2025 UPC January

IPPT20250131, UPC CFI, LD Mannheim, Rematec v Europe Forestry
Patent in suit declared null and void (Article 65 UPCA). Person skilled in the art (Article 56 EPC) is a mechanical engineer (Dipl.-Ing. (FH) or B. of Eng.) who has several years of professional experience in the development and construction of mills for grinding material. Product claim 1 lacks novelty (Article 54 EPC). All the features of device claim 1 are directly and unambiguously known from document D3. Product claim 1 lacks an inventive step (Article 56 EPC). If the panel's interpretation of feature 1d) is not followed, but instead a more extensive radial supply and removal of all the ground material through the corresponding openings is required, then D3 would not be novelty-destroying. However, in this case there would be no inventive step, since feature 1d) then results in an obvious way for the person skilled in the art from D3. The skilled person is first taught by the D3 that ‘the inlet and outlet openings can be provided practically anywhere in the direction of rotation of the rotor, one after the other, around the circumference of the rotor in the housing’ (page 11, 3rd paragraph, lines 19 to 21). For the person skilled in the art, the question as to how the inlet and outlet ports connected to the openings should be aligned in a meaningful way thus arises at the next stage, so to speak, when putting it into practice. In this respect, however, D3 opens up several options for the person skilled in the art that are in any case within his or her general technical grasp. Process claim 15 lacks an inventive step. The alignment of the discharge opening in the sense addressed by feature 15f and explained above lies here to the same extent in his general technical knowledge and, in addition, the ground material is discharged in one direction due to gravity, which can be addressed as being essentially radially oriented.

IPPT20250130, UPC CFI, LD Mannheim, Fujifilm v Kodak - II
Order setting out decisions taken at interim conference (R. 105.5 RoP). Panel inclined to deal with cross border injunction questions for the UK separately in case no final decision has been delivered by the ECJ in case 339/22 (BSH Hausgerate). The question of a possible retroactive effect of the UPCA in the light of Art 28 Vienna Convention on the Law of Treaties (VCLT) will have to be discussed, in particular if the UPCA’s substantive provisions are also applicable to acts where commitment has begun before the entry into force of the UPCA but are ongoing

IPPT20250130, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
Claimant is free to use an interpreter (Japanese) at his own expense (see R. 109.4 RoP), who may, if necessary, use the simultaneous interpretation equipment available in the court room. Does not seem appropriate that the cost of the simultaneous interpretation should become a part of the cost of the proceedings. Japanese is neither an official language of the Contracting Member States nor an official or designated language of the Local Division Mannheim, where the infringement action was filed in English.

IPPT20250130, UPC CFI, LD Munich, Adeia v Disney
Extension and shortening of deadlines with one week following party agreement (R. 9 RoP)

IPPT20250129, UPC CFI, LD Paris, C-Kore Systems v Novawell
Action concluded by way of settlement and confirmation of settlement agreement by decision of the court (R. 365 RoP, R. 11.2 RoP). Declares that the unredacted version will remain confidential (R. 262 RoP)

IPPT20250129, UPC CFI, LD The Hague, Abbott v Dexcom
Withdrawal of the action by agreement; no need for a cost decision, 20% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250128, UPC CFI, LD Munich, Qualcomm v Shenzen
Withdrawal of the action by agreement; parties bearing their own costs, 60% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Patent revoked in the territory of all Contracting Member States in which the patent has effect (Article 65 UPCA). Insufficient disclosure of the claimed invention over the complete scope of the granted claims. (Article 83 EPC, Article 138(2) EPC). As the features of the claims define the “invention” considered under Art. 138(1)b) EPC, a technical effect is to be taken into account in assessing sufficiency only if it is explicitly claimed. Cross border jurisdiction UPC over defendant domiciled in UPC Contracting Member State regarding infringement of UK part of a European patent (R. 20 RoP, Article 4 Brussels Regulation, Article 24 Brussels Regulation). This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case. Claim interpretation (Article 69 EPC, Protocol). The terms used in a claim should be given their broadest technically sensible meaning in the context of the claim in which they appear. A narrowing interpretation of the claims (“Auslegung unterhalb des Wortlauts”) based on the description or drawings should generally not be permitted. convincing reasons based on the circumstances of the individual case in question required. Novelty-destroying Implicit disclosure (Article 54(1) EPC). Implicit disclosure means no more than the clear, immediate and unambiguous consequence of what is explicitly mentioned. An alleged prior art disclosure of a feature can be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed. "Implicit disclosure", however, does not only mean information that the skilled person can unequivocally derive from a cited document in addition to what is explicitly described therein. [...] , “implicit disclosure” means any feature which a person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws. A feature is also implicitly disclosed if, in carrying out the teaching of a prior-art document, the skilled person would inevitably arrive at a result falling within the terms of a claim. Added matter (Art. 123(2) EPC). The correct question to be asked when evaluating compliance with Art. 123(2) EPC is whether the subject-matter of an amended claim is directly and unambiguously taught to the skilled person by the original application. A direct teaching requires that the subject-matter is originally taught as specific, clearly defined and recognizable individual embodiment, either explicitly or implicitly, without the necessity of applying any deductive skills. The correct question to be asked is therefore not whether a skilled person would merely consider the subject-matter of an amended claim as falling within the scope of an originally disclosed broader teaching, but whether the skilled person would immediately and without any doubt understand that said subject-matter of an amended claim is a specific, individualized embodiment which is also originally disclosed as such.

