2025 UPC May

IPPT20250530, UPC CoA, Belkin v Philips

A party is adversely affected and allowed to appeal if a request is not fully granted (R. 220.1 RoP). Only the grant of suspensive effect by the Court of Appeal, rather than the mere filing of an application, suspends the enforceability of the decision (Article 74(1) UPCA, R. 223 RoP) Recurring penalty payment (Article 82.4 UPCA, R. 354.4 RoP). The principle of nulla poena sine culpa means that a penalty sum shall only be imposed when the defendant's fault can be established. Maximum penalty amount payable must be defined in the order providing for a penalty. The appropriate amount of the penalty payment can only be reliably determined once the nature and extent of the breach of the order have been established. The fact that only a maximum penalty payment for each day of non-compliance (up to € 50.000) was provided – rather a specific amount – does not give rise to concerns. The amount of the penalty payment (later) to be imposed does not solely depend on the importance of the order that is reinforced with a penalty. After a breach has occurred, the Court must, in exercising its discretion, determine the amount of the penalty payment in a manner that is adapted to the circumstances and proportionate to the breach of the order. Relevant factors in this regard include, among others, aspects such as the severity of the established breach, its duration, and the defendant's ability to pay. Time period for communication of information (Article 67 UPCA): Must be determined in the decision on the merits. Must be reasonable, taking into account the specific circumstances of the individual case. In determining the length of this period, particular consideration must be given, amongst other, to the scope of the information required to be provided, the time period to which the disclosure relates, and the resources available to the obliged party. Begins upon notification pursuant to R. 118.8, first sentence, RoP – must be included in the claimant’s corresponding application. If, as in the present case, no time period is specified in the final decision, it is the responsibility of the claimant to set a time period for the provision of information when notifying the defendant of the intention to enforce the decision. Failure to submit the information in electronic form does not per se constitute violation of an order under Article 67 UPCA.

IPPT20250530, UPC CFI, LD Mannheim, Sunstar v Ceracon
Claimant has validly chosen English as the language of the proceedings (Article 49(2) UPCA). By filing its statement of claim in English and designating English as the language of the proceedings pursuant to Art. 49 (2) UPCA in its statement of claim, under the section on formalities, Claimant has chosen English as the language of the proceedings. The choice is valid. English is the language of the patent-in-suit.

IPPT20250530, UPC CFI, LD Hamburg, Visibly v Easee
Defendants to provide security for the Claimant’s legal costs in the (total) amount of € 75.000 regarding the counterclaim for revocation (Article  69(4) UPCA, R. 158 RoP). Article 69(4) UPCA does not provide for an obligation on the part of the Defendant to provide security.  A Claimant can request a Defendant to provide security for costs to the extent that it concerns the counterclaim for revocation as a Defendant acting as Counterclaimant falls within the scope of Art. 69(4) UPCA

IPPT20250530, UPC CFI, LD Brussels, Genentech v Organon
Ex parte order to preserve evidence (R. 192 RoP) and order for inspection (R. 199 RoP) (Article 60 UPCA), appointment of independent experts, subject to confidentiality circle, time limits procedure on the merits, € 25.000 security and limited use of the outcome of the measures. Jurisdiction and territorial competence UPC (Article 31 UPCA, Article 32 UPCA). No jurisdiction and territorial competence for order to preserve evidence and inspect premises regarding Organon US and Henlius, which have their registered office and premises outside the competent territory of the UPC. Jurisdiction and territorial competence for order to preserve evidence and inspect premises regarding Organon BE, which has its registered office in Belgium and the actual and threatened infringement has occurred or may occur in Belgium with respect to EP 335. The order to preserve evidence and inspect premises  allows the execution at the premises of ORGANON NL and ORGANON BE regardless of whether third parties own any material (including servers) to be found at their premises. Standard of proof: "a certain degree of plausibility of the infringement or the threat thereof" [...]. he same certain degree should be considered when assessing the validity of the patent. This “certain degree” is practically translated by the Court as making it “highly likely”. As such, the standard of proof for Applicants is lower compared to infringement actions (on the merits) and preliminary measures actions. Applicants should not already prove infringement, as this would render the order for preservation of evidence/access meaningless. € 25.000 security for combined order to preserve evidence and inspect premises (Article 60(7) UPCA, R. 196 RoP). Although Art. 60(7) UPCA does not seem to allow the court to make the execution of an order for inspection conditional on a security (see § 30), the Applicants' requests are of such a nature that they combine an order to preserve evidence and an order for inspection. 

