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.
Interested in more of this? Stay tuned and subscribe here for weekly updates.
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 or Apple Podcasts.
Announcement on publishing schedule
With the second season of UPC Unfiltered in front of us, this week marks the last week that UPC Unfiltered is published on Monday. As of next week, UPC Unfiltered will be published each Tuesday, both in written form and as a podcast.
25 August 2025
Court of Appeal, Sun v Vivo
UPC_CoA_758/2025 and UPC_CoA_759/2025
Confidential information (R. 262A RoP)
Facts
- Sun filed an infringement action based on a standard essential patent (SEP), asserting that it had offered a fair, reasonable and non discriminatory (FRAND) license to Vivo which Vivo does not want to accept.
- On the same day, Sun applied for a confidentiality regime with respect to certain parts of its Statement of Claim and exhibits, first with restriction of access to three employees and later for an attorney-eyes-only regime.
- The Paris Local Division granted the request but allowed three persons of Vivo to have access.
- Sun appealed and asked for a suspensive effect asking that access to the Highly Confidential Information (“HCI”) would be subject to an attorneys-eyes-only regime or, alternatively, access should be given to three Vivo employees who shall not participate in or advise on any licensing negotiations for a certain period, arguing that without suspensive effect the appeal would become pointless.
The Court of Appeal
- The Court of Appeal held that although R. 223.5 RoP states that there shall be no suspensive effect of an order, the Court of Appeal has already decided that this is possible because the prevailing of Art. 74 UPCA.
- The Court of Appeal states that suspensive effect is the exception to the rule and refuses suspensive effect because:
- Sun did not show that the three employees will not keep the information secret;
- the appeal without suspension is not devoid of purpose, because after a successful appeal the employees will not have further access and would not be able to make further use of the unredacted version or alternatively could not participate in license negotiations.
Comment
- How does this all works in practice? I assume Sun wants to produce agreements with other licensees showing that what they offered is FRAND, that Vivo is unwilling and that Sun is therefore entitled to an injunction.
- Almost all license agreements contain a confidentiality clause. So Sun had to make sure that Vivo does not get access to the content of these license agreements, and if that is not possible, at least make sure that the persons who get access do not participate in license negotiations in which they could use the confidential information, e.g. in negotiations with companies with which Sun had agreed confidentiality of the license agreement.
- One can also imagine that, if (what in practice often happens) during the litigation there are further license negotiations, Sun would not like that the persons who negotiate on behalf of Vivo have all the information from Sun’s existing licenses.
- The Paris Local Division apparently did not realize the commercial realities when issuing the order. The decision of the Court of Appeal again shows suspensive effect is only granted in highly exceptional circumstances, and the Court of Appeal considers that because of the relative short time of an appeal it is not devoid of purpose. This would of course be quite different if the three employees could not be trusted to keep the information secret or use it only for the allowed purposes.
25 August 2025
Local Division Hamburg, Med-EL v Nurotron
Service
Facts
The defendant has been represented in preliminary injunction (“PI”) proceedings by a UPC representative. The claimant is of the opinion that he can validly serve the infringement action on the merits to the defendant’s representative in the PI action.
The Court
The PI proceedings and the review proceedings of the ex parte PI order are different proceedings compared to proceedings on the merits and these latter proceedings cannot be served to the defendant’s representative in the PI proceedings and review proceedings. They have to be served in China according to The Hague Convention.
Comment
- Although very formalistic, I think the decision is correct. The representative has clearly stated that he only acts as representative in the PI proceedings and the pending review proceedings, which are indeed separate proceedings.
- However, it is clear that with these type of avoiding tactics, the client does not seem to strengthen its position in the review proceedings. Urgency and necessity seem now not difficult to establish and any material defence seems unconvincing from the start if his Chinese client uses all the tricks in the book to avoid a timely decision in the main proceedings.
26 August 2025
Local Division Munich, NEC v TCL
Public access
Facts
- The parties settled in January 2025.
- A law firm wants access to the register, specifying that it wants to receive the written pleadings and exhibits, if redacted in the redacted version.
- The parties ask to reject the requests. The claimant in the alternative asks that only the redacted versions, lodged during the proceedings in accordance with the R. 262A and 262.2 RoP requests, will be given to the law firm.
- The claimant argues that:
-
-
-
-
-
-
- there is no reasoned request, as the reasons (educational purposes) are not the true reasons: they just filed a case based on the same patent and apparently that is why this law firm wants this information;
-
-
-
- the interest of the claimant outweighs the interest of the public (because the claimant does not want its litigation strategy to become public);
- the case ended in a settlement. No access should then be given to the public.
