2025 UPC March

IPPT20250331, UPC CFI, LD Munich, Jingao v Chint
Leave to change claim following amendment of patent in opposition proceedings (R. 263 RoP, R. 30 RoP). Rule 30 RoP not restricted to amendments directly related to the grounds for invalidity asserted in the counterclaim for revocation, but may also not be directly related to the grounds for invalidity arising from the counterclaim. If dependent patent claims are made the subject of auxiliary requests within an application it must also be possible for the patentee to make corresponding amendments with regard to the infringement action. Synchronisation proceedings proceedings before the UPC with those before the EPO can only work if it is possible to introduce claim versions amended by the EPO into (infringement) proceedings before the UPC (R. 295(a) RoP, R. 30 RoP)

IPPT20250331, UPC CFI, CD Paris, BMW v ITCiCo Spain
Rectification is limited to errors (R. 353 RoP) consisting of a mere oversight by the judge which has resulted in the non-expression or inaccurate expression of a judgment that was, however, already formed and can be inferred from the context of the ruling. Errors that constitute the expression of a lacking or at least deficient judgment do not fall into this category. Costs incurred by successful party regarding application to set aside a decision by default (R. 356 RoP) are to be claimed in separate proceedings for a cost decision (R. 150 RoP). 

IPPT20250331, UPC CoA, Scandit v Hand Held Products
Withdrawal of action by party consent (R. 265 RoP). No ruling on costs requested.

IPPT20250331, UPC CoA, ILME v Phoenix
Request to stay first instance because of pending appeal dismissed (R. 21.2 RoP).The proceedings in the present case do not at present require stay the first instance proceedings, but instead, to the extent possible, seek a ruling from the Court of Appeal on the jurisdictional issue raised in the preliminary objections R. 19 Rules of Procedure before the matter proceeds to the merits before the Court of First Instance

IPPT20250328, UPC CFI, LD Düsseldorf, Nichia v Endrich
Confirmation of settlement (R. 365 RoP). Registrar is to reimburse of the plaintiff 60% of the court fees (R. 370(9)(c)(i) RoP)

IPPT20250328, UPC CoA, ILME v Phoenix
Three days extension until 7 April 225 to file Statement of response (R. 224.2 RoP, R. 9 RoP). Instead of three weeks

IPPT20250327, UPC CFI, LD Mannheim, Dish v Aylo
Decision on conditional request to communicate information by a third party postponed, unless it is admissible in any case on the condition that the requested information is relevant to the decision  (R. 191 RoP). Postponed decision on the third party's application for access to the file (R. 262 RoP).

IPPT20250327, UPC CFI, CD Milan, Zentiva v Abbott
Identity of “factual and legal elements”  does not create a legal interest to intervene (R 313.1 RoP). Res judicata occurs only between the parties who participate in the proceedings. A decision in the present proceedings would not be res judicata in any proceedings brought by ZENTIVA against anyone

IPPT20250326, UPC CFI, LD Munich, Sanofi v Stadapharm
Medac’s application for access withdrawn (R. 262 RoP) as well as Exhibit 2 (a privileged and confidential letter from Sanofi to Medac) withdrawn as no party raised concerns. Withdrawal Exhibit 2 based on R. 262A.1 RoP and subject to periodic penalty payment for Medac and Stada

IPPT20250326, UPC CFI, LD Mannheim, Panasonic v Oppo
Access initially limited to Statement of claim, Statements of defence and counterclaims and Reply to Statement of defence and Rejoinder to the Reply (R. 262 RoP) due to extensive case file, large number of errors in CMS and system errors and associated effort

IPPT20250326, UPC CoA, Stäubli Tec-Systems
Equity may require prevailing claimant to bear the costs of a revocation action in which the patent holder immediately surrenders the patent at the beginning of the proceedings and the patent holder was not previously contacted (Article 69(1) UPCA). The risk of an opt-out prompted by the contact before filing the action does not inevitably speak against these cost consequences.