IPPT20250529, UPC CFI, CD Paris, Lindal v Rocep-Lusol
Revocation action dismissed; patent maintained as amended by the First Auxiliary request (Article 65 UPCA). Industrial applicability (Article 57 EPC) and insufficient disclosure (Article 83 EPC)(Article 138(1(a)(b) EPC). If an (alleged) invention would not comply with the generally accepted laws of physics falls within its scope because it cannot be used and therefore lacks industrial application. In such a situation, also the description would be insufficient to the extent that the applicant would not be able to describe how it could be made to work. claim 5 does not meet the criteria for industrial applicability under Articles 57 and 138 (1) (a) ‘EPC’ and must be considered as invalid. Since the application is addressed to the skilled person, it is neither necessary nor desirable to give details of well-known ancillary features. However, the description must disclose any feature essential for carrying out the invention in sufficient detail to make it apparent to the skilled person how to put the invention into practice without undue burden. (Article 83 EPC). Application to amend the patent (R. 30 RoP). Auxiliary requests must be addressed in the order indicated by the defendant, in the absence of specific elements and/or requests suggesting otherwise. Novelty – clearly integrally, directly and unambiguously disclosed (Article 54 EPC). An invention is to be considered part of the state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features. While drawings must always be used as explanatory aids for the interpretation of a patent claim, they cannot be used to extract a characteristic when definitively and unambiguously contradicted by the description and not supported by the claim. Inventive step – non-obvious synergistic effect (Article 56 EPC). The combination of the use of only a compressed gas propellant with the clearance provided between the second piston and the container wall determines a synergistic effect of creating a sealant film on the container wall which reduces friction while maintaining a seal and mitigates the rapid pressure drop of the compressed gas during the expansion of the propellant chamber. This is not disclosed or rendered obvious by the claimant’s cited prior art documents.

IPPT20250528, UPC CoA, Centripetal v Palo Alto
Order rejecting application for the preservation of evidence dated 3 March 2025 revoked and referred back to the Court of First Instance. (Rule 192 RoP). Standard of proof for orders for provisional and protective measures. (Art. 62, Art. 60 UPCA, R. 198 or R. 213 RoP). Since such orders are issued by summary proceedings where parties have limited opportunities to present facts and evidence, the standard of proof must not be set too high. At the same time, it must not be set too low in order to prevent the defendant from being harmed by an order for a provisional or protective measure that is revoked at a later date. The purpose of an application for preservation of evidence differs from that of an action on the merits. (Article 60 UPCA). If the same standard of proof were applied to an application for preservation of evidence as to an action on the merits, the procedure established by Art. 60 UPCA would lose much of its practical utility . The requirement under Art. 60(1) UPCA to provide reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed is therefore a lower bar than the burden of proof for a claimant in an infringement action. The bar is in particular lower with respect to those aspects of the alleged infringement for which no evidence is reasonably available to the applicant, and for which the orders to preserve and disclose evidence are therefore particularly relevant. Mere speculation that the patent has been infringed, is generally not sufficient to justify an order to preserve evidence. Necessity requirement . A fair balance must be struck between the fundamental rights of the defendant and those of the applicant. (R. 192.2 and R. 199.2 RoP). It follows that the procedure under Art. 60 UPCA can only be used if, and to the extent that, it is necessary for the effective enforcement of a patent. Accordingly, the applicant must provide, in its application, the reasons why the proposed measures are needed. Where the preservation of evidence can be implemented by several equally effective measures, the measure that is least prejudicial to the defendant should be preferred.

IPPT20250528, UPC CFI, LD Munich, Nanoval v ALD Vacuum Technologies
Review of ex parte order to preserve evidence and inspection of 3 February 2025 unsuccessful (R. 197.3 RoP). Sufficient likelihood of infringement: The court currently has no evidence that a Laval nozzle does not allow grain sizes above 50 um. Nor does the respondent explicitly claim this. This circumstance, together with other circumstances mentioned in the order, was sufficient for the court to find that there was a sufficient likelihood of infringement. Unclarity protective letters (R. 207 RoP). Insofar as the respondent argues that the protective letters submitted by the respondent reveal the different nozzle shape of the EIGA Premium system, it is the respondent's failure to clearly state in any of the protective letters submitted which system or systems are referred to in these protective letters. It is not the task of the court to remedy this deficiency by comparing the respondent's submissions in the opposition proceedings by way of an overall interpretation of all the pleadings submitted in various proceedings and to interpret on this basis what the respondent might have meant. Legally incorrect assumption that an order under Article 60 UPCA must be set aside because the risk of destruction of evidence has not been sufficiently proven. Review under R. 197.3 RoP is limited to the question whether the measures were rightly order; in this context, the possible destruction of evidence is irrelevant.

IPPT20250528, UPC CFI, LD Mannheim, Samsung v ZTE
Value of infringement action set at € 4 million on a preliminary basis (instead of € 500.000) (R. 22.1 RoP, R. 370.6 RoP). The value of the dispute is largely underestimated taking into consideration the commercial background of the infringement action attacking all standard-essential 5G mobile devices of the opponent and the general FRAND rate discussion between the parties on which the injunctive relief sought will have economic bearing

IPPT20250528, UPC CFI, CD Paris, Aylo Premium v Dish Technologies 
German part (only) of European patent revoked (Article 65 UPCA). The Unified Patent Court can revoke European patents for one or more individual UPC Member States if so requested (Article 34 UPCA, Article 76 UPCA). No stay until Opposition Division has decided (Article 33(10) UPCA, R. 295 RoP). Claimant's interest in obtaining a timely judgment and the interest in conducting proceedings which can be terminated in approximately one year outbalance Defendant's interests. The reasons given by the Court to decline a stay prior to the oral hearing, particularly the advanced stage of the proceedings, apply even more and a fortiori after the oral hearing. Added matter claims 1 and 9 – inadmissible generalization (Article 138(1)(c) EPC). The Court holds that the parent application does not provide support for claiming “requesting the streamlets (212) of the highest quality one of the copies (204, 206, 208) determined sustainable at that time” as stated in feature 1.7. [emphasis added]. By introducing the term “highest” in the claim as granted, this feature includes embodiments in which direct “jumps” to the highest quality are possible and introduce an inadmissible generalization. Indeed, this implies assessing whether, at a certain time, several higher qualities would be sustainable, a determination that neither the flow diagram of Figure 7 nor the (embodiment in the corresponding) description of the parent application foresees or suggests. 