-
-
-
The Court
- This is a reasoned request of a member of the public.
- The Court does not decide whether or not acting as a strawman or concealing the true reason of the request would be abusive, as this is not proven. The law firm states that it does not act as representative in a case in which the patent of this case is at issue.
- If the law firm asks for the information because it advises a client about the patent out of court, then the interest for the law firm to obtain the information rather increases than decreases.
Comment
- After the decision of the Court of Appeal in Ocado v Autostore (see Hoyng Case Law Court of Appeal 2023-2024 p. 14-16), the outcome of this request was predictable.
- The decision also shows the usefulness of asking a R. 262A RoP confidentiality decision together with a R. 262.2 RoP decision, because the Court will then (generally) not have to decide twice about confidentiality.
- The decision also shows (as it mentions that there are numerous requests which put a strain on the Registry, because it has to remove personal data):
- that a party cannot hide its litigation strategy, which especially in more cases about the same patent (such as FRAND cases) is a disadvantage;
- that – as indicated above – it is burdensome for the Court and costly for the system.
- With respect to the latter, I think that a request by a company or law firm should only be possible against serious payment of a fee (per page). Only if a University or a recognized research institute (for one of their researchers) should make a request, there should be no, or a modest, fee.
26 August 2025
Local Division Milan, Dainese v Alpinestars
Confidentiality
Facts
Alpinestars asked for security for costs. In those proceedings, Dainese wants to file exhibits under a confidentiality regime. Alpinestars had no problem with the request, but wants access only for the general counsel of defendant 1, while the other defendants also want a person getting access.
The JR
The Court gives access only to the general counsel, but suspends the decision in order to give the possibility to appeal.
Comment
For such a minor issue the JR issues a very extensively motivated balanced decision. Again a sign for representatives not to file cases in very busy Local Divisions where judges will not have the time for such a decision.
26 August 2025
Paris Local Division, Sun v Vivo
UPC_CFI_361/2025; UPC_CFI_362/2025
Extension of term
Facts
Sun, the claimant, asked for a confidentiality order with respect to its Statement of Claim.
The final order was issued by the full panel on 31 July 2025. Sun appealed the order (in particular the access of three employees) and asked for suspensive effect. Vivo did not give access to these employees pending the appeal. Suspensive effect was refused by the Court of Appeal in a decision of 25 August 2025.
The question now was: when did the one-month term for a preliminary objection start to run, and alternatively, Vivo filed a request for an extension of time.
The Court
- It was very clear from the Court’s preliminary ruling of 3 July 2025 that the term would start to run on 31 July 2025, the date of the final decision.
- With respect to the request for extension the Court grants three weeks.
Comment
- The granted extension does not seem unreasonable, as Vivo apparently voluntarily waited with giving access to its three employees until the Court of Appeal decided on the suspension of the order to allow access to the three employees.
- However, as I noted earlier, it is undesirable and unnecessary if the extension of terms result in proceedings taking more than 12 to 14 months. Representatives very often can easily start with working on (large parts of) the case as soon as they have the unredacted version before the employees of their client has access.
26 August 2025
Local Division Düsseldorf, Hologic v Siemens
UPC_CFI_758/2024; UPC_CFI_259/2025
Confidential information
Facts
This concerns a request for confidentiality based on R. 262A RoP, which is not challenged by the other party.
The JR
Classified the information as confidential in the meaning of Art. 58 UPCA, R. 262.2 RoP.
Comment
This – according to the published decision – was a request based on R. 262A RoP. However, it appears the goal was not to avoid the information going to the other party, as the other party apparently knew the information. Instead, the goal was to make sure that the information does not go to third parties. The JR apparently requalified it as a request under R. 262.2 RoP as that is the Rule which ensures (except if challenged under R. 262.3 RoP) that third parties do not get access. Such decision is not only useful with respect to requests for access, but in my opinion a party can also invoke such decision during public oral hearings to request closed doors (R. 105.2 RoP and R. 115 RoP).
The question remains whether you do not also need a R. 262A RoP decision in this situation, to ensure that the other party does not make the information public? Of course, if parties are already bound to confidentiality (e.g. through a non-disclosure agreement), then that is not necessary, but a R. 262.2 RoP ruling as such seems not enough.
26 August 2025
Local Division Munich, Shangrao v Longi
Stay for settlement negotiations
Facts