement under R. 365 RoP. **The Court** 1. The Court confirmed the agreement, the text of which is redacted in the published decision. 2. The Court ordered that only the redacted text will be put in the register. **Comment** 1. As the parties requested to keep the agreement confidential, that is a request under R. 365 RoP. In my opinion, no further request, such as a request under R. 262.2 RoP as the Court seems to suggest (?), is necessary. 2. The advantages of the confirmation by the Court is that the obligations under the agreement are immediately enforceable as if they are contained in a decision of the Court. So, in case of non-compliance with an obligation, a party can start penalty proceedings (or demand that contractual penalties are paid to the aggrieved party if the agreement contains contractual penalties). #### **5 August 2026** #### **Local Division Düsseldorf, QIAGEN v bioMérieux** [UPC\_CFI\_181/2025 ; UPC\_CFI\_497/2025 ; UPC\_CFI\_516/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/511fac44-20bc-479c-b13a-000b68f0e2ce.pdf) ***Settlement*** **Facts** 1. On 28 February 2025, the claimant filed an infringement action. 2. On 10 June 2025, all defendants filed Counterclaims for revocation. 3. The oral hearing was scheduled for 3 September 2026. 4. On 4 August 2026, the parties informed the Court that they settled the case including the costs. 5. The parties filed a R. 265 RoP request indicating agreement with the request of the other party and asking for a return of 50% of the court fees. **The Court** The Court granted the request and ordered the return of 50% of the court fees. **Comment** 1. I note that the oral argument was set more than 18 months after the start of the proceedings. There was no reason for the claimant to file in the very busy Division in Düsseldorf. It is the responsibility of the representatives to not file in these busy Divisions. The result is that a Division gets overloaded and cannot have oral hearings within a year. 2. I also note that a month prior to the oral argument the written procedure was not yet closed (which costs the Court 50 % of the fees!). #### **5 August 2026** #### **Court of Appeal, Dolby/Vectis v Acer** [UPC\_CoA\_118/2026; UPC\_CoA\_119/2026; UPC\_CoA\_120/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/2d96d23d-6f7c-4ccd-b35a-436c64eda61c.pdf) ***Counterclaim / Suspensive effect*** **Facts** 1. Dolby started an infringement action against Acer. 2. Vectis intervened to support Dolby. 3. Acer filed a counterclaim for FRAND rate setting against both Dolby and Vectis (which managed a pool of SEPs to which the Dolby patent belonged). 4. Vectis argued that it could not be sued as intervener. 5. The JR and the Local Division The Hague did not agree with Vectis. 6. Dolby and Vectis appealed. 7. Dolby and Vectis asked for suspension of all proceedings until a decision on this pending appeal was handed down. In the alternative, they asked for suspension of the FRAND rate setting counterclaim and, more alternatively, the FRAND rate setting claim against Vectis. **The Court of Appeal** 1. It is not necessary to rule whether an intervening party can object to the UPC’s jurisdiction by Preliminary objection because, even if that would be the case, the Court of Appeal should not grant a stay as there are no exceptional circumstances. The Local Division will have to deal with the FRAND rate-setting counterclaim anyway and the decision was also not manifestly erroneous. 2. The Local Division only ruled that the objection was not admissible as a preliminary objection and therefore did not rule on international jurisdiction. 3. The Court of Appeal in the appeal proceedings may decide insofar as relevant: 1. whether the (rate-setting) counterclaim falls within Art. 32(1)(a) UPCA (“counterclaims concerning licenses”); 2. whether it was necessary to add Vectis as a party pursuant to R. 305 RoP; 3. whether, by asking for a declaratory finding, Acer lacks a legitimate interest because a performance claim is available; 4. whether Acer’s auxiliary requests (such as a request to determine “any terms the Court finds FRAND”) suffered material deficiencies, regarding the latter two, even assuming that these are part of the order at all and (therefore) part of this appeal. 4. The order is not unclear as Dolby and Vectis argue, because it is clear that the Court stated that a counterclaim could be raised against an intervener because the intervener was a party. In case the Court of Appeal would hold that this was not possible, then the Court would add Vectis as a party based on R. 315 RoP. Whether the latter is possible, will (if necessary) be decided in the appeal. 