IPPT20250127, UPC CFI, LD Munich, Snowpixie v Golf Tech
Order to provide security for costs  of € 62.600 by a small enterprise (R. 158.5 RoP). Based on Commission Recommendation 2003/361/EC of May 6, 2003, concerning the definition of micro, small, and medium-sized enterprises (OJ L 124, May 20, 2003, p. 36; for the application of this Recommendation, see ECJ, Judgment of March 10, 2021 – C-572/19 P), is at least a small enterprise in view of its turnover and number of employees. Particularly in the case of small enterprises, care must be taken to ensure effective access to justice. Any required security deposit must therefore be set at a level that allows for effective access to justice and prevents the enterprise’s action from being dismissed by default judgment due to a security deposit it cannot afford (Rule 158.5 RoP). If a small business reports an operating loss in its most recent annual accounts and there are insufficient assets available as security, a security deposit must be ordered in accordance with Rule 158 of the RoP at the request of the opposing party. When determining the amount of the security deposit, considerations of equity that will be relevant to the subsequent assessment of costs must be taken into account. This is because the assessment of the security must be based on the costs to be fixed in accordance with Article 69 of the UPCA; under Article 69 of the UPCA, considerations of equity may preclude the bearing of costs in whole or in part. A party who is able to pay both their own costs (court fees and legal representation costs) and a security set by the court is capable of bearing the costs. Legal aid cannot be granted in this case

IPPT20250127, UPC CFI, LD Munich, Avago v Realtek
Withdrawal of request for provisional measures (R. 205 RoP, R. 265 RoP). By analogy reimbursement of 20% of court fees (R. 370.9 RoP)

IPPT20250127, UPC CFI, LD Munich, Avago v Tesla
No party objections. Access granted (R. 262 RoP) to the pleadings and annexes filed in the workflow of the invalidity counterclaim CC_581177/2023 UPC_CFI_52/2023. This does not concern access to the file of the infringement proceedings or other workflows.

IPPT20250127, UPC CFI, LD Munich, Lenovo v ASUSTek - II
Scheduling and preparing interim conference of 25 September 2025 (R. 103 RoP) and scheduling oral hearing at 19 November 2025 (R. 108 RoP)

IPPT20250127, UPC CFI, LD Munich, Lenovo v ASUSTek - I
No bifurcation, request to assign technically qualified judge (Article 33(3)(a) UPCA). 

IPPT20250124, UPC CFI, LD Paris, Photon Wave v Seoul Viosys
Standalone action for revocation by intervener is inadmissible before the present Division in the case at hand (Article 33(3) and (4) UPCA, R. 316A RoP). The Court notes that the intervener will still have the possibility of acting independently before the UPC to challenge a patent that is, in his view, invalid, but outside the context of an infringement action pending before the local division seized of an action that is currently at the interim conference stage. 

IPPT20250124, UPC CFI, LD Munich, Headwater v Samsung
Superfluous request for confidentiality order as a confidentiality order is already in place (R. 262A RoP). All subsequent pleadings require only that the confidential information subject to a 262A order be greyed out in the unredacted version of the pleading, that a redacted version be uploaded, and that the pleading be accompanied by a Rule 262.2 application. The latter ensures that the CMS alerts CMS users to the confidential nature of the information. Leave to change claim of amend case granted (R. 263 RoP) pending a further review of the reasons for Samsung to late file some invalidity arguments. If the late filed arguments are accepted Headwater has already been given a chance to comment and to amend pleadings. If the late filed arguments are rejected no harm has been caused by allowing the amendments. This issue will be further discussed in the Interim Conference scheduled for 28 February 2025.

IPPT20250124, UPC CFI, LD Milan, Dainese v Alpinestars
Confidentiality club regime (R. 262A RoP): (a) the number of persons included in the confidential club must not exceed the number necessary to ensure that the rights of the parties to the proceedings to an effective remedy and to a fair trial are respected, and must include at least one natural person from each party and their respective lawyers or other representatives; (b) the minimum content of the information contained in the exhibit No. 70 is non-technical and does not require special expertise to understand. Those considerations suggest that the number of subjects admitted to the Club should be kept to a minimum. The Court therefore considers that the confidential club should include the following: As lawyers or other representatives from the defendant n. 1 and 6; […] as natural person: […]

IPPT20250124, UPC CFI, CD Paris, Microsoft v Suinno – IPR-EPO
Access to register of pending proceedings denied (Article 45 UPCA, R. 262 RoP). The interest in protecting of the integrity of the ongoing proceedings outweighs the interest in accessing information asserted by the applicant, prevails. The mere fact of being interested in the outcome of a specific legal issue, concerning the interpretation of statutory provision of the ‘UPCA’, which is debated before the Court may not be sufficient to grant access to the case file where the interests mentioned in Article 45 ‘UPCA’ were deemed to be more relevant.

IPPT20250124, UPC CoA, DexCom v Abbott - II
Withdrawal of action by party consent (R. 265 RoP). With the closure of the proceedings, the impugned decision will become ineffective. 

IPPT20250124, UPC CoA, DexCom v Abbott - I
IPPT20250124, UPC CoA, DexCom v Abbott - III
Withdrawal of action by party consent (R. 265 RoP). The applications to withdraw the infringement action and the counterclaims for revocation are admissible since there is no final decision in the actions in view of the pending appeal, and the Court of Appeal is responsible for deciding on the permissibility of the applications for withdrawal. With the closure of the proceedings, the impugned decision will become ineffective. The conditional application to amend the patent is ancillary to the appeal, and withdrawal of the counterclaim for revocation has the effect of rendering requests for amendment of the patent ineffective. 

IPPT20250124, UPC CFI, LD Munich, NEC V TCL
Withdrawal of counterclaim for revocation and counterclaim for a FRAND-license offer; parties bearing their own costs, 60% of court fees reimbursed (R. 265 RoP, R. 370 RoP). Analogous application of Rule 370 RoP to a counterclaim for a FRAND-license offer. The UPC is not based on the principle of free proceedings, but the parties contribute for the costs incurred by the Court (Article 36(3) and 70 UPCA) 