IPPT20250528, UPC CoA, Harvard v Nanostring - II

Withdrawal of action and reimbursement of court fees (R. 265 RoP, R. 370 RoP). Written procedure before the Court of Appeal is limited to the submissions of a Statement of appeal and a statement of grounds for appeal and a statement of response, unless a cross-appeal has been lodged. Upon expiry of the period for lodging these statements, the interim procedure begins (R. 239.1 RoP). It follows that, in the present case, the action was not withdrawn before the closure of the written procedure, but before the closure of the interim procedure. Accordingly, Harvard is entitled to a reimbursement of 40% of the Court fees it paid for the appeal pursuant to R. 370.9(b)(ii) RoP, instead of 60% pursuant to R. 370.9(b)(i) RoP.

IPPT20250528, UPC CoA, Harvard v Nanostring - I

Withdrawal of appeal by party consent without decision on costs (R. 265 RoP), following which the order to provide a security becomes devoid of purpose and security is released (Article 69.4 UPCA, R. 158 RoP)

IPPT20250528, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics
Withdrawal of action by party consent (R. 265 RoP)

IPPT20250527, UPC CFI, LD Hamburg, Dolby v Epson
Preliminary objection unfounded (R. 19 RoP, R. 20 RoP): Effective withdrawal of opt-out for all countries (R. 5 RoP). The relevant patent is clearly identified and the states are only mentioned in connection with the ownership. In this respect, it cannot be inferred from the withdrawal that it should only refer to the countries named there. Pursuant to R. 5.7 RoP a withdrawal of an opt-out cannot distinguish between countries.
 

IPPT20250526, UPC CFI, CD Munich, Baussmann v Raimund Beck Nageltechnik
Pleadings to be uploaded in workflow ‘Application for amendment of a patent’ in the CMS to allow plaintiff the opportunity to file a Rejoinder to the Reply to the Defence to revocation (R. 43.3 RoP)

IPPT20250526, UPC CoA, Strabag v Swarco

Application by intervener Chainzone for suspensive effect of appeal rejected (R. 223 RoP, R. 315 RoP). It can be left open whether the intervener is entitled to file an application for suspensive effect of the appeal and in particular whether Chainzone has a legal interest in having the enforcement suspended. It can also be left open whether the admissibility of the application is precluded by the fact that Strabag has already unsuccessfully applied for suspensive effect. Chainzone has failed to (sufficiently substantiated) demonstrate manifest errors in the impugned order or an infringement of fundamental procedural rights on which the decision is based.

IPPT20250527, UPC CFI, LD Mannheim, InterDigital v Disney
Ex parte anti-anti-suit injunction (R. 211 RoP). The undisturbed conduct of proceedings before the UPC should be secured as a whole. No objections to the version of the application insofar as it extends to equivalent judicial or official measures, since in this respect it is not the formal designation of the judicial or official order as an "anti-suit injunction" that matters, but whether it has the same legal effect, even if the order has a different designation or is issued in a different procedural form. 

IPPT20250523, UPC LD Paris, Hurom v NUC
Dutch, French, German and Italian parts of European patent revoked as amended (Article 138(1) EPC, Article 65(2) UPCA); infringement claims concerning Poland admissible but dismissed as unfounded. Claim interpretation principles (Article 69 EPC) apply equally to the assessment of the infringement and the validity of a European patent. No added matter amended claims (Article 138(1)(c) EPC). The allegation of NUC that no less than eight features are inextricably linked is unfounded, as NUC has not demonstrated such a link, and the skilled person would understand that, in describing an embodiment, features may be used to illustrate its working that are not necessarily an essential part of the invention. Territorial scope and preliminary objections. Defence that UPC lacks jurisdiction under Article 34 UPCA to rule concerning acts of infringement committed in Poland does not concern matters of jurisdiction or competence falling within the scope of R. 19 RoP. It follows that the defendants objection based on Article 34 UPCA is admissible. A distinction must be made between, on the one hand, the jurisdiction of the UPC (Articles 31, 32 and 33 UPCA), and, on the other hand, the territorial scope of the UPC’s decisions, as defined in Article 34 UPCA related to "Territorial scope of decisions". In other words, Article 34 UPCA “relates to the scope of the effect of the decisions” The territorial scope of a UPC decision does not concern matters of jurisdiction or competence falling within the scope of application of R. 19 RoP. It follows that the Defendants' objection based on Article 34 UPCA is admissible. Long-arm jurisdiction concerning Poland: HUROM's claim concerning alleged acts of infringement on Polish territory is admissible in light of the decision handed down by the CJEU in BSH v Electrolux, as has already been stated by several divisions of the UPC concerning non-contracting States of the UPC Agreement. However, on the merits, the Claimant bears the burden of proof for the alleged facts in accordance with R. 13m and R. 171.1RoP. [...]. Consequently, HUROM's claim for infringement based on the national part of the patent as granted for Poland cannot be considered as well-founded. 