IPPT20250326, UPC CFI, LD Düsseldorf, Otec v Steros
Ex parte order to preserve evidence and inspection at trade fair in Cologne (R. 192 RoP, R. 199 RoP). Demonstrable risk of evidence being destroyed (R. 197.1 RoP) As the applicant has explained in a comprehensible manner, there is a serious risk that the ‘DLyte 1D’ and ‘DLyte 100D’ will be removed from the exhibition grounds at short notice or that individual polishing processes pre-programmed by the first respondent will be deactivated by means of a software update. This could result in the loss of evidence that could be used to confirm the infringement. Due to the special market conditions already described in detail, it would be virtually impossible for the applicant to obtain evidence of the infringement of the patent in question by the aforementioned products. No security ordered in this specific case (R. 196.6 RoP)

IPPT20250324, UPC CoA, Amazon v Nokia
Request for opportunity to comment on Statement of response denied. The written procedure before the Court of Appeal is limited to the submission of a statement of grounds of appeal by the appellant and a statement of response by the respondent. It is fundamentally inconsistent with the written procedure to give Amazon the opportunity to submit a written statement merely a few days before the oral hearing in order to counter the respondent Nokia’s legal arguments, as the oral hearing is specifically intended to serve that purpose. 

IPPT20250324, UPC CFI, LD Paris, Tiru v Maguin
Review dismissed of ex parte order to preserve evidence and inspect premises subject to confidentiality club disclosure terms (R. 197.4 RoP). No breach of duty to disclose any known material facts (R. 192.3 RoP): Patent holder cannot be required, at the stage of the application for preservation of evidence, to respond in advance to possible attacks on the validity of the patent, without prejudice, at the stage of the substantive proceedings, to discussing and deciding on a possible application for revocation of the patent. No demonstrable risk of destruction of evidence (Article 60.5 UPCA) because of the mere digital format of the data but to ensure the effectiveness of the simultaneous  measures at the site of the manufacturer and that of the operator of the allegedly infringing oven. No lack of urgency (R. 194.2 RoP): a two-month period to prepare the application for preservation of evidence appears reasonable, as the applicant for seizure is required under Article 60.1 UPCA to present reasonably accessible evidence to support its allegations that its patent has been infringed or that infringement is imminent.

IPPT20250321, UPC CFI, LD Paris, IMC V Mul-T-Lock
Preliminary objection to UPC jurisdiction regarding Spanish, Swiss and UK designations of European patent rejected (Article 4  and article 24  kBrussels Ibis regulation. Article 31 UPCA, R 20 RoP). The UPC therefore has jurisdiction to hear the infringement action brought by IMC Créations in respect of the Spanish and Swiss parts, if necessary, by staying the proceedings pending the decision of the national court hearing the action for invalidity, if there was a significant risk that the patent would be invalidated by the court of the State in which the patent was granted. The UPC also has jurisdiction to hear the infringement action brought regarding the British part of the patent and, where appropriate, to rule on the validity of the title, provided that the decision on the plea of invalidity of the patent has only inter partes effect.

IPPT20250321, UPC CFI, LD Munich, Hand Held Products v Scandit
Withdrawal of action by party consent (R. 265 RoP) before closure of the written procedure. No cost decision requested. 60% reimbursement of court fees (R. 370.9 RoP)