IPPT20250122, UPC CFI, CD Paris, NJOY v VMR

EP 453 maintained in part based on claims 6, 7 and 8 in combination with claim 1 as granted (Article 65 UPCA). Admissible new documents Claimant (R. 44 RoP, R. 263 RoP). The claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or affecting inventive step in subsequent written acts. The claimant must specify in the statement of claim the facts that it considers necessary to prove in order to succeed in its claim, together with the relevant evidence. In certain situations, following the defence raised by the defendant, the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. In this case, the need to respond to the defendant's defence, the terms of which cannot be foreseen ex ante by the claimant, justifies the introduction of such new facts in the reply to defence to revocation. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court. The documents introduced by the Claimant in the Reply to defence to revocation – consisting of the declaration released by […] and of the documents referred to in that statement are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and [….] opinion, filed in support of these latter arguments. The admissibility of these late filed documents shall also extend to arguments that, while not constituting a direct response to the Defendant’s arguments, are closely related to them. Late filed auxiliary requests (R. 44 RoP. R. 263 RoP) Insufficient justification by change in strategy regarding coordination with EPO proceedings. The Defendant for the first time in the submission of 30. July 2024 indicated that it (now) wishes to coordinate its defence in both parallel proceedings. The Defendant had not indicated in the Defence to Revocation that the auxiliary requests filed at the time were filed with the aim to coordinate its defence in both parallel proceedings. The Court considers the reason provided with the submission of 30. July 2024 as a change of the strategy of the Defendant. For these reasons, the subsequent requests are inadmissible. Alternative request to maintain the patent at suit with respect to one or more of its dependent claims is a sufficiently clear request (Article 65 UPCA), even if it does not specify a particular claim, and, as such, imposes on the Court the obligation to rule on the matter and decide which claims, if any, remain valid. Common general knowledge (Article 56 EPC). The ‘CGK’, in general, is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. A familiar source of information typically is a source to which a skilled person regularly turns for guidance on standard design solutions that are generally applicable, such as standard textbooks, encyclopaedias, manuals, handbooks, dictionaries and databases which the skilled person knows and can use as a suitable and reliable source for the respective information in the respective technical field. A familiar source of information should not be confused however with all publicly available prior art documents. In any case, the ‘CGK’ is subject of evidence (Article 54 UPCA)

IPPT20250122, UPC CFI, LD Munich, Sanofi v Accord

Order setting out decisions taken at interim conference (R. 105.5 RoP). Sanofi is invited to remedy the deficiencies in the formal submissions and to explain within 7 days exactly who is asking what of whom in what territory and why

IPPT20250122, UPC CFI, LD The Hague, Mammoet v P.T.S.
Ex parte order for preserving evidence at former supplier, non-cooperating after cease-and-desist letter: detailed description, physical seizure, preservation in print or copy of digital media; written report within ten business days from the date of execution of the order (Article 60.5 UPCA, R. 196 RoP, R. 197 RoP). Representatives only confidentiality club as requested: access to the Written Report is initially limited to the representatives of the Defendant only (R. 262A RoP). Lower threshold for preservation of evidence than for provisional injunction (R. 196 RoP, R. 211 RoP).Degree of certainty required for the granting of an application for the preservation of evidence and description (R.190, 196 RoP) is lower than the threshold for the granting of an injunction as a provisional measure (R.211 RoP) as the former is also meant to collect evidence for further actions. Demonstrable risk of evidence being destroyed as the capture of data is one of the Applicant’s targets and it is generally accepted that digital data can be easily hidden or erased if previous notice is given of this kind of application, as is also mentioned above. Mammoet’s fear that evidence can easily be removed if the Defendant is informed or heard before the measure, is thus considered justified.

IPPT20250122, UPC CFI, LD Mannheim, Fujifilm v Kodak
Preliminary views and questions for oral hearing (R. 105.5 RoP). Cross border injunction for UK? Panel is inclined to deal with the questions concerned in a separate proceeding after the separation of cases and stay such separate proceeding until a decision has been delivered by the ECJ (Case C-339/22, BSH Hausgeräte v Electrolux). Possible retroactive effect of the UPCA in the light of Art 28 Vienna Convention on the Law of Treaties (VCLT) will have to be discussed, in particular if the UPCA’s substantive provisions are also applicable to acts where commitment has begun before the entry into force of the UPCA but are ongoing.

IPPT20250121, UPC CFI, LD Munich, air up v Guangzhou Aiyun
Not necessary to attempt to serve decision by default in accordance with R. 274 RoP before an order that steps  taken is good service (R. 275.2 RoP) where the application for a provisional measure could not be served in accordance with R. 274 RoP and there is no indication that the decision by default can be served in accordance with R. 274 RoP. Pursuant to the principle of effective legal protection it must always be possible to establish good service, at least in accordance with R. 275.2 RoP . Consequently, neither the ordering nor the enforcement of provisional measures under Article 62 UPCA can be frustrated by the fact that an application for a preliminary injunction or a court order issued in accordance with such an application cannot be served.

IPPT20250121, UPC CFI, LD Düsseldorf, Maxeon Solar v Aiko Energy
No rectification unredacted version confidentiality club order (R. 353 RoP, R. 262A RoP). No “obvious slip” nor any other clerical mistake. In the “unredacted version” it contains the name of the natural person of Defendant 7. to whom access was granted. It is only in the “redacted version” that this name is deleted and replaced by “[…]”

IPPT20250121, UPC CFI, RD Nordic-Baltic, Edwards v Meril
Withdrawal of application for access to pleadings and evidence. No reimbursement of legal costs (R. 265 RoP). There is no legal basis for ordering a member of the public, who has made a request for access to written pleadings and evidence, to reimburse legal costs incurred by the parties to the relevant proceedings when they are consulted by the judge-rapporteur in accordance with Rule 262.1(b) RoP. 

IPPT20250121, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Revocation action dismissed (Article 65 UPCA).  Court not convinced that it would have been obvious to suggest the claimed vaporizer, regardless of ‘Cross’ being combined with an alleged common general knowledge or with ‘Lee’. To asses inventive step (Article 56 EPC) it is first necessary to determine one or more realistic starting points in the state of the art which would be of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop a product or process similar to that disclosed in the prior art. In particular, realistic starting points are the documents which disclose the main relevant features as those disclosed in the challenged patent or which address the same or a similar underlying problem. Against this background, ‘Cross’ is not a suitable starting point for the evaluation of inventive step. Admissibility of late filed assertions and late filed evidentiary documents (R. 263 RoP, R. 32 RoP).. The documents introduced by the claimant in the reply to defence to revocation – including the declaration released by […] and the documents referred to in that statement – are admissible, given that they contain arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by defendant in its defence to revocation and the evidence […] filed in support of these latter arguments. The admissibility of these late filed documents shall also extend to arguments that, while not constituting a direct response to the defendant’s arguments, are closely related to them. Individual line of arguments to use the combination of ‘Pan’ with either ‘Duke’, ‘Tucker’ or ‘CAS’ considered late filed as it was not raised in the statement for revocation, but only in the reply to the defence and hence must be disregarded.