IPPT20250523, UPC CFI, LD The Hague, Genevant v Moderna
Procedural order on preliminary objections (R. 19 RoP, R. 20 RoP). The PO’s filed on 24 April 2025 (…) on behalf of Moderna Belgium, Moderna Germany and Poland, are not admissible for these defendants (for Moderna Poland this only applies to action 192/25), as they are late filed and these defendants are therefore considered to submit to the jurisdiction and competence of the court and of the LD The Hague (R. 19.7 RoP). Unsubstantiated objections by certain defendants to international jurisdiction of the UPC dismissed and these defendants are considered to submit to the jurisdiction of the UPC (R. 19.7 RoP) (Article 31 UPCA, Article 32 UPCA). Jurisdiction regarding Moderna Poland, Moderna Norway and Spain because of allegation that Moderna Poland, Moderna Norway and Spain each not only infringe individually (asserting that jurisdiction can be based on Art. 7(2) BR), but that they also infringe the patent jointly with Moderna Netherlands in their home country. Therewith they infringe the same (national parts of a European) patent with the same product, which is enough connectivity to consider them co-defendants within the meaning of Art. 8(1) BR. Competence of Local Division The Hague as local division where one of the defendants has its residence and given the commercial relationship between the multiple defendants and the same alleged infringement (Article 33(1)(b) UPCA). Lack of long-arm jurisdiction (extended beyond the UPC territory) is to be dealt with in the main proceedings.

IPPT20250523, UPC CoA, NJOY v Juul

Withdrawal of action by party consent (R. 265 RoP)

IPPT20250522, UPC CFI, LD Mannheim, Total Semiconductors v Texas Instruments
Panel review confirms case management order not to allow a further exchange of written pleadings (R. 12.5 RoP, R. 36 RoP, R. 333 RoP). A request pursuant to R. 36, 12.5 RoP calls for a sufficient degree of substantiation so that the judge-rapporteur can retrieve the essential facts from the application itself without having to study the file. This formal standard applies in general and does not depend on whether there was a change of the judge-rapporteur or not. As far as Claimant attempts to remedy the deficiencies in its request pursuant R. 333 RoP, these statements are irrelevant to the review proceedings. It is inherent in the review proceedings that it has the same basis as the impugned order. On a regular basis, the review only concerns the facts and the state of the dispute at the time the impugned order was issued, so that the additional arguments now put forward in the review proceedings do not justify a different outcome.

IPPT20250522, UPC CFI, CD Munich, Kunststoff v Häfele  
Stay of proceedings (R 295(d) RoP) awaiting the outcome of the settlement negotiations at the joint request of the parties. The oral hearing, which was originally scheduled for 4 June 2025, is cancelled and can be rescheduled to a later date, if this would become necessary.
 

IPPT20250521, UPC CFI, LD Düsseldorf, Hologic v Siemens
No security for costs (R. 158 RoP, Article 69 UPCA). Also the claimant is permitted to submit a request for security for costs, as this rule does not restrict such actions to a defendant only. It is sufficient for a defendant to establish that enforcement of a cost order is unduly burdensome. The burden of showing this is on the applicant of an order for security for costs. To this end, the applicant shall not only provide evidence as to the foreign law applicable in the territory where the order shall be enforced, but also its application. The Defendants have not provided evidence of the applicable foreign law, just an argument about such, nor have they provided evidence about the application of such law. The Claimant argues that the enforcement of UPC orders and decisions is not unduly burdensome in the United States of America. The Court notes that, according to the UPC case law, US courts routinely recognise and enforce judgments of foreign courts

IPPT20250521, UPC CFI, CD Paris, Kinexon v Ballinno
Patent number rectified from 1 994 067 into 1 944 067 (R. 353 RoP)

IPPT20250521, UPC CoA, Knaus Tabbert v Yellow Sphere.

Unsuccessful application for suspensive effect of appeal (Article 74(1) UPCA, R. 223 RoP). The application for suspensive effect must on its own, enable the appeal court to decide on the application, if necessary without further information. References to passages in written pleadings and documents in the first-instance files are permissible, provided that they are specified in sufficient detail. Ordering security for enforcement is not necessary in every case but at the discretion of the Court (Article 82(1) UPCA). The Local Division correctly assumed that it is necessary to weigh the interest of the patent proprietor in the effective enforcement of his property right against the interest of the alleged patent infringer in the effective enforcement of possible claims for damages in the event of a subsequent annulment of the decision. No obvious error in weighing up the interests involved. Given that Knaus Tabbert was aware of the disputed patent and therefore took a calculated risk of patent infringement by marketing the contested embodiments, it is reasonable to refrain from ordering security for enforcement. No obvious error with regard to proportionality by orders for recall, removal from commerce and destruction of not only the contested frames, but the entire caravan. The patent does not protect individual components of minor importance, but rather the basic design of the caravan. Even if the disagreements between the parties, as argued by Knaus Tabbert, are only of a financial nature, the Order for destruction in particular may be justified. No risk of appeal becoming moot. It is true that, in the event of destruction of the contested embodiments, these cannot be reversed. However, Knaus Tabbert is entitled to damages in this case. It does not follow from Knaus Tabbert's submission that its interests are not sufficiently taken into account by the payment of damages. No reason to allow the argument that Yellow Sphere’s financial situation is insufficient to be raised for the first time in appeal. Proceedings for a stay of enforcement, in which the appeal court decides on the application without delay (R. 223.3 RoP) are not suitable for findings on the claimant’s financial circumstances, which – as a rule – can only be made after hearing the opposing party and findings of fact may also be necessary.

