14 July 2025
Central Division Munich, Bausmann v Raimund Beck
Interim Conference
Background
Bausmann filed revocation proceedings against Raimond Beck.
The interim conference took place online on 11 July 2025.
The Judge-Rapporteur (JR)
- The value of the litigation was said to be €500,000. The JR noted that this is effectively too low, but as it is to establish the ceiling for recoverable costs, he does not see a problem.
- The decision whether a late-filed document can be accepted, will be made during the oral hearing. The claimant can discuss the document during the oral hearing.
- The parties were told that the ceiling for costs is €56,000 and that the Court, in general, will accept an agreement on costs.
- Oral argument is scheduled for 16 October 2025 at 9:30AM.
Comment
- The Technically Qualified Judge (TQJ) was also present during the interim conference, which is certainly useful when technical issues are discussed.
- Apparently, both parties agree that costs should be kept low (or at least the risk with respect to costs if one loses should be limited). This is accommodated by the JR, who accepted a low value for the litigation. This does not make a difference for the UPC as the court fee for revocation proceedings is a flat fee of €20,000. Therefore, the value of the dispute only determines the ceiling of recoverable costs, which in this case, both parties want to be low.
- The JR (who was a practicing attorney and patent attorney before becoming a judge) again tried to convince the parties to agree on costs. From day one, he has always tried to convince parties to agree on costs, but unfortunately without much success. It would be beneficial for clients and the Court not to waste time on costs (and separate cost proceedings). Let us hope that representatives start to see the light!
14 July 2025
Local Division Milan, Pirelli v Sichuan
Reinstatement of case
Background
On 31 October 2024, Pirelli requested an ex parte order for an evidentiary seizure of all tyres of the type HA-51R and HA-51F and promotional materials shown during an exhibition in Milan. The measures were carried out on 6 November 2024. Pirelli started proceedings on the merits on 5 December 2024.
On 3 June 2025 (almost 8 months later!), Sichuan filed a request for an extension of time for filing a request for review of the seizure order (my note: which, according to R. 197.3 RoP has to be filed within one month after the execution of the seizure). Sichuan argued that it had never received a copy of the request for seizure, the attachments, and the order as ordered by the judge who granted the request.
The Court
- The Court stated that Sichuan’s request must be seen as a request for a reinstatement of the time limits pursuant to R. 320 RoP. The Court referred to the decision of the Court of Appeal of 6 June 2025 in Hanshow v Vusion (UPC_CoA_618/2024).
- The Court rejected the request, referring to the fact that Pirelli had (in view of the extreme urgency) asked for an alternative method of service of the order (by a judicial officer at the venue of the exhibition).
- The Court held that the execution of the order was properly carried out according to Italian law (R. 354.1 RoP).
Comment
- If, as in the case of Sichuan here, a party refers to the wrong Rules but the facts qualify for the application of other Rules, the Court will apply such Rules.
Note that R. 320 RoP (re-establishment of rights) requires that a time limit can only be restored if “all due care” has been taken by the party requesting reinstatement and the cause of non-observance of the time limit was outside its control. Given that Sichuan refused the notification at the exhibition, it is already clear that this action by Sichuan could never have succeeded.
15 July 2025
Local Division Milan, Pirelli v Kingtyre
Settlement
Background
Pirelli sued Kingtyre Germany and Kingtyre China for infringement on 5 December 2024.
On 25 February 2025, Pirelli and Kingtyre Germany settled.
Pirelli requested:
- confirmation of the agreement (R. 365 RoP);
- to maintain confidentiality with respect to the amount of damages and legal fees paid by Kingtyre Germany;
- to grant all claims against Kingtyre China;
- to order reimbursement of court fees.
The Court
- confirms the Agreement, referring to R. 365 RoP and R.11.2 RoP;
- orders confidentiality;
- stays the case against the Chinese defendant;
- orders the reimbursement of 30% of the court fees.
The Court states that there are two defendants, and the case against one defendant was settled before the end of the written proceedings. Therefore, it awards half of the 60% that is awarded if the whole case is withdrawn before the end of the written proceedings.
Comment
- The reference to R.11.2 RoP is, in my view, not necessary and also not correct. R. 11 RoP concerns a settlement reached with the initiative or help of the Court or the JR. The Court is right that despite R. 365.4 RoP, it does not have to decide about costs if the parties have also agreed on costs.
- The Court is wrong in reimbursing 30% of the court fees. Court fees are due regardless of the number of defendants, and they should only be reimbursed if the action is withdrawn. Here, the action is not withdrawn but continues against the Chinese defendant.
- I assume (though this is not very clear in the decision) that the case against the Chinese defendant is “stayed” (the Milan Court states that it “ferma” the proceedings against the Chinese defendant; “ferma” means “halted” in Italian), perhaps because the Chinese defendant has not yet been served with the Statement of Claim (?).
15 July 2025
Local Division Düsseldorf, Qiagen v bioMérieux
Confidential Information
Facts
BioMérieux asked for protection of confidential information.
Decision of the JR
- Prior art is not confidential information, and the JR does not accept the argument that knowledge of the prior art would indirectly disclose the exact lengths of the peptides used by the defendant, as this is too unspecific.