IPPT20250120, UPC CFI, LD Paris, NJ Diffusion v Gisela Mayer
Evidence is not set exhaustively in R. 170 RoP. The measure requested by NJ consists of simple findings and not experiments within the meaning of Rule 201 RoP. The Court considers that the requested probatory measure is unnecessary in that it aims to show the said wigs in detail, whereas enlarged photographs of these wigs appear in NJ's reply brief, as indicated by the defendant. 

IPPT20250120, UPC CoA, SharkNinja v Dyson
Inadmissible application for cost decision following decision on provisional measures. An application for a decision for costs can only be lodged within one month after the service of the decision on the merits. (R. 150 RoP). If the applicant does not start proceedings on the merits of the case pursuant to R. 213 RoP, for example, if the application for provisional measures was unsuccessful, R. 150 and 151 RoP do not appear to be applicable, at least on a strict literal reading. However, to fulfil the objectives of Art. 69(1-3) UPCA that the successful party can have its reasonable and proportionate legal costs and other expenses compensated by the unsuccessful party, an application of R. 150 and 151 RoP mutatis mutandis would be justified in that situation.

IPPT20250120, UPC CFI, RD Nordic-Baltic, Abbott v Dexcom
Withdrawal of action by party consent (R. 265 RoP) 

IPPT20250120, UPC CoA, Amazon v Nokia- II
Penalty payment sanction (Article 82(4)UPCA) on a confidentiality order (Article 58 UPCA) can only be imposed on a party, but not against their representatives, which does not exclude the parties' liability for infringements by their representatives. Insofar as the requests relate to court staff, there is also no legal basis, since neither Rule 262 nor Rule 262A RoP is applicable with regard to court staff. It should also be noted that court staff are subject to a duty of confidentiality that extends beyond their period of service, in accordance with Article 5.3 of the Staff Regulations of Officials and other servants of the Unified Patent Court. 

IPPT20250120, UPC CoA, Amazon v Nokia - I
A confidentiality order encompasses appeal proceedings, unless the order provides otherwise (R. 262A RoP)

IPPT20250117, UPC CFI, LD Munich, Sanofi v Accord
Sanofi Mature IP replaced by Sanofi SA in the present and all related proceedings (without objection) (R. 305 RoP). On 29 September 2024, the Sanofi group reorganized its group of companies, and Sanofi Mature IP has been dissolved without liquidation as all the shares of Sanofi Mature IP came to be held by its single shareholder, Sanofi SA. This resulted in the universal transfer of assets of Sanofi Mature IP to Sanofi SA, including the ownership of EP 466. 

IPPT20250117, UPC CFI, LD Brussels, OrthoApnea
No patent infringement: neither literal nor by equivalence (Article 25 UPCA). The assessment of the scope of protection of a patent is in two stages (Article 69 EPC, Interpretation Protocol). In the first stage, the literal infringement must be assessed on the basis of the characteristics of the patent in the light of the interpretation of the claims. In a second stage, if it is judged that no literal infringement can be assumed and provided that this is invoked, the infringement will be assessed by equivalence. No literal infringement (Article 69 EPC). In the NOA the closing of the mouth is not further prevented (or limited) by a ‘stop’ and ‘contact surface’ in the sense of claim 1. No infringement by equivalence (Article 2, Interpretation Protocol). In the absence of technically functional equivalence, irrespective of the test used (the ‘function-way-result’ test or the ‘insubstantial differences’ test), there can be no infringement because of equivalence. In NOA, the connecting elements (and the corresponding parts of the elements) do not have this function, which is to prevent the mouth from closing any further. In NOA, the complete closure of the mouth is prevented by the upper and lower parts of the device coming together. In this case, it is not the coupling elements that have the function of preventing further closing of the mouth, but the upper and lower parts in the occlusal plane. Start of proceedings on the merits is the date of uploading the (Dutch-language) Statement of Claim in the CMS (R. 198.1 RoP) 
 

IPPT20250117, UPC CFI, CD Paris, NJOY Netherlands v Juul Labs
Patent revoked because of ‘added matter (Article 65 UPCA)(Article 138(1)(c) EPC). It extends beyond the content of the European Patent Application as filed (MWE 3) and beyond the content of the parent application (MWE 4). Person skilled in the art of vaping devices (Article 56 EPC) is a mechanical engineer with either a Bachelor’s degree or as Master’s degree in mechanical engineering and several years of experience in the technical field of electronic inhalable aerosol devices or electronic vaping devices, who may be assisted by an electrical engineer for those issues that relate to the electrical circuitry implemented in electronic inhalable aerosol devices or electronic vaping devices that he himself cannot handle Claim interpretation “the heater is attached to a first end of the FSC” and “the mouthpiece is attached to a second of the FSC” Article 69 EPC). Auxiliary requests.  Late filed auxiliary request 2b (R. 30. 2 RoP). Auxiliary request 2c allowed by discretion of the Court (R. 9.2 RoP) and will not disregard the auxiliary requests 1 to 12 filed by Defendant on 30 October 2024.  Requests to review 65 auxiliary requests to be rejected as unreasonable in number in the circumstances of the case (R. 30.1 RoP, R. 50.2 RoP). In the particular case, the proposed twelve conditional amendments that form the twelve auxiliary requests of request are considered to be the upper limit of what can be considered reasonable. Auxiliary request 2d unallowable because it is unclear and not supported by any arguments from the defendants. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims Defendant would want the Court to examine under request (2) d. in which order. 
 

IPPT20250116, UPC CFI President, BF exaQC v NVIDIA
Application to change the language of the proceedings from German to English dismissed (Article 49 (5) UPCA, R. 323 RoP). Given its financial resources and logistical support, NVIDIA has the capacity and means to conduct proceedings in a foreign language – especially since this applies to only one of the Defendant – without significant inconvenience. 