IPPT20250520, UPC CFI, LD Düsseldorf, Roche v Tandem
Confidentiality club regime R. 262A RoP)

IPPT20250520, UPC CoA, Chint v JingAo
Rejected suspensive effect (R. 223 RoP) and expedition of appeal (R. 9.3(b) RoP) of order to provide security in the amount € 200,000 by 6 June 2025. Appeal not devoid of purpose without suspensive effect, nu undue burden (R. 223 RoP) If Chint provides the security and the impugned order is subsequently revoked by the Court of Appeal, Chint may release the security. No undue burden: The mere fact that Chint will have to make arrangements with banks and its internal finance department is not sufficient, taking into account that a suspension of the impugned order may cause delays in the proceedings before the Munich Local Division. Decided without having heard JingAo, since the Court of Appeal must decide on an application for suspensive effect without delay (R. 223 RoP) and the outcome is in favour of JingAo. No justification for expedition of appeal (R. 9.3(b) RoP) at the expense of JingAo’s legitimate interest in having the appeals dealt with within the timeframe provided for by the RoP. The mere fact that a party will have to make arrangements with banks and its internal finance department, or that the impugned order is based on incorrect conclusions and contradictory reasoning is not sufficient.

IPPT20250519, UPC CFI, LD Munich, Dolby v Roku
No need to adjudicate because of settlement (R. 360 RoP), costs to be borne by respondent (R. 118.5 RoP). Giving cause for the action to be brought and requirement of a warning letter? 

IPPT20250519, UPC CFI, LD Mannheim, Mailikie Innovations v Discord
Harmonization of time periods for lodging Statements of defence (R. 23 RoP)

IPPT20250516, UPC CFI, LD Düsseldorf, DDP v Greenchemicals
Confidentiality club regime with penalty in case of a culpable breach (R. 262A RoP)

IPPT20250515, UPC CFI, LD Munich, Belparts v IMI Hydronic
No bifurcation despite pending revocation action before the Paris Central Division (Article 33(3) UPCA). As both parties voted against bifurcation, the panel has decided to proceed with both the infringement action and the counterclaim for revocation. Furthermore, Belparts informed the court that the counterclaim for revocation contains different arguments to those in the central revocation action pending before the Central Division's Paris seat.

IPPT20250514, UPC CoA, Hisense v Corning
Request dismissed for discretionary review in appeal of panel confirmation of order of the judge-rapporteur not to separate proceedings against unrelated defendants (R. 220.3 RoP, R. 303.2 RoP). It is at the discretion of the court to separate proceedings. The Court must consider the legitimate interests of both parties and the public interest In a situation such as the present one, where several unrelated companies are involved in the proceedings, the parties can have a legitimate interest in maintaining confidentiality of business information. Furthermore, the legal proceedings should safeguard mutual uncertainty at least as to the timing, extent and details of any future changes in the conduct of competitors on the market. Preventing other defendants from obtaining access to confidential information can be realised by making use of confidentiality clubs (R. 262A RoP).

IPPT20250515, UPC CFI, CD Milan, Maschio Gaspardo v Spiridonakis Bros
Court allowed to inspect and to compare the objects of the proceedings (i.e., the patented and attacked objects) by viewing their dynamic functionality (Article 53(f) UPCA. R. 170 RoP). If a party offers to exhibit the object and submits a video of its operation to the court, the court may also order dynamic experiments and comparative tests 

IPPT20250514, UPC CFI, LD Mannheim, Total Semiconductors v Texas Instruments - II
The final decision on whether to grant leave to amend the case to the effect that the infringement action also covers the AM67x product as an attacked embodiment postponed until the oral hearing because it may depend on claim interpretation (R. 263 RoP). Whether the new explicitly attacked embodiments have the same actual characteristics with regard to the features of the relevant patent claim as the attacked embodiments listed in the statement of claim and whether they will thus be covered by the operative part of a decision on the merits anyway, can only be assessed with certainty once the construction of the patent and the relevant facts of the case are established by the panel

IPPT20250514, UPC CFI, LD Mannheim, Total Semiconductors v Texas Instruments - I
The final decision on the admission of further written submissions  (R. 12.5 RoP, R. 36 RoP) is partially postponed until the oral hearing and otherwise rejected. Insofar as the decision is postponed, Claimant shall be given 3 two weeks to submit its submission in writing, being strictly limited to AVS Class 0. Afterwards Defendants have the opportunity to respond within two weeks.

IPPT20250513, UPC CFI, LD Munich, Huawei v MediaTek - II
IPPT20250513, UPC CFI, LD Munich, Huawei v MediaTek - I
Confidentiality and confidentiality club (Article 58 UPCA, R. 262 RoP, R. 262A RoP, Article 9 Trade Secrets Directive). Whether Rule 262A VerfO also covers the situation where (without a restriction on access being imposed on one party) the parties to the proceedings are required to treat confidential information as confidential vis-à-vis third parties or the public, or whether such an obligation arises directly from a simultaneous application pursuant to Rule 262.2 VerfO, does not require a final decision. Such an obligation of confidentiality would in any case follow from the analogous application of the aforementioned provisions. 