IPPT202502321, UPC CFI, LD Brussels, Barco v Yealink
Provisional measures dismissed based on lack of urgency (R. 209(2)(b) RoP). If an infringement action was lodged immediately this would have led – in view of the one-year proceedings before the UPC – to a decision before the summer 2025. 2 ½ months delay in the filing of the request for provisional measures after reasonable subjective earliest date for the initiation of proceedings – 12 June 2024 – based on factual circumstances in the US proceedings). The Court also takes into consideration that (i) BARCO's earlier knowledge than 12 June 2024 (taking into account the dates of 17 May 2023 and 31 March 2024 (…) of the existence of the alleged infringing devices, (ii) the fact that BARCO itself states that the infringing devices have been on the market for a long time (…), and (iii) the letter from the EPO announcing the EPO's intention to grant on 6 May 2024 (§ 17). Date of the grant of the European patent should be considered as the objective earliest date to file an action with the UPC and not the date of registration of the unitary effect of this European patent (either an action for infringement (Art. 32(1)(a) UPCA) or an action for provisional measures (Art. 32(1)(c) UPCA). Conditions for provisional measures are of a cumulative nature in the sense that not meeting one of these conditions implies the claims for provisional measures to be held unfounded without the necessity or obligation for the Court to further assess any other requirement. (R. 209 RoP) . Such limited assessment is in line with the purpose of an application for provisional measures and the procedural-economy of such proceedings which should not lead to a mini-trial on the merits. Preliminary objectionsregime of  R. 19(1) RoP, and its mentioned time-limit, is not applicable to objections to applications for provisional measures, but relates to proceedings on the merits (R. 209 RoP). Art. 33(1) UPCA establishes the possibility of parallel competence of LDs. Territorial competence of a division of the UPC is a matter of the internal organization of the UPC (Article 33 UPCA) 

IPPT20250319, UPC CFI, LD Munich, Jingao v Chint
Claimant must provide security for costs to Defendants in an amount of € 200.000 (Article 69(4) UPCA). With regard to a country that fails to fulfil its obligations under the Hague Service Convention, it has to be assumed that an order for reimbursement of costs by the UPC may not be enforceable in this country or just in an unduly burdensome way. Although the People's Republic of China has ratified the Hague Service Convention, European courts are facing significant difficulties in serving statements of claim and other documents in China. 
 

IPPT20250319, UPC CFI, LD Munich, MSG v EJP
€ 33.224,50 compensation for representation costs (Article 69 UPCA), R. 151 RoP, R. 152 RoP). Costs of legal proceedings are those costs that have been (actually) incurred in the specific pending or relevant proceedings. These include, in particular, the costs listed in Rule 151(d) of the Rules of Procedure. Other costs are those that have not been incurred in the pending proceedings but are directly and closely related to the proceedings in question. The costs in question must be cumulatively reasonable and appropriate, which is always a matter for the individual case. The criteria mentioned [...] ensure a high level of protection for European patents by preventing an injured party from being deterred from bringing legal proceedings to protect their rights and by ensuring that the measures, procedures and remedies necessary to enforce intellectual property rights are not unnecessarily costly. Reasonable means necessary. Based fundamentally on the ex ante position of a reasonable and economically rational party, the decisive factor is whether the measure incurring the costs appeared objectively necessary and suitable for achieving the legitimate objective of the proceedings. The measure must therefore have appeared relevant for the pursuit or defence of legal rights. The costs for preparing the application for a determination of costs in the amount of € 285.00 are to be reimbursed. These are also reasonable and appropriate costs for the appropriate legal defence.
 

IPPT20250319, UPC CFI, LD Munich, Adeia v Disney
Rectification of scheduling order (R. 353 RoP). The scheduling order dated 18 March 2025 is rectified. Item 4 now reads: “The oral hearing is scheduled for 15 January 2026, 9.00 a.m., in person in Denisstr. 3 in Munich, room 212 and overflow room 220b.” 

IPPT20250318, UPC CFI, LD Munich, Adeia v Disney
No bifurcation – party consent (R. 37 RoP), scheduling interim conference and oral hearing 

IPPT20250318, UPC CFI, LD Munich, Hand Held Products v Scandit
Withdrawal of action by party consent (R. 265 RoP). Reimbursement of 40% of court fees (R. 370 RoP)

IPPT20250318, UPC CFI, LD Munich, Dolby v Roku
Alleged incompatibility of UPCA with EU law is no ground for objection under R. 19(1) RoP. An objection under Rule 19(1) of the Rules of Procedure cannot be successfully based on a possible violation of Article 47(2) of the EU Charter of Fundamental Rights or Article 6(1) of the ECHR. For jurisdiction to be assumed it is sufficient that the plaintiff conclusively asserts that an act of infringement establishing jurisdiction has taken place and that this cannot be ruled out from the outset. It is it is not necessary that a violation has actually occurred or is likely to occur.