IPPT20250116, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Bifurcation: parties agree and most practical solution (Article 33(3) UPCA). As the oral hearing is already scheduled by the Central Division – and its date is approaching within the next two to three months – a referral of the counterclaim to the Central Division appears to be the most practical solution to avoid inconsistent decisions and duplication of work on validity (comp. LD Munich, 02.02.2024). No stay of infringement action (R. 296.3 RoP). A stay of proceedings would lead to the consequence that all time-limits are automatically suspended and shall begin to run afresh from the date the stay comes to an end, R. 296.3 RoP. As a Statement of defence is still due for Defendant 1) and Defendant 5), it is for the time being favourable to proceed with the infringement action as a whole. Furthermore, a decision on the Defendant 5)’s preliminary objection dated 16 December 2024 under R. 19.1(a) is still pending. For the sake of efficiency of the proceedings the panel takes, as indicated by the judge-rapporteur in his preliminary order 10 December 2024, the expected time line for the issuing of a final decision of the Central Division into consideration.

IPPT20250116, UPC CoA, Fives v REEL
The Court’s competence (or jurisdiction) includes a separate action for determination of damages after a national court - before entry into force of the UPCA - has established the existence of an infringement of a European patent and an obligation in principle for the infringer to pay damages (Article 32(1) UPCA). The wording of Art. 32(1)(a) UPCA is inconclusive; […], while […] the rationale behind Art. 32(1)(f) UPCA speaks in favour of jurisdiction of the UPC for separate damages actions, when the infringement has been established by a national court. The Brussels Regulation is not relevant to the question of interpretation of Art. 32(1)(a) UPCA. Art. 71b Brussels Ia Regulation only regulates the international jurisdiction of the UPC in relation to the courts of non-contracting Member States. Through Art. 68 UPCA, the UPC has its own damages provisions. If an action is lodged with the UPC, within its jurisdiction and encompassing a damages request, there is by consequence a complete set of substantive rules applicable insofar as the European patents of the CMSs are concerned. They are subject to uniform substantive law and procedural rules. The Rules provide for adjudication in – at the very least – one type of scenario, where the existence of an infringement will not have to be assessed in law and in fact by the Court. There does not seem to be a reason to treat the situation in the present case differently.

IPPT20250116, UPC CoA, Bhagat v Oerlikon
No suspensive effect of appeal justified (R. 223 RoP, R. 25 RoP) by (i) a judgement to be expected ‘very soon’ in parallel proceedings, to which Bhagat is not a (intervening) party, and (ii) an unsubstantiated statement that there are “considerable doubts” as to the validity of the patent while no counterclaim for revocation has been filed in the first instance 

IPPT20250116, UPC CFI, LD Hamburg, Avago v Tesla
Withdrawal of action, pending appeal (R. 265 RoP). If a case is pending before the court of appeal, the court of appeal has jurisdiction to decide on the admissibility of the applications for withdrawal. However, the situation is different for the request for the determination of the costs to be refunded under Rules 150 RoP. This is currently still pending at first instance, with the result that the court of first instance still has jurisdiction to allow its withdrawal, in accordance with the rules on the procedure for the determination of costs before the Judge-Rapporteur. In any case, Rule 265 RoP applies mutatis mutandis to the proceedings for the determination of costs, even if there is no explicit reference to that rule. Since this is not a measure of the direction of proceedings under Rules 331 et seq. RoP, but a substantive decision within the original jurisdiction of the Judge-Rapporteur under Rule 156.2 RoP, the Judge-Rapporteur also has original and sole jurisdiction to allow the withdrawal

IPPT20250115, UPC CFI, LD Vienna, Swarco v Strabag
Patent infringement (Article 25 UPCA). All features of claim 1 are used in the optical unit. Invalidity objection (subject-matter extends beyond the application as filed, Article 123(2) EPC)) not addressed in terms of content since no counterclaim for revocation was filed (R. 25 RoP, R. 42 RoP). No (definitional) limitation of the skilled person’s understanding of the term ‘converging lens’ (Article 69 EPC). Neither the description nor the US patent support a limitation of feature M4 or the understanding of the skilled person that only spherical collecting lenses are to be covered by the patent in suit. […] the skilled person understands the term ‘converging lens’ to mean not only (restrictively) a spherical lens, but also an aspherical lens. A converging lens must be able to focus light at a focus point of the lens. For this technical function, it is not absolutely necessary for the lens to be perfectly spherical (see the remarks in 2.3.2 on the characteristic M10). According to the description of the patent in suit, a diffusing structure or surface is to be understood – contrary to the defendant's view – not as part of the light-conducting rod, but as an optically effective structure in the area of the converging lens (5) (see [0054] and also [0053] and Figure 4 / feature M13). According to the wording of the UPCA, the definitive removal from the channels of commerce is an independent measure, separate from the recall (Article 64(2)(d) and 4 UPCA). It accompanies the recall, whereby removal is only considered if the infringer has the factual and legal possibilities to do so. The wording of specific and sufficiently particular measures must be based on this. No apparent reasons that would make publication of the decision necessary (Article 80 UPCA). When exercising discretion, the purposes of deterring future infringers and raising public awareness, as pursued by Art 80 UPCA, must be taken into account. The patent proprietor's (plaintiff's) interest in prevention, which goes beyond the specific infringement case, must be taken into account when weighing up the interests of the parties to the proceedings. Intervener also treated as a party with regard to the bearing of legal costs; in this case 20% indicative (Article 69(2) UPCA, R. 315.4 RoP). In the present case, the intervener's statement of 19 August 2024 caused the plaintiff relatively little expense because the written proceedings had already been completed for her at that time.