IPPT20250513, UPC CFI, LD Düsseldorf, Sanofi v Amgen

Second medical use claims: both infringement action and counterclaim for revocation unfounded (Article 25 UPCA, Article 65 UPCA). Both claimants have standing to sue as respectively patent proprietor and exclusive licensee (Article 47 UPCA). Objections based on pleading ignorance are in principle disregarded (R. 171.2 RoP). When a party pleads ignorance, the fact is not specifically contested as required by R. 171.2 RoP. Defendants apparently derive this objection from German procedural law, ignoring that the Rules of Procedure contain no corresponding provision. Priority: “same invention” (Article 87 EPC). A claimed invention is to be considered the “same invention” as the invention in a previous application if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. Fictional novelty of (first and second) medical use claims (Article 54(4)(5) EPC). Medical use claims constitute an exception to the “normal” rules on novelty and provide a “notional novelty” by virtue of a legal fiction for substances or compositions for a specific (new) use that were already part of the prior art. Absent these provisions, a prior art disclosure of a substance would in principle be novelty destroying for a claim relating to said substance for a new use. The term “for use in”, as such, in a patent claim would normally be interpreted as the claimed product being “suitable for” the claimed use, but the scope of that claim would not be limited to said use. For (second) medical use claims, the novelty is not derived from the claimed substance or composition as such but from the claimed therapeutic use. In the case of a second medical use, a substance or composition within the meaning of Art. 54(4) EPC (for a use in a treating method = first medical use) is used for any specific use which is not comprised in the state of the art. Such a new therapeutic use can be a new indication, e.g. a disease not yet treated by the claimed substance, or an indication for a new group of patients. In order to benefit from the notional novelty afforded by Art. 54(5) EPC, second medical claims must relate to a specific use in a method according to Art. 53(c) EPC. Inventive step (Article 56 EPC). The ultimate assessment of the relevant facts and circumstances is a question of law which does not lend itself to the taking of evidence. An objective approach must be taken to the assessment of inventive step. The subjective ideas of the applicant or inventor are irrelevant. In principle, it is also irrelevant whether the invention is the result of serendipity or of systematic work involving (potentially costly and laborious) experimentation. It is only relevant what the claimed invention actually contributes to the prior art. In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated (i.e. have an incentive or in German: “Veranlassung” […]) to consider the claimed solution and to implement it as a next step (“nächster Schritt”, […]) in developing the prior art. Enabling disclosure (Article 83 EPC, Article 138(1)(b) EPC). It is the position of the Court that the subject-matter of a patent claim must be sufficiently disclosed in the patent as a whole, including the examples. It is the patent that has to demonstrate the workability of the claimed subject-matter. However, as the invention has to be disclosed sufficiently clear and complete for it to be carried out by the skilled person, the skilled person´s common general knowledge must also be taken into account when considering the question of sufficiency. In a case of a second medical use claim, the claimed “use”, which is based on a therapeutic effect, is part of the claim. Therefore, the use (including the therapeutic effect) has to be sufficiently (reproducibly) disclosed in the patent (as a whole). Infringement of a second medical use claim (Article 25(a) UPCA). For a finding of infringement of a second medical use claim, the alleged infringer must offer or place the medical product on the market in such way that it leads or may lead to the claimed therapeutic use of which the alleged infringer knows or reasonably should have known that it does. In other words, as an objective element, there must be either a prescription in order to lower Lp(a) levels, or there must be at least circumstances showing that such a use may be expected to occur. In addition, as a subjective element the infringer must know this or reasonably should have known.

IPPT20250513, UPC CFI, LD Düsseldorf, Kaldewei v Bette

Cost decision  (Article 69 UPCA, R. 156 RoP): The defendant shall reimburse the claimant for costs totaling € 84,950.00 

IPPT20250513, UPC CFI, LD Mannheim, Fujifilm v Kodak

Application for rectification dismissed (R. 353 RoP). No “obvious slip”: the declaration of the Court’s intention in the decision or order does not deviate from the intention that existed when the decision was made.

IPPT20250512, UPC CoA, Ballinno v Kinexon
Admissible appeal against security for costs order brought together with the appeal against the order on provisional measures (R. 220.2 RoP). “Decision” in R. 220.2 RoP also includes “orders” so that an appeal against a security order is admissible when brought together with an appeal against an order where an action is adjudicated. No withdrawal of the action by Ballino (R. 265 RoP). It requests that the security order be reversed and that the main order be set aside and reversed in relation to the cost decision. Action has become devoid of purpose and there is no longer a need to adjudicate on it (R. 360 RoP) after Ballino has withdrawn its request for provisional measures (injunctions, seizure of goods and penalties) on appeal, save for the appeal on security for costs. Cost Allocation (Article 69 UPCA, R. 360 RoP). Disposal of an action pursuant to R. 360 RoP can include a decision on who shall bear the costs; the review can be marginal. Unsuccessful party: party that withdraws the main requests and took the inherent risk in its procedural strategy that the urgent interest in the requests fell away before a final order was rendered  must considered as the unsuccessful party and consequently be held to bear the costs of the proceedings. An exception to this may apply where it has been established that the impugned order is based on manifest errors. Where a party, on the other hand, withdrew its requests for lack of urgent interest before a (final) order in the action was rendered, caused by circumstances it could not reasonably have foreseen, and not due to a materialisation of an inherent and foreseeable risk of a deliberate procedural strategy, equity may require a different allocation of costs.