IPPT20250318, UPC CFI, LD Munich, Sun Patent v Roku

Alleged incompatibility of UPCA with EU law is no ground for objection under R. 19(1) RoP. An objection under Rule 19(1) of the Rules of Procedure cannot be successfully based on a possible violation of Article 47(2) of the EU Charter of Fundamental Rights or Article 6(1) of the ECHR. For jurisdiction to be assumed it is sufficient that the plaintiff conclusively asserts that an act of infringement establishing jurisdiction has taken place and that this cannot be ruled out from the outset. It is it is not necessary that a violation has actually occurred or is likely to occur.If a representative of the plaintiff (Article 48 UPCA) has declared withdrawal from the ‘opt-out’ (Article 83 UPCA) with regard to the patent in dispute, it is not necessary for the plaintiff to prove, on its own initiative, in or with the statement of claim, that the representative has power of attorney with regard to the declared withdrawal. Proof must only be provided if the power of attorney is disputed..

IPPT20250317, UPC CFI, LD Munich, Edwards v Meril
Edwards' request for protection of confidential information in application for a cost decision granted (R. 262.2 RoP). Leave to amend the request for protection of confidential information pursuant to R. 262A RoP is granted (Rule 263.3 RoP)

IPPT20250317, UPC CFI, LD Hamburg, Daedalus v Xiaomi
Preliminary objection rejected (R. 19 RoP, Article 7(3) Brussels Regulation). Sufficient for establishing international jurisdiction of the UPC that the Claimant claims that Defendant 5) would be a joint perpetrator as it was aware of the fact and deliberately intended that its processors were making their way into the German market as components of certain Xiaomi smartphones, regardless whether or not these assertions are disputed by Defendant 5) or not.

IPPT20250314, UPC CFI, LD Düsseldorf, Roche v Tandem
Defendants are permitted to engage an interpreter at their own expense who may use the simultaneous interpretation equipment available in the courtroom if necessary (Article 51(2) UPCA, R. 109 RoP)

IPPT20250313, UPC CFI, CD Paris, Suinno v Microsoft
Action not manifestly bound to fail (R.361 RoP). Lack of a valid representation of a party requires the Court to grant that party an opportunity to remedy the deficit and, therefore, does not lead to the declaration of the inadmissibility of the action or the application filed by this party (R. 291 RoP)

IPPT20250311, UPC CoA, 10x Genomics v Vizgen
60% refund of court fees after withdrawal before written procedure was completed, 20% refund of court fees  after withdrawal before the end of the oral proceedings (R. 370 RoP)

IPPT20250311, UPC CFI, LD Munich, Syngenta v Sumi Agro
Panel review: order of judge-rapporteur to dismiss application to revoke provisional measures upheld (R. 333 RoP. R. 15 RoP, R. 213(1) RoP). Nothing in R. 213 (1) RoP states or implies that the court fees have to be received by the court in order to start the proceedings. As Syngenta has started the main proceedings and has paid the court fee in due time, the application must be dismissed.

IPPT20250311, UPC CFI, LD Mannheim, Hurom v NUC - II
Separation of proceedings ordered (R. 302 RoP) between national parts of European bundle patent ready for decision and the national parts of the patent-in-suit concerning Poland, Spain and the United Kingdom, which are not ready for decision yet: a fundamental question of European Law concerning the international jurisdiction towards a defendant domiciled outside the EU following the decision of the European Court of Justice in re C-339/22 (BSH Hausgeräte)
 

