# 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-37-2026%26title%3DUPC%20Unfiltered%2C%20by%20Willem%20Hoyng%20%E2%80%93%20UPC%20decisions%20week%2037%2C%202026%26summary%3D "Linkedin") # UPC Unfiltered, by Willem Hoyng – UPC decisions week 37, 2026 14 September 2026 UPC Unfiltered News Unified Patent Court (UPC) 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). #### **4 September 2026** **Local Division Milan, Nixu v Amazon** [UPC\_CFI\_2434/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/b199d4f6-f6cf-4529-bc22-9d097d992b17.pdf) ***Consolidated defence dates*** **Facts** 1. The four defendants are sued by Nixu. The Statements of Claim are served on 29 July, 3 August and 11 August 2026. 2. The defendants request to file their consolidated defence on 11 November 2026 or alternatively a common date between 29 October 2026 and 11 November 2026. 3. The claimant did not agree and therefore no agreement could be reached on a common date. **The JR** All defendants belong to the same corporate group which means that they all knew about the Statement of Claim on 29 July 2026. So it is efficient and proportionate to set the date for the defence on 29 October 2026. **Comment** 1. At first glance, the JR’s decision to setting a three months term from the first service date for all defendants may be reasonable if the defence for all group companies is the same. But what if the defence is rather different, for instance because the infringing acts are different, which implies more work for the defendants than the work for one defendant? 2. Ideally, the parties would agree on a date, but the JR’s decision may make this more difficult, particularly in cases were all defendants belong to the same group. In such cases, the claimant will have no incentive to compromise. 3. The decision may also result in defendants no longer requesting consolidation, because if they do not request it, they can at least preserve the latter days for additions or different defences, especially for a particular defendant. That would be inefficient and counterproductive (also for the Court). 4. Therefore, what seems a rather logical and understandable decision may have undesired consequences. #### **7 September 2026** **Local Division Düsseldorf, fiskaly v SwissBit** [UPC\_CFI\_1332/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/4cd8637c-b105-40ac-b9d8-3e7f67973d0e.pdf) ***Review evidentiary seizure*** **Facts** 1. fiskaly is the patent holder of Unitary Patent EP 4 285 308 for “Securely registering a sequence of transactions”. 2. On 20 April 2026, fiskaly requested an evidentiary seizure and inspection order at the premises of SwissBit in Germany. 3. The Court granted the request ex parte. The expert rendered its report on 15 June 2026. 4. On 16 June 2026, SwissBit asked for a review of the order. **The Court** 1. The Court first outlines how they must handle a request for review: 1. the Court must first judge whether or not it has been given all the relevant information by the applicant, especially whether the applicant has given all information that could be relevant for the decision of the Court to grant an ex parte order; 2. thereafter, the Court will have to consider all the arguments and evidence put forward by the parties in order to judge whether, at the time of the grant of the request, such a grant was justified; 3. for granting the measure, it is necessary that the infringement is plausible. The burden of proof is not very high. 2. On the basis of the facts put forward, including in a party expert declaration, the Court decides that there is sufficient probability of infringement, also because SwissBit refused to have its product checked by a neutral expert during license negotiations. Finally, SwissBit had filed a protective letter. However, that protective letter contained no arguments regarding non-infringement. 3. The fact that it is also possible to use a method without infringing is not relevant. 4. It is clear that the necessary information for establishing infringement could not have been obtained in another way than by a seizure. 5. In view of the fact that SwissBit’s head office is in Switzerland, the Court concludes that there is a possibility that evidence will disappear. Although a test purchase would have been possible, it would not have provided the necessary (software) information. 6. The fact that SwissBit is on the market since 2025 is irrelevant, as an application for an evidentiary seizure does not require urgency. What is necessary is establishing whether or not an infringement case would be urgent, which is the case here as the license negotiations failed. 7. The request is also proportionate, as obtaining the evidence via Article 59 (an order to produce evidence) would carry the risk of a refusal due to the possibility of self-incrimination. Furthermore, in such a case, SwissBit would have been responsible for selecting what would be handled as evidence. **Comment** 1. In my opinion, the Court has clearly motivated why the (invasive) measure was necessary to obtain the necessary evidence, and also that there was the necessity of an ex parte measure, as there was a risk that the evidence would no longer be available without ex parte measures. 2. The practical lesson is that you can also be confronted with an ex parte evidentiary seizure during license negotiations, and that if you file a protective letter without any non-infringement arguments then that is not helpful! To avoid an evidentiary seizure, extremely strong evidence (in principle, *prima facie* lack of novelty) is required to overcome the presumption of validity. #### **7 September 2026** **Local Division Milan, Abbott v Sibio** [UPC\_CFI\_1086/2026](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/a1eb855b-8c14-45ff-90b6-5076feb4c0a6.pdf) ***Preliminary measure*** **Facts** 1. Abott filed preliminary injunction (“PI”) proceedings against Sibio on the basis of EP 3 960 072 for “Compact on-body physiological monitory device” against the glucose monitoring device of defendants. 2. The Opposition Division of the European Patent Office filed a preliminary opinion in the pending opposition. 