IPPT20250115, UPC CFI, LD Milan, Dainese v Alpinestars
Instead of staying the proceedings, the deadline for the statement of defence and any counterclaims is extended to 27.2.2025 (R. 9 RoP, R. 295 RoP) because of oral hearing in the EPO appeals proceedings scheduled for 13 February 2025: allows for a more overall procedural efficiency, on one hand not staying this proceedings – in the power of the Court - and on the other hand waiting for the upcoming EPO’s decision. Possibility of further exchange of written pleadings (R. 36 RoP) On a reasoned request by the other parties, both the plaintiff and the other defendants, they may be granted a period within which to submit their observations on the EPO's decision, in accordance with the procedural faculty provided for in Rule 36 of the Rules of Procedure. It follows that the solution adopted does not violate the adversarial principle and complies with the equality of the parties in the right of defence;

IPPT20250115, UPC CFI, LD Munich, NEC V TCL
Withdrawal of the action by agreement; parties bearing their own costs, 60% of court fees reimbursed (R. 265 RoP, R. 370 RoP)

IPPT20250115, UPC CoA, Avago v Tesla
Withdrawal of appeal by party agreement (R. 265 RoP). The court of appeal has jurisdiction to decide on the admission of the applications to withdraw. Court of appeal has the authority, in the event of the admission of the withdrawal, to declare the proceedings terminated in accordance with R. 265.2(a) RoP and to make a decision on costs. No need for cost decision as both parties waive a decision on costs and the application for a cost decision before the Hamburg Local Division has been withdrawn. The withdrawal of the revocation counterclaim has the effect that the requests for amendment of the patent become irrelevant. Against this background, there was no need for a separate authorisation of the withdrawal of the requests for amendment of the patent. 

IPPT20250114, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Revocation action unfounded, patent infringed. Direct infringement of product claim (Article 25(a) UPCA) even though voice control feature requires activation. If a device in the offered or offered or sold is not yet suitable for making use of all the features of the patent claim because the customer must first activate certain functions, the alleged infringer must accept responsibility for the conduct of his customers if he instructs them to activate the device in such a way or if he deliberately exploits such activation by the customer in the knowledge that such activation will take place. even when voice control feature must be activated. Indirect infringement of process claim (Article 26(1) UPCA). The defendants advertise the suitability of the challenged embodiment for additional speech output in all search phases. It is therefore obvious not only from the circumstances that the defendants know that the challenged embodiment is objectively suitable for use in a manner infringing the patent, but also that customers of the challenged embodiment will use it to carry out the method according to the patent. The defendants should therefore have been aware in any case of the objective suitability for use in accordance with the patent and the intention of the users to use it. Destruction has to reliably prevent the entry or re-entry of the products into the market (Article 64(2)(e) and (4) UPCA). A software-based deactivation of the voice control could only speak against a destruction if it were ensured that the infringing devices could not be converted back into a patent-infringing state when such a solution was used and then placed on the market. No publication of the decision (Article 80 UPCA)  requires that the plaintiff's interest in the publication outweighs the necessary consequences of such publication for the defendant. As a rule, such publication is only considered if the plaintiff's protection is not already guaranteed by other measures.

IPPT20250114, UPC CFI, CD Paris, Bentley v Network Systems
Withdrawal of an action (Rule 265 (1) RoP) does not require the express consent of the opposing party. It is sufficient that the party was given an opportunity to comment on the withdrawal and did not object within the time limit set by the Court. In the absence of an application for costs, the Court should not rule on costs and therefore no decision under Rule 265(2)(c) RoP has to be issued.

IPPT20250114, UPC CFI, LD Munich, Sanofi v Accord
Confidentiality club regime (R. 262A RoP). Witness's personal details and copy of his passport do not qualify as confidential information under Rule 262A RoP. The witness's personal data are protected against disclosure to third parties by the mechanism provided for in Rule 262 RoP. Remaining information qualifies as confidential information. They relate to details of the remuneration and accounting between the various members of the Sanofi group in respect of the licence agreements relating to the patent in suit and to commercial figures relating to actual sales and profits generated by the licensed product; the tables in Appendix No. 1, the information corresponding to the “number of boxes sold to third parties” and the “net sales to third parties”, for each year and each country; : information in license agreement providing details of the accounting and handling within the sub-licensee framework and details of the accounting and handling within the sub-licensee framework. Limited club membership. At least one natural person must have access for each party to the proceedings. If there is more than one defendant and therefore more than one party, each of them is entitled to nominate a natural person ("one natural person from each party"). In addition, according to the wording of the law, access must be granted to all lawyers or other representatives of these parties to the proceedings. There is no numerical limit.

IPPT20250114, UPC CoA, Total Semiconductors v Texas Instruments
Justified to allow discretionary review in appeal of orders of the judge-rapporteur (absent panel review) (R. 220.3 RoP, R. 333 RoP). The question whether the judge-rapporteur could decide alone on security for costs of a party and deny leave to appeal is an access to justice issue which the Court of Appeal can raise of its own motion. Possible for judge-rapporteur or the presiding judge to order security for costs. R. 158 RoP does not exclusively reserve orders on security for costs for a panel of the Court. This flexibility allows the judges to organise the proceedings in the most efficient and cost effective manner. Order on security for costs (R. 158 RoP) must be considered a case management order, making it subject to review by the panel (R. 333.1 RoP). System implies a broad interpretation of “case management decision or order”. Judge-rapporteur not competent to decide on leave to appeal in his order on security for cost (R. 158 RoP, R. 220.2 RoP, R. 333.1 RoP). Would circumvent the system with panel review. It is therefore only the panel, after panel review, that can decide on leave to appeal. 

IPPT20250113, UPC CFI, LD Munich, 10x Genomics v Nanostring
Proceedings have been stayed as agreed by the parties until the date of the decision of the Opposition Division of the EPO (R. 295 RoP). Panel review of order of judge-rapporteur to limit the number of auxiliary requests to a one-digit number (R. 30 RoP, R. 333 RoP). If the outcome of the proceedings before the EPO is to be reflected and taken into account in the present proceedings and therefore the present proceedings were ordered to stay, it must be possible for Claimant 2) to adjust his auxiliary requests in the present proceedings according to the decision of the Opposition Division. It is not possible at this stage to assess what number of auxiliary requests will ultimately be considered reasonable. Claimant 2) is ordered to submit his auxiliary requests within 20 days after the decision of the Opposition Division of the EPO.