- A party is free to engage the attorneys it wishes to engage. The representatives are free to choose their team members, for whom they are responsible.
- A requirement that persons from the claimant who get access to the confidential information should not have been involved in the prosecution of the claimant’s patents is not acceptable.
- External experts who get access to the confidential information should be mentioned by name.
Comment
- In this case, the defendant even wanted the claimant’s representatives to name two assistants who would get access and invented “procedural conditions”. That procedural condition, in fact, could have been read as the defendant implicitly threatening to remove all confidential information from the Statement of Defence if the JR did not grant an order precisely as the defendant indicated. Luckily for the defendant, the JR pretended not to understand that “procedural condition,” as I assume a defence without the confidential information would probably have been disadvantageous for the defendant.
- I think the JR got everything right:
- Prior art (which is by its nature public) is not confidential information.
- Representatives choose their own teams, for which they are responsible.
- Persons from the claimant who get access do not have to be employees but must be named.
15 July 2025
Court of Appeal, Valinea v Tiru
Evidentiary seizure
Facts
- On 23 December 2024, the Paris Local Division issued two ex parte orders allowing patentee Tiru to carry out an evidentiary seizure and an inspection against Valinea and Maquin.
- Valinea asked for a review of the orders (R. 197.3 RoP and R. 197.4 RoP), arguing:
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- no urgency
- no risk of destruction or disappearance of the evidence;
- Tiru had omitted relevant information in their request.
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- The Paris Division refused the review of the orders.
- Valinea appealed.
The Court of Appeal
- When examining a request for a seizure, the Court of First Instance takes into consideration the urgency of the case in order to determine whether to hear the defendant, only the claimant, or to decide without hearing either party. The Court further takes into consideration the reasons for which it is necessary to preserve the evidence and the facts and proof that are stated in the request.
- The necessity of the measures is judged as of the time of the request.
- There is a difference between urgency in preserving evidence and a request for preliminary measures. For the latter, the Court has to look at any unreasonable delay (R. 209.2(b) RoP), which is not a requirement in R. 194.2(a) RoP.
- As to the risk of destruction, that should be based on the probability that evidence will get lost or will no longer be available.
- As to the duty of candor, the applicant in an ex parte application has to disclose any material fact that should influence the decision whether or not to hear the defendant.
- However, there is no rule requiring that for an evidentiary seizure, there must be a sufficient degree of certainty that the patent is valid.
The Court dismisses the appeal as the Paris Local Division did not overstep its discretionary power
Comment
- This decision is an important guide for representatives who would like to obtain an ex parte order for an evidentiary seizure.
- From the decision, it appears that it is not very difficult to obtain such an ex parte order. However, in my view, the decision should not be read to mean that these orders should be routinely granted, as seems to be the case in some Local Divisions.
- It remains good to realize that it is a very invasive tool, certainly in situations where the defendant did not expect anything (and I have seen that happen in practice!).
- However, the decision makes clear that:
(a) there should be a “necessity”. So if the information can be obtained in another, less invasive way, the order should not be granted, certainly not without hearing the defendant;
(b) the simple sentence, “there is a risk that the evidence will be destroyed,” is not enough. The applicant should motivate why, without the seizure, there is a (serious) probability that the evidence will no longer be available;
(c) one cannot expect the judge dealing with the application to study invalidity arguments as in preliminary injunction cases. An applicant will have to inform the judge about a pending opposition, a decision of a national court, and decisions of patent offices, and in my opinion, also about facts that prima facie raise very serious doubts about the validity of the patent. If there is prima facie serious doubt, because, for instance, the UK court has invalidated the patent or because of certain prior use by the applicant, the Court should, in principle, decline to grant the ex parte measure. Therefore, there are certainly facts relating to validity that must be mentioned in the application.
- The Rules do not expressly provide for the possibility of filing a protective letter against an ex parte application for an evidentiary seizure. Such a protective letter can, according to the Rules, be filed to protect against provisional measures. However, if I were to fear such an evidentiary seizure and consider it completely unjustified, I would file a protective letter against both such a seizure and an ex parte preliminary injunction.
- Whether a protective letter filed with respect to an evidentiary seizure will be read by the judge is questionable, as the Registrar will, in principle, only forward a copy if an application for provisional measures is filed. However, a diligent judge who has some doubts about an ex parte request for an evidentiary seizure may ask the Registry if a protective letter has been filed.
15 July 2025
Local Division Munich, Promosome v BioNTech/Pfizer
Confidentiality
The Court
- Information for which a confidentiality order has already been given does not need a new confidentiality order if contained in a different document.
- The license agreements are known to all parties, which means that a confidentiality order between the parties is not necessary.
- There is no necessity to order an oral hearing with closed doors because the confidential information is already protected by R. 262.A RoP and R. 262.2 RoP.
- The decision to have part of the hearing take place behind closed doors is for the Court to make in the context of the oral hearing.
Comment
- All the confidential information is apparently already protected under R. 262A RoP and R. 262.2 RoP. This means that the public will not get access (although a member of the public can challenge that confidentiality).