3. The Local Division in The Hague already granted a PI against different defendants on the basis of the patent. **The Court** 1. After stating that the patent is a third-generation divisional application, the Court formulates the problem for which the patent provides the solution (a fully integrated sensor insertion assembly). 2. The Court accepts the respondents’ new arguments with respect to the infringement of claim element 1.6, which were filed in respondents last submission. The Court argued that claim interpretation is a matter of law, and that the Court of Appeal will deal with it in appeal. This would mean that if the Court of First Instance does not deal with it, the respondents have *de facto* one instance. 3. The Court states that the grounds for invalidity are the same as in the opposition proceedings. 4. With respect to sufficiency of disclosure, the Court states: “The UPC Court of Appeal has defined the legal standard to be applied when assessing the requirement of sufficiency of disclosure (UPC CoA no. 528/2025, decision of 25 November 2025).Sufficiency has to be examined on the basis of the patent as a whole, thus on the basis of the claims, description and drawings, from the perspective of the skilled person with his common general knowledge at the filing or priority date. The test to be applied is whether the skilled person is able to reproduce the claimed subject matter on the basis of the patent without any inventive effort and without undue burden. An invention is sufficiently disclosed if the patent specification shows the skilled person at least one way – and in case of functional features: one technical concept, i.e., one workable technical principle – of performing the claimed invention. Where a claim contains one or more functional features, it is not required that the disclosure includes specific instructions as to how each and every conceivable embodiment within the functional definition(s) should be obtained. A fair protection requires that variants of specifically disclosed embodiments that are equally suitable to achieve the same effect, which could not have been envisaged without the invention, should also be protected by the claim. Consequently, any non-availability of some embodiments of a functionally defined claim is immaterial to sufficiency, as long as the skilled person through the disclosure is able to obtain suitable embodiments within the scope of the claim.” 5. The Court holds that, in this case, the patent itself described alternative ways to implement the functional step. The Court also stated that the inventive step reasoning of respondent itself shows that there are alternative ways to perform the functional claim. 6. The Court finds no “intermediate generalization”. 7. The Court finds that the patent was inventive. 8. The Court also finds infringement and does not accept the limited claim interpretation of respondents. 9. The Court grants the PI. **Comment** 1. In this case, we see the tension between the front-loaded character of UPC proceedings in general, the (relative) speed of PI proceedings and the fact that infringement (and invalidity) questions are questions of law. The latter means that, if one party provides reasons that there is an infringement and these are not contested because the arguments are filed late and therefore not admitted, the Court cannot automatically accept that there is infringement, as it will have to judge whether the law is applied correctly (ius curia novit). The problem is that the Court itself can come to the same conclusion as the defendant in the late and disallowed arguments, and a party confronted with such an outcome will not believe that the Court would have reached that conclusion without being prompted by the late arguments. Even if the other party believes that the Court would have come to the same conclusion without the refused arguments, in my opinion, the Court should not issue surprise decisions (i.e. decisions that are not based on the parties’ arguments, but on the correct application of the law as seen by the Court). However, accepting all late arguments with respect to the infringement or validity to give defendant thereafter the possibility to react, would mean the end of the front-loaded character. 2. In my view, late arguments should as a general rule be refused (unless such arguments could not have been made earlier). However, if the arguments pertain to a legal question and the Court may come, on its own motion, to the same view as defendant through the late arguments, the other side should always get the possibility to respond. This avoids a “surprise” decision by the Court. The Court should at the latest before the oral hearing ask the defendant to comment during the oral hearing. 3. What the Court says about sufficient disclosure (cited above at 4) is, in my opinion, generally correct. Only if the invention lies (also) in the (very specific) way the function is performed and no other ways for performing that function are available without undue burden, the claim should be restricted to that specific way and not cover ways of performing that function found only later. In situations as in this case, where more ways are available and even indicated in the description, a different new and inventive way of performing the invention would still be covered but entitled to an own (but dependent) patent. #### **9 September 2026** **Local Division Mannheim, Ericsson v Transsion** [UPC\_CFI\_1570/2025](https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/841bf525-3d68-4353-9c7b-e5bde9cf7584.pdf) ***Settlement*** **Facts** 1. The parties settle the case. 2. The claimant files a request for withdrawal. 3. All the defendants agree except defendant 8 who did not comment and defendant 7 who did not file an appearance. 4. The claimant requests reimbursement of 50% of the court fees. **The JR** 1. The JR allows the withdrawal because defendant 8 did not contest, and defendant 7 did not file an appearance, suggesting that it is apparently not interested in the proceedings. 2. The JR orders 50% reimbursement of court fees. **Comment** A settlement is reached before closure of the written proceedings and the claimant files a request for reimbursement together with the R. 263 RoP request. That is the way to do it. Apparently, this SEP case did not give the Court more work than usual. The JR applies the standard of a 50% fee return. **– 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 –**