IPPT20250113, UPC CoA, Magna v Valeo
Withdrawal of action upon application by Valeo (holder of preliminary injunction) with the consent of the appellant (Magna) (R. 265 RoP). In view of Magna’s consent, Magna cannot be considered to have a legitimate interest in the action being decided by the Court. No need for a decision on costs: parties have agreed that neither party shall file an application for reimbursement of costs versus the other party.

IPPT20250113, UPC CFI, LD Munich, Avago v Realtek
The withdrawal of the application for interim measures possible (R. 265 RoP, R. 212 RoP), since unserved ex parte order of 9 December 2024  prior to final decision upon review of granted ex parte order of 9 December 2024 is not a decision terminating the proceedings as the time limit for review has not yet begun to run. Applicant is to bear the costs of the proceedings for the grant of interim measures as a result of the withdrawal.

IPPT20250113, UPC CFI, LD Munich, Huawei v Netgear
Withdrawal of the provisional measures; each party shall bear its own costs,  Security released (R. 265 RoP,  R 158 RoP) 

IPPT20250110, UPC CFI, LD Munich, Huawei v Netgear II
IPPT20250110, UPC CFI, LD Munich, Netgear v Huawei
IPPT20250110, UPC CFI, LD Munich, Huawei v Netgear
Withdrawal of the infringement action and counterclaim for revocation; each party shall bear its own costs, 40% of court fees reimbursed  (R. 265 RoP, R. 370 RoP)

IPPT20250110, UPC CFI, LD Paris, HP v Lama
Parties’ request for a 50% increase in the ceiling for representation cost denied (Article 69 UPCA, R. 152 RoP). No particularly complex case; pre-trial settlement costs not considered; each party owes € 7,500 euros in legal costs.

IPPT20250110, UPC CFI, LD Munich, Edwards Lifesciences v Meril
No legal basis for interest on reimbursable legal costs and other expenses (Article 69 UPCA, R. 156.2 RoP). A corresponding application of Rules 125 and 131 RoP, which govern the procedure for setting damages and compensation and expressly provide for interest, is ruled out. No provision for judge-rapporteur to grant leave to appeal from a cost decision. According to Rule 221 RoP, a party adversely affected by a decision referred to in Rule 157 RoP may, within 15 days of notification of the relevant decision of the Court of First Instance, file an application for leave to appeal with the Court of Appeal. 

IPPT20250110, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Withdrawal parties bearing own costs (R. 265 RoP). No partial reimbursement of court fees applied for (R. 370.RoP). The decision follows the parties’ jointly expressed will. Insofar as R. 265.2 (c) RoP requires a decision on costs in accordance with Part 1, Chapter 5 RoP, the decision takes into account the agreement reached between the parties. At present, no party has filed an application for a partial reimbursement of court fees (R. 370.11 RoP in conjunction with R. 370.9 (b) (i) RoP), so that no such order could be made.

IPPT20250110, UPC CFI, LD Munich, Abbott v Dexcom
IPPT20250110, UPC CFI, LD Munich, DexCom v Abbott
Withdrawal and cost decision (R. 265.2(c) RoP). When admitting the withdrawal, the Court issues a decision on costs in accordance with Part 1, Chapter 5. A request by a party is not required in this respect. The parties' mutual consent may be taken into account in the cost decision.

IPPT20250109, UPC CoA, Abbott v Powell
Appeal dismissed, rightly granted access (Article 45 UPCA, R. 262 RoP). A ‘reasoned request` in R.262.1(b)RoP means a request that not only states which written pleadings and evidence (…) the applicant wishes to obtain, but also specifies the purpose of the request and explains why the access to the specified documents is necessary for that purpose, thus providing all the information that is necessary for the judge-rapporteur to make the required balance of interests. Once the CFI has concluded the proceedings, there is generally no reason to protect the integrity of the CFI proceedings, regardless of whether the CFI decision or order deals with all the arguments and evidence in the case or not; irrespective of whether the rendered order concerns provisional measures of the information or evidence ia also subject to other proceedings.

IPPT20250109, UPC CoA, Dish v AYLO
Partial refund (60%) of court fees in the event of withdrawal of the appeal before the conclusion of the written proceedings. An application for reimbursement of court fees is only provided for in the cases listed in Rules 370.9 and 370.10 RoP. Just as R. 265 RoP applies by analogy in the event of the withdrawal of the appeal (…), R. 370.9(b)(i) RoP applies mutatis mutandis in the event of the withdrawal of the appeal. The Rules of Procedure do not provide for the possibility of a further refund in the event of the withdrawal of the appeal.

IPPT20250109, UPC CFI, LD Munich, air up v Guangzhou Aiyun
Provisional measures ordered -  decision by default (R. 211 RoP, R. 355 RoP, Article 37 Statute). The application was served to the defendant in accordance with Rule 275.2 RoP (App_64018/2024). Within the letter of service, defendant was informed that a decision by default may be issued, if within the time limit foreseen by the Court defendant fails to take a step. Defendant did not respond. 

IPPT20250109, UPC CFI, CD Paris, ITCiCo Spain v BMW
Required explanation for setting aside a decision by default requires unforeseeable circumstances or force majeure (R. 356(2) RoP) means that the applicant must demonstrate that they were unable to comply with peremptory time limits or to appear at the oral hearing at which they were summoned (except as provided for in Rule 116 and 117 ‘RoP’) due to reasons beyond their control and therefore that the default is not attributable to their own fault but was caused by unforeseeable circumstances or force majeure. Non-availability of the defendant’s long-standing European Patent Attorney because of illness no excuse.

IPPT20250109, UPC CoA, Insulet v Menarini
Automatic extension of a time period until the end of the first following working day if documents filed in electronic form cannot be received by the Court (R. 301.2 RoP). Since the Court of Appeal could not receive the Statement of response via CMS there was an automatic extension of the deadline until the end of the day following the day on which the upload was possible. The upload was possible on 30 December 2024. Therefore the time period was extended until the next following working day. 