IPPT20250509, UPC CFI, LD Hamburg, JingAo v Chint
Panel review of dismissal of security for costs by order of 2 April 2025 rejected (Article 69(4) UPCA, R. 158 RoP, R. 333 RoP). Reference can be made to the contested order for the reasons. The Defendants have not put forward any new convincing arguments. There is no experience available with regard to the enforcement of decisions on costs of the UPC in the People’s Republic of China.

IPPT20250509, UPC CFI, LD Milan, Oerlikon v Bhagat

Cost decision (Article 69 UPCA, R. 156 RoP, ): € 77.064 (instead of requested € 136.756.) The maximum limit, in accordance with the principle of proportionality, can only be reached in limited situations, for example due to the complexity of the issues involved, the number of patents examined, the parties involved or the use of several languages. As stated in previous decisions of the Court, the costs actually incurred by the necessary measure must not be disproportionate in terms of their specific amount. In particular, they must not be disproportionate to the amount in dispute, the importance of the issue, the degree of difficulty and complexity of the legal and factual issues relevant to the decision, and the prospects of success of the measure involving the costs

IPPT20250509, UPC CFI, LD Mannheim, Samsung v ZTE

The time periods for the Statements of defence are set uniformly for all Defendants at 3 July 2025 (R. 9.3 RoP, R. 23 RoP)

IPPT20250508, UPC CFI, LD Mannheim, Polidoro v Bekaert

Extension of time period for the Claimant’s Reply to the Statement of defence, the Defence to the Counterclaim for revocation and an Application to amend the patent until 19 May 2025 since access to unredacted version of the Statement of defence was delayed because of setting up of confidentiality club regime (R. 29 RoP, R. 30 RoP, R. 262A RoP)

IPPT20250508, UPC CFI, LD Munich, Sanofi v Accord

Case management judge-rapporteur deciding the order in which issues are to be resolved (R. 332(d) RoP). The Judge-Rapporteur decides to refer all pending requests to the panel for decision after the main oral hearing. The Judge-Rapporteur does not see any possibility of disposing of the entire case immediately. Since difficult procedural and substantive issues need to be decided, it's more efficient to wait for the outcome of the oral proceedings before the EPO's BoA. Moreover, if the patent in question is upheld by the BoA, the panel should only decide on these difficult issues after an oral hearing and only if they are still decisive.

IPPT20250508, UPC CFI, LD Lisbon, Boehringer Ingelheim v Zentiva

Provisional measures rejected; no imminent infringement (Article 62(1) UPCA). Imminent infringement (Article 62(1) UPCA). The UPC must assess imminent infringement independently, solely based on the interpretation of the UPCA, and not on national legislation. In that regard, the Court must evaluate the risk of infringement in light of Art. 62 and 25 UPCA. The risk of infringement cannot be established through an abstract assessment. An infringement is deemed imminent if, in light of the overall circumstances of the case, it can be concluded that the potential infringer has engaged in conduct that is likely to result in an infringement under Art. 25 UPCA. In this regard, it must be established on a case-by-case basis that the potential infringer has carried out acts that make it more likely than not that it intends to offer or place the product on the market before the patent expires […]. Imminent infringement must then be assessed from the point of view of the concrete likelihood that, in light of the circumstances of the case, the Defendant is more likely than not to commit an act of infringement. Mere issuance of a Prior Evaluation Procedure (“PEP”) does not create a risk of imminent infringement. Jurisdiction of the UPC regarding provisional measures because of alleged imminent infringement by defendant (Article 32(1)(a),(c) UPCA, Article 62(1) UPCA). It is irrelevant that an administrative entity issued the Notice from which the imminent infringement arises. According to the Applicant, the imminent infringement of its European Patent is what prompts the need for provisional measures, as the Defendant is currently in a position to offer or place its infringing products on the market at any moment. This factual assertion is, in light of the above-mentioned legal framework, sufficient to establish the jurisdiction and competence of the UPC. Provisional measures not unnecessary because of PI in national Portuguese proceedings (Article 62(1) UPCA). Not the same asserted rights (SPC instead of EP), not identical parties and different territorial scope.

IPPT20250508, UPC CFI, LD Brussels, Barco v Yealink

Application for rectification of final order dismissed (R. 353 RoP). A decision/order of the Court should be read and interpreted as a whole, the motivational part of the decision/order (grounds) being as much a part of the decision/order as its substantive part (decision).

