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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28 April 2025
Court of Appeal, Juul v NJOY
Stay of proceedings
Background
Juul’s patent has been revoked by the Central Division in Paris. Juul appealed and asked for a stay until the decision of the Board of Appeal in opposition proceedings.
NJOY agrees.
The Court of Appeal (“CoA”)
- The CoA refers to R. 295(a) RoP (Court can stay when a decision in opposition proceedings is given rapidly) and to R. 298 RoP (stay is possible if opposition proceedings are “accelerated”).
- The CoA refers to its decision in Carrier v Bitzer (see Hoyng, Case Law Court of Appeal of the UPC 2023-2024, p. 37).
- The CoA contacted the Board of Appeal, which stated that the hearing will be on 20 October 2025. The CoA calculated (as the grounds of appeal had not yet been lodged in the appeal proceedings) that the decision of the CoA could be expected around the same date.
- The CoA states that there are no pending infringement proceedings or other circumstances which plead against a stay; on the contrary, the patentee Juul agrees
- Stay granted.
Comment
- An important decision for representatives: the fact that parties agree does not necessarily mean that a stay is granted. That is a very important and, in my opinion, fully understandable message. The UPC promises rapid decisions, also on appeal. It is not up to only the parties to decide on stays or, for that matter, on extensions, as there is a general interest in decisions within a reasonable period. In the case of a revocation action, that is even clearer as it is an actio popularis: it is in the general interest to have certainty about which exclusive rights must be respected. The same is true, however to a lesser extent, for infringement actions which define the scope of such exclusive rights.
- In this case the decision is understandable as it is very well possible (especially as the patent has already been revoked in first instance) that a lot of double work would be done for nothing if the Board of Appeal would revoke the patent. Moreover, there are no infringement proceedings pending and parties agree.
- So, in this case, there are very clearly (exceptional) circumstances, but the general rule remains valid: in principle, no stays, not even in so-called “accelerated” opposition proceedings, which in general are not so accelerated, although the EPO is improving. As to the latter: why can the 9-month opposition term not be shortened to three months? The prosecution of a patent is fully transparent, and competitors can therefore start doing prior art searches, etc., even before the grant. So three months seems more than enough to draft a decent opposition. If the long terms for response are also shortened, then it should be possible (with enough manpower at the EPO) to truly shorten opposition proceedings. The UPC shows that it is possible with hard-working, capable judges and representatives, many of whom by now understand that extensions, etc., are something of the past!
28 April 2025
Local Division Hamburg, Nera v Xiaomi
Auxiliary requests
Facts
Xiaomi asks the Court to ignore the arguments with respect to selected auxiliary requests of the patentee in the patentee’s reply to Xiaomi’s answer to the request to amend the patent.
Xiaomi is of the opinion that these arguments were not made in the application to amend the patent. In fact, the patentee only made arguments in its reply for the first time as to why auxiliary requests 19/19A and 22/22A would be valid, which is against R. 30(b) RoP (which requires an explanation that the auxiliary requests meet the requirements for a valid patent) and against R. 32 RoP (in the reply, you can only react to what is raised in the defence).
The Judge-Rapporteur (JR)
The patentee has followed the Rules, as auxiliary requests 19/19A and 22/22A had already been filed in the request to amend the patent. In the reply, the patentee only made further explanations in reaction to the defendant’s answer.
Comment
- I think the basic problem in the case lies in the fact that the Court apparently did not apply R. 30.1 sub c RoP, which says that the number of auxiliary requests should be reasonable in number in the circumstances of the case.
- The Rule was proposed by the two UK members in the Drafting Committee, as in UK litigation, a patentee can only propose a limited number of auxiliary requests. All members in the Committee agreed that we did not want an EPO practice with numerous auxiliary requests.
- In this case, I count already 60 (and – that is not very clear – maybe far more because of combinations among them). In my view, that is not a reasonable number.
- The Court, if it allows a high number (which in my view is not in accordance with R. 30.1 sub c RoP), should then at least require, for each such request or request which is a combination of requests, strict compliance with R. 30.1(b) and not some general statements, and not create a situation where after the defendant’s defence to the application to amend, the patentee can cherry-pick one of the numerous auxiliary requests.
- In my opinion, the (early) interim conference is an excellent instrument to resolve this kind of problem, and if held immediately after the written procedure, it gives the necessary flexibility without endangering the date for oral argument.
- To avoid any misunderstanding: defending the granted claims or part of the granted claims does, in my opinion, not require an auxiliary request and an explanation why they are valid. These are all granted claims, and it is up to the defendant (the claimant in revocation proceedings) to prove their invalidity and for the patentee to show that such arguments are wrong.
28 April 2025
Local Division Milan, Ericsson v Asustek
Confidentiality Regime
Facts
Asustek filed identical requests under both R. 262A RoP and R. 262.2 RoP.
Ericsson did the same, but stated that its request concerned license agreements with competitors of Asustek and that for that reason, it wants an “external-eyes-only” regime (i.e. no employee of Asustek should see the information).
Ericsson contested Asustek’s request to name one representative of Ericsson who would be responsible for leaks by Ericsson’s legal team.
Asustek resisted an “only external eyes” regime.
The JR ordered the parties to try to come to an agreement.
Parties agreed except for the “external eyes only” regime.
The Judge-Rapporteur (JR)
- The JR followed the agreement between the parties.