IPPT20250109, UPC CoA, EOFlow v Insulet
No need to adjudicate appeal by EOFlow from a denied joinder of provisional measures request after the Milan Local Division and the Milan Central Division issued their final decision rejecting Insulet´s applications for provisional measures (R. 360 RoP). R. 360 RoP aplies not only when the action itself has become devoid of purpose, but also when the appeal has become devoid of purpose. If the appellant has no legal interest in bringing appeal proceedings anymore, there is no reason to adjudicate on it. This means the appeal has become devoid of purpose. To have a legal interest in bringing appeal proceedings the appeal must be likely, if successful, to procure an advantage for that party.

IPPT20250109, UPC CFI, President, ArcelorMittal v XPENG
Change of language of the proceedings from French to English (language of the patent) (R. 323 RoP). Preliminary objection concerning the language of the Statement of claim (R. 19.1(c) RoP) only possible based on Article 49(1) (2) UPCA. In contrast, R. 323 permits a change in the language of the proceedings as initially selected by the Claimant, as provided under Art. 49 (4) UPCA based “on grounds of convenience and fairness” which are invoked by the Applicants in the present case. As expressly agreed by ArcelorMittal in its written comments on the Application, the language of the proceedings will be changed to the language in which the patent at issue was granted – namely English. Statement of claim to be translated by claimant. Parties to agree on a list of the annexes that should be provided in English.

IPPT20250108, UPC CFI, CD Paris, Meril v SWAT
No cost decision concerning application for access to written pleadings and evidence (R. 150 RoP, R. 262 RoP). A decision on costs presupposes that there has been a decision on the merits of the dispute or for the determination of damages. For these purposes, a “decision on the merits” must be understood as a decision that concludes litigation proceedings, that is proceedings where the ascertainment of a right is sought by one party against another and is capable of producing the effects of res judicata on conflicting subjective positions and from which a situation of the defeat of one party with respect to another may arise, justifying the award of costs. Parties may not unilaterally submit written comments on opposing arguments absent express authorization from the Court (R. 156 RoP, R. 9 RoP). The Court has the discretionary power to allow the further exchange of written pleadings if it deems appropriate, if not essential, to hear from one or each party before rendering its decision on the matter. Incorrect citation of the legal grounds does not relieve the Court of its obligation to consider the motion where it is possible to identify the correct legal grounds based on the legal arguments and factual grounds put forward by the applicant in support of the application [Article 42(2) UPCA, Article 76 UPCA]. Use of the wrong workflow does not render a submission inadmissible where, as in the current situation, non-compliance with this procedural rule does not result in any prejudice (R. 4 RoP, R 9. RoP)
 

IPPT20250108, UPC CoA, Daedalus v Xiaomi
Intervention by Mediatek in appeal proceedings between Daedalus and Xiaomi allowed (R. 313 RoP, R, 314 RoP). MediaTek has a direct and present interest in the result of the appeal proceedings, as the confidential information at issue in the appeal proceedings concerns information relating to the architecture of MediaTek’s processors. Daedalus’ submission that its US attorneys already have access to the confidential information in the context of parallel proceedings in the US does not alter the assessment. This submission may be relevant to the decision on the appeal but does not mean that there is no legal interest for MediaTek to intervene in the appeal proceedings. Application to intervene admissible, although not made before the closure of the written procedure (R. 313.2 RoP, R. 315 RoP). MediaTek declared that it does not intend to file a statement of intervention under R. 315.1 and R. 315.3 and wishes only to be allowed to participate in the oral hearing to support Xiaomi in their request to dismiss the appeal. Allowing the intervention will therefore not result in any delay of the appeal proceedings. 

IPPT20250107, UPC CFI, LD Munich, Sanofi v Accord
Change in parties (R. 305 RoP, R. 306 RoP, R. 310 RoP). Sanofi-Aventis France, which ceased to exist, is replaced by Sanofi Winthrop Industrie. As Sanofi Winthrop Industrie is already party to the proceedings this replacement has no consequence on proceedings. Sanofi Winthrop Industrie is bound by the proceedings as now constituted. Since it is undisputed that Sanofi Winthrop Industrie succeeded Sanofi-Aventis France from the moment Sanofi-Aventis France ceased to exist, there is no need to order a formal stay. It is sufficient to order that Sanofi-Aventis France be replaced by Sanofi-Aventis France. Since this decision may be reversed, Claimant No 2 shall be designated "Sanofi Winthrop Industrie as successor to Sanofi-Aventis France" in addition to Claimant No 2, which remains "Sanofi Winthrop Industrie".
 

IPPT20250107, UPC CFI, LD Munich, Dyson v SharkNinja
Proceedings suspended at joint request of the parties (R. 295.d RoP)

IPPT20250107, UPC CFI, LD Munich, Avago v Tesla
Withdrawal of proceedings prior to final decision, each party bearing its own costs (R. 265 RoP). According to Rule 265.2 (c) RP, the Court shall also make a decision as to costs in accordance with Part 1 Chapter 5 when admitting the discontinuance of proceedings. No application by the parties is required for this decision; it is to be issued even without one. However, if the parties state that they do not request a decision on the parties' costs, this can be taken into account in the cost decision to be made. This statement is regularly understood to mean that no reimbursement of costs should take place between the parties and that each party should bear their own costs.

IPPT20250107, UPC CFI, LD Düsseldorf, DexCom v Abbott
Withdrawal of infringement and revocation actions, no cost decision, 60% reimbursement of court fees (R. 265 RoP, R. 370 RoP). The decision takes into account the agreement reached between the parties. 

IPPT20250103, UPC CFI, CD Munich, Nanostring v Harvard
Applicant granted access (R. 262 RoP) to the written pleadings and evidence in Revocation action that has ended with a final decision of 17 October 2024 

IPPT20250102, UPC CFI, LD Munich, Huawei v Netgear
No bifurcation - party consent (R. 37.1 RoP, Article 33(3) UPCA. Both parties have argued in favour of the infringement action and the counterclaim for invalidity being heard together before the Munich Local Division. The panel agrees. There are no grounds, demonstrated or otherwise, that would require a different decision.