- As for the license agreements which are known to the parties, if a member of the public were to ask for it, parties would be given 14 days to request confidentiality (see R. 262.2 RoP).
15 July 2025
Local Division Munich, Lenovo v Asustek
Hearing
The JR
The JR ordered a further interim conference with FRAND as the subject, which will be in English and will not be accessible to the public.
Comment
- If all parties agree, there is no problem with using a different language during the interim conference. In fact, Lenovo should have filed this international case in English!
- Is the JR going to make an effort to have the parties agree on the FRAND rate?
16 July 2025
Local Division Mannheim, FUJIFILM v Kodak
Enforcement
Facts
FUJIFILM notified the Court that it intended to enforce a judgment and requested the Court to issue a warning to Kodak. The warning was to state that if Kodak did not recall and destroy the infringing products within a week, it would face a penalty of €30,000 per day.
After hearing Kodak, the Judge-Rapporteur (JR) rejected FUJIFILM’s request. FUJIFILM then asked the Court for a review of the JR’s order.
The Court
The request for review was rejected on the same grounds that the JR had used to reject the original application. The Court stated that its main decision had not included specific time periods for recall and destruction, nor had it set any penalty sums. The Court advised that FUJIFILM should have appealed the main decision if it wanted to include fixed periods and penalties. If FUJIFILM did not want to appeal then, FUJIFILM’s proper course of action would have been to make an application to impose penalty payments under R. 354.4 RoP.
Comment
- The JR’s decision suggested that the more direct path for FUJIFILM would have been to serve the court’s main decision on Kodak with a demand to comply within a reasonable timeframe and then, if Kodak failed to comply, to make an application under R. 354.4 RoP to impose penalty payments.
- It is also noteworthy that Kodak’s argument in its defence was also incorrect. Kodak claimed FUJIFILM should have appealed, but this was incorrect because FUJIFILM’s current request was a separate application and not made under R. 354.4 RoP.
- In a main case where actions like recall and destruction are requested, it is advisable to also request fixed compliance periods and penalty sums from the outset and to provide reasoning for their reasonableness.
16 July 2025
Local Division Munich, 10x Genomics v Bruker
Reimbursement of court fees
Background
On 1 June 2023, the claimant applied for a preliminary injunction (PI), which was granted.
On 31 August 2023, the main action was filed, followed by a counterclaim for invalidity. The written procedure has not been formally closed.
Parties filed more than 30 different applications during the written proceedings. On 26 February 2024, the Court of Appeal reversed the PI order. The defendants filed for compensation for the damages caused by the PI for €40 million. Parties settled. The claims in the main case and the claim for the damages caused by the PI were withdrawn.
Requests
The claimant requested reimbursement of 60% of the paid court fees (€76,000). The defendant asked for all the court fees to be reimbursed (the defendant paid €20,000 for the revocation and €253,000 for the compensation case).
The Court
In view of the exceptional amount of work, the Court ordered a reimbursement of 40% instead of 60% of the fees paid for the main case.
The Court ordered a 60% reimbursement in the compensation case.
The Court does not follow the reasoning of the defendant that for such a compensation case, no fee has to be paid at all because that case is a case for damages according to R. 370.2(a) RoP, arguing that “damages” include compensation (see R. 125 RoP).
Comment
- The Court has been very modest in still returning 40% of the fees. I think that the exceptional amount of work the Court had to do would have justified no return of fees at all.
- The decision with respect to the fees in the compensation case is fully in accordance with the Rules, which means that in that case, the Court keeps around €100,000, which compensates nicely for the work in the main case!
16 July 2025
Central Division Paris, Kinexon v Ballinno
Cost decision
Facts
The claimant asked the Court to order confidentiality of the representative fees and further costs (as it is a business secret which is sensitive because of the competition with other law firms for UPC work).
The defendant argued that the confidentiality rules are not written for such protection.
The JR
The JR refused the application, as R. 262A RoP is written for procedural information. The argument that the information would give information about the internal resources of the claimant is of a too general nature.
The Court noted an implicit request based on R. 262.2 RoP and allowed that. The information is not publicly available.
Comment
- The Court’s justification for not making the information public is not very convincing. The Court reasoned that because representative fees are part of a private agreement, they do not provide interesting information to the public.
- As stated before, I think that it is very interesting for the public (companies/persons seeking a representative) to have detailed information about the costs of representatives. I do not understand why that transparency and information is allowed by the Courts to be hidden.
- I add immediately that if you litigate in the UPC your first concern should be quality and not go to an unexperienced but maybe cheaper litigator. As I have said before, only a few members of the bar belong to that category and you are not an experienced litigator only because you are a patent attorney with a litigation certificate. However, also among the experienced litigators there are serious price differences. A British Rolls Royce is far more expensive than a French Citroen DS8 but they are both of excellent quality.
16 July 2025
Local Division Düsseldorf, Husqvarna v Positec
Change of language
Background
Husqvarna AB started infringement proceedings against Positec on 16 April 2025. Positec (a German company) asked for a change of language to English (the language of the patent).
The President of the Court in First Instance