5. The Court rejected the arguments for a stay based on R. 295(m) RoP and R. 223 RoP. 6. Dolby is not adversely affected by the order of the Local Division and its appeal is therefore not admissible. 7. Dolby’s and Vectis’ requests for a stay are rejected. **Comment** 1. I think that it is pretty clear that Dolby has no (own) interest in the appeal and the Court of Appeal concludes, unsurprisingly, that Dolby’s appeal is not admissible. I do not understand why the order itself does not say so because now it seems that Dolby is still a party to the appeal while the Court of Appeal explicitly states that this fact alone (that Dolby’s appeal is not admissible) is already a reason to refuse a stay. #### **6 August 2026** #### **Local Division Munich, CA v Deutsche Telekom** [UPC\_CFI\_515/2026; UPC\_CFI\_1797/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/663bd6a7-9028-40c7-a09b-ab04c3e7b22e.pdf) ***Confidentiality*** **Facts** 1. The JR ordered confidentiality with respect to Exhibit B5. 2. CA requests review by the panel arguing that R. 262A.3 RoP was not complied with with regard to Exhibit B5. 3. The defendant only produced a redacted and unredacted extract of the complete document. 4. CA argued that the decision of the JR that it had been able to comment on the request for confidentiality under R. 262A.4 RoP was incorrect because it did not have access to the whole document. **The Court** 1. The Court held that unredacted (German “unbearbeitet”) does not mean that one cannot produce only an extract from a document and ask for confidentiality for a part of the extract. The underlying document is not a part of the proceedings. 2. R. 263A.3 RoP does not oblige a party to produce such document in the proceedings. 3. The Court confirmed the decision of the JR. **Comment** 1. This seems a logical decision. It is up to a party to decide what document it puts into the proceedings. 2. Of course, if a party produces only an extract or summary of a document, the other party may dispute the fact that the extract or summary is correct and it is then for the other party to prove that this is the case. 3. If the underlying document is only in the possession of the other party or a third party and contains specific evidence in support of the claims of a party, such party can ask, if all other requirements are fulfilled, for an order to produce evidence (R. 190 RoP). #### **6 August 2026** #### **Local Division Munich, Niche v ONWARD** [UPC\_CFI\_1569/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/708c70e0-720a-4993-a0fa-1976d1492b1d.pdf) ***Costs decision*** **Facts** This case concerns cost proceedings after first instance proceedings. **Decision of the JR** 1. The JR decided that, if you want a higher ceiling for recoverable costs because of extraordinary circumstances (such as complexity of the proceedings or the fact that more languages are used), then you have to do this with a formal and clear request. 2. A party is not entitled to send (further) submissions to the Court without the consent of the Court. 3. The JR awarded the ceiling of recoverable costs as the costs to be awarded are higher than the ceiling. **Comment** 1. A Dutch company sues a US company in a very busy German Division in German (and loses). You wonder why? 2. The US defendant does not ask for a change of language but proceeds in German and claims a higher ceiling for recoverable costs because of the use of more languages! As can be seen from the decision, also US attorneys are involved and a lot of translation was necessary. That seems all quite impractical! 3. The lesson for representatives is that, if you want a higher cost ceiling, you have to apply for that in your Statement of claim or, as the defendant, in your Statement of defence with a reasoned request. 4. Finally, the decision shows how important it is to agree on costs. Representatives have spent many hours on these cost proceedings and I cannot imagine that most judges enjoy this type of cases. For users of the system, these decisions are useless because the UPC allows representatives to avoid transparency with respect to their billing. **– All comments above are** [**Prof. Hoyng**](https://hoyngrokhgroup.com/our-team/legal-experts/prof-willem-hoyng "https://hoyngrokhgroup.com/our-team/legal-experts/prof-willem-hoyng")**‘s personal opinions –**