IPPT20250508, UPC CFI, LD Düsseldorf, Grundfos v Hefei

Patent infringed (Article 25 UPCA) and valid (Article 65 UPCA). Claim interpretation of “Umschalten" (Article 69 EPC). The fact that the contested patent is also based on this understanding is already clear from the English version of the patent claim (which is not decisive for the scope of protection, however). Enabling disclosure (Article 83 EPC). That the patent specification learns nothing regarding the design of means for connecting, does not relate to the feasibility, but at most to the clarity of the claim [Article 84 EPC], which is not a ground for invalidity within the meaning of Art. 138 EPC. Novelty and prior art (Article 54 EPC). An invention is considered new if it differs from the prior art in at least one of its known features. Only that which is immediately apparent to a person skilled in the art from publication or prior use is considered to be prior art […. Findings which a skilled person only gains on the basis of further considerations or the use of further documents or uses are not prior art. Further invalidity objections – in terms of new prior art or new arguments based on already submitted prior art - introduced after the Counterclaim for revocation, constitute an amendment of the counterclaim for invalidity within the meaning of R. 263 RoP. (R. 9.2 RoP, R. 25 RoP, R. 29 RoP). Even if it can be assumed in favour of the defendant, even without an express request, that the introduction of further citations implicitly involves a request for the admission of the associated extension of the counterclaim for nullity, the defendant has not submitted any arguments which, according to R. 263(2) RoP could justify the admission of this extension of the counterclaim for annulment despite the delay. Decision of Chinese National Intellectual Property Office, in which a Chinese parallel patent was revoked on the grounds of lack of inventive step, disregarded as late filed (R. 9.2 RoP). Inventive step (Article 56 EPC). In general, a claimed solution is obvious if the skilled person, starting from the prior art, would be motivated to consider the claimed solution and, as a next step in developing the state of the art. On the other hand, it may be relevant whether the skilled person would have expected particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to combine disclosures from the prior art. A technical effect or advantage achieved by the claimed subject matter over the prior art may be an indication of inventive step. A feature arbitrarily selected from several possibilities cannot generally contribute to inventive step.

IPPT20250508, UPC CoA, Hybridgenerator v HGSystem
Change of language in appeal of limited scope from Danish to English with the agreement of the parties (Article 49(4) UPCA, R. 322 RoP). No translation of pleadings and evidence 

IPPT20250507, UPC CFI, LD Milan, Ericsson v Asustek

Withdrawal of (i) infringement action against and (ii) counterclaim for revocation by defendant Digital River’s, which is in insolvency proceedings (R. 265 RoP, R. 311 RoP). The Court finds that the principles of fairness and equity require that both Ericsson and Digital River bear their own costs in relation to these withdrawal proceedings. (Article 69(2) UPCA)

IPPT20250506, UPC CFI, LD Düsseldorf, Ona v Apple
Procedural order specifying confidential information (R. 262 RoP)
 

IPPT20250505, UPC CoA, Meril v SWAT
Impugned order granting access to pleadings and evidence (R. 262 RoP) to parties who are not represented set aside as it would compromise the representation requirement (R. 8.1 RoP). Due to inadmissible self-representation, the formal requirements for lodging a Statement of response have not been met (R. 235 RoP). A party not being allowed to represent himself or a co-applicant has to instruct an authorised representative and it is not  appropriate for him to lodge an application to change of representative pursuant to R. 293 RoP. Respondents failed to lodge a Statement of response as the submitted Statement of response is not signed by the stated new representative. Reasoned decision (R. 235.3 RoP) or default decision (R. 357.1 RoP): it is the discretion of the Court of Appeal to give a reasoned decision or a default decision. A reasoned decision (R. 235.3 RoP) is a lex specialis of the default decision (R. 357.1 RoP). This means that the remedy of R. 356.1 RoP – an application to set aside that decision within one month of service of the decision by a party against whom a decision by default has been given – applies mutatis mutandis to reasoned decisions. No compensation for costs in relation to applications for access pursuant to R. 262.1(b) RoP. Identifying confidential parts of written pleadings and evidence and requesting confidentiality is something parties may do in advance even though there may never even be a request for access.

IPPT20250502, UPC CFI, LD Düsseldorf, Evac v Shanghai VacDrain

Partial settlement regarding defendants 4 through 6 (R. 365.1 RoP)

IPPT20250502, UPC CFI, LD Brussels, OrthoApnea

Costs proceedings suspended until the UPC Court of Appeal has issued a judgment on the merits or the dispute is otherwise terminated (Article 69 UPCA, Article 74 UPCA, R. 150 RoP, R. 295(c) RoP). The Judge-Rapporteur infers that, as an exception to the general rule (starting position), the stay of cost proceedings is possible in the following cases (whether individually or cumulatively): If an appeal has been lodged against the decision on the merits by the first judge (R.295(c) RoP), the Judge-Rapporteur may suspend the proceedings ex officio; If in the light of the "proper administration of justice", it is appropriate for the judge-rapporteur to stay the costs proceedings (in application of R. 295(m) RoP); If the specific circumstances of the case indicate that the application of Article 69(1) would lead to "unfair" consequences for the "unsuccessful party" (in this case, the Respondent), it is the Respondent’s responsibility to convince the Judge-Rapporteur of these “unfair” consequences arising from an enforceable costs decision.

IPPT20250502, UPC CFI, President, Interdigital v Disney

Language of the proceedings changed from German to English, the language in which the patent was granted (Article 49(3) UPCA, R. 14 RoP, R. 323 RoP)

IPPT20250502, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience

Preparation for oral hearing (R. 105 RoP, R. 112 RoP). Late filed samples (R. 9.2 RoP). Panel will decide after the hearing on whether or not to disregard any sample made available after the closure of the written proceedings and one week before the hearing

IPPT20250501, UPC CFI, LD Düsseldorf, Aesculap v Shanghai International

Request to assign an additional technically qualified judge to the panel in summary proceedings (R. 205 RoP). Although the involvement of a technically qualified judge ex officio is only mentioned in R. 34 RoP and thus in the provisions on the main proceedings, Art. 8(5) sentence 2 UPCA grants the panel in general, and thus also in summary proceedings, the right to call in such a judge on its own initiative after hearing the parties if it considers this appropriate