- The JR referred to the decision of the CoA in Daedalus v Xiaomi (UPC_CoA_621/2024 https://www.unified-patent-court.org/sites/default/files/files/api_order/A5817509F636099D4052F585D696A9AD_en.pdf) which stated that the person(s) allowed to see the confidential information do not have to be an employee but which decision did not decide on an “external eyes only” regime.
- According to the JR, such a regime is possible if parties agree.
- Without agreement, only in exceptional cases such as patent/competition law cases, referring to a Communication of the Commission (2020/C242/01, par. 61 et seq).
- The JR decides that there will be no “external eyes only” regime as, apart from a general statement, Ericsson has not made clear why this is clearly necessary.
Comment
- I agree with the JR, and the JR did very well by “ordering” the parties to come to an agreement, which resulted in an agreement except for the “external eyes only” issue.
- Asustek dropped its demand to appoint one representative who would be responsible for leaks by his lawyers. I think that also without such specific appointment, a representative would be responsible for leaks in their team. First of all, each representative would be responsible (of course) for their own leaks, but also the law firm (or patent attorney firm) would be responsible. The representative (and the law firm) would also be responsible for leaks by persons who work for them (assistants, etc.). This is the civil responsibility. I also think that if indeed a representative would not adhere to his/her confidentiality obligations, the Court can exclude a representative from the proceedings, and I would, in serious cases, even think that the Court could rule that a representative cannot act as representative anymore (compare R. 291 RoP and the Code of Conduct for representatives, Art. 2.2). This is all of course still separate from any disciplinary measures by the bar to which he or she belongs.
29 April 2025
Central Division Paris, Roche v Tandem
Cost decision
Facts
- Roche asked for costs because of its win in revocation proceedings.
- Roche asked for the applicability for representation costs of the ceiling of € 112,300 and furthermore travel costs and court fees.
- Tandem asked for suspension of the cost proceedings pending appeal of the case on the merits, pointed to an inconsistency where Roche asked for € 120,300 in cost of representation, and disputed the travel costs for four in-house representatives (€ 7,323.38).
Order of the Judge-Rapporteur (JR)
- The JR refuses the request for suspension.
- The Court orders the cost of representation up to the ceiling of € 112,300. (In fact, Roche’s lawyer had spent ± € 200,000) and deducts from the travel costs the costs of two in-house representatives, resulting in € 5,441.62 instead of € 7,323.38.
Comment
- The request for suspension is without merit and a waste of time for everybody. You have to have an exceptionally good special reason for such suspension. That Roche is not good for its money if Tandem wins the appeal is not very convincing, to say it mildly.
- Tandem had success in that it had to pay € 1.900 less in travel costs. It is certainly true that if I would work in Mannheim or Basel or another relatively dull city for Roche, I would certainly like to go to Paris. The Court decided rightly in my opinion that for the case, two Roche employees traveling to Paris would be sufficient, and therefore, the trip for the other two has to be paid by their company. Now, I used the word “dull”–do not get me wrong, both Mannheim and Basel are nice cities, but compared to Paris…
- So Tandem saves € 1.900 but what do they have to pay in legal fees to achieve that result? What about picking up the phone calling the representative of Roche and say: “we pay the ceiling but four in-house people is excessive. I pay for two. Otherwise I put up a fight” and settle for € 2.5K!
29 April 2025
Local Division The Hague, Handheld v Scandit
UPC_CFI_562/2024; UPC_CFI_174/2025
Settlement
Facts
Both parties filed an application for withdrawal, and both parties agreed with the request of the other party. The parties did not ask for costs.
The Court
The Court allows the withdrawal and orders that the parties are reimbursed 60% of the court costs, which they had asked for by separate applications.
Comment
I repeat myself. Parties settle and now bother the Court with four applications. When do we become sensible and realize that R. 265 RoP is not written for this and that this can all be done with the Registry?
30 April 2025
Local Division Mannheim, Fujifilm v Kodak
Members confidentiality club
Facts
The Claimant asks for replacement of three members of the confidentiality club by other employees because the members to be replaced have been assigned other tasks.
Kodak opposes.
Decision
Replacement of two members is accepted, the third is rejected.
Comment
- The Court states that such replacement is in principle possible, but you have to take all circumstances into account and balance the interest of the parties. That seems correct.
- With such a request, I think there are two main considerations.
- Why give people another job which results in being a member of the confidentiality club becoming useless for the company?
- An substitution of persons means that (even) more people of the other party get to know your business secrets.
- So, in general, I think there should be convincing reasons to allow such a request. Of course, it is a bit harsh if an employee would miss a deserved promotion because he has to stay in his present job due to the confidentiality club, but the question is then if after such promotion he really cannot function also part-time on the confidentiality club. Now, be careful: it is easier to do some extra work in Europe with a 35-hour workweek and 5 weeks vacation than in Japan (here the claimant is Japanese), where an employee works 40 hours a week and has 10 days vacation and, different from Europe, overtime (Zangyo) is quite common (sometimes up to 80 hours a month, which is not always paid).
- All in all, an understandable decision of the JR, who even consulted his Presiding Judge. I hope the non-German judge of the panel will not feel left out!
30 April 2025
Local Division Düsseldorf, 10x Genomics v Curio
Providing samples
The Judge-Rapporteur (JR)
- The Court has noted that the defendant has the intention to provide samples during oral argument.