IPPT20250311, UPC CFI, LD Mannheim, Hurom v NUC - I
Direct patent infringement within the territory of the UPCA member states by acts outside that territory (Article 25 UPCA): acts in the meaning of Art. 25 UPCA also encompass acts which make the infringement possible and support it, at least when such acts give the potential perpetrator control over the infringement. Infringing acts with regard to France and Germany respectively do not suffice to extend the remedies sought to other UPCA member state (Art. 34 UPCA) No UPC jurisdiction regarding Turkey: no single fact brought forward or apparent that may constitute an act committed within the territory of the UPCA member states and relating to a possible infringement in Turkey (Article 7(3) Brussels Regulation). No preliminary objection required to challenge jurisdiction: suffices that the defendant raises the objection against the international jurisprudence in its first defence. Art. 26 Brussels Ia Reg. prevails over R. 19.7 RoP due to the primacy of Union Law. UPC has jurisdiction for acts committed before the UPCA’s entry into force on 1 June 2023. Applicable law. The determination of the substantive law applicable to an alleged infringement is to be strictly distinguished from the jurisdiction to hear the case. With regard to traditional European bundle patents (a) the substantive national laws of the UPCA member states applies to acts committed before the entry into force of the UPCA on 1 June 2023, (b) the substantive law as laid down in the UPCA applies (i) to acts committed after the entry into force of the UPCA and (ii) to ongoing acts started before the entry into force of the UPCA and continued after the entry into force on 1 June 2023. An infringing act is ongoing if the infringer continues its infringing behaviour although he could have stopped the infringement in the light of the entry into force of the new regime on 1 June 2023. However, in order to avoid potential hardship, the party concerned may rely on the provisions of the respective national law in force prior to the entry into force of the UPCA with regard to acts of past use which lie before 1 June 2023. Unsuccessful rebuttal of presumption of ownership of the registered proprietor (R. 8.5 RoP). No doubt that the Transfer Agreement 2018 was validly concluded. Right to information of Article 67 UPCA and Article 68 UPCA may encompass time periods which resided before the entry into force of the UPCA. The question of intertemporal applicability of a right to information and the question of the scope of the period, for which information has to be provided, have to be distinguished. 

IPPT20250310, UPC CFI, LD Munich, Promosome v BioNTech
Confidentiality club established and rules set (R. 262A RoP). In the event of a culpable breach of this Order, the Court may impose a recurring penalty payment for each violation which will be determined having regard to the circumstances of the individual breach

IPPT20250307, UPC CFI, LD Düsseldorf, Tridonic v Cupower
Patent valid but not infringed. New validity attacks raised during the oral proceedings not taken into consideration. If considered as an amendment of claim, the attacks should have been raised at the latest in the reply to the counterclaim ((R. 263 RoP). If considered as additional argumentation for the annulment of the contested patent, it must be rejected pursuant to R. 9.2 VerfO. Strategic manoeuvring aimed at achieving a surprise effect is as foreign to the rules of procedure as is the introduction of completely new means of attack on the basis of a merely preliminary assessment by the court at the beginning of the oral hearing, especially since this is not uniform in the UPC. Novelty: direct and unambiguous disclosure (article 54 EPC): Findings which a person skilled in the art only gains through further consideration or by consulting other documents or prior use are not part of the prior art.  Inventive step (Article 56 UPCA). Case by case basis. An objective approach must be taken. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. No infringement because of a lacking claim feature (article 69 EPC)
 

IPPT20250305, UPC CoA, 10x Genomics v Vizgen
Withdrawal of action by party consent (R. 265 RoP))

IPPT20250304, UPC CFI, LD Düsseldorf, GlaxoSmithKline Biologicals v Pfizer
Bifurcation ordered: revocation action at CD Milan filed at same date as infringement action (Article 33.(3) UPCA, R. 37 RoP). Unanimous request by the parties and a referral of the Counterclaim for revocation seems to be appropriate, particularly for reasons of efficiency. No stay of infringement action at this stage: question of high likelihood of invalidity requires adetailed examination, taking into account the entire content of the file. Time period for the Defendants’ Rejoinder to the reply to the statement of defence extended with one month (R. 9.3 RoP): exceptional case. Given that the bifurcation decision was taken only relatively shortly before the expiry of the time period for lodging the Rejoinder, it appears appropriate to grant the Defendants an extension by one month. 

IPPT20250304, UPC CFI, LD Düsseldorf, Hartmann Packaging v Omni-Pac
No further exchange of written pleadings allowed (R. 36 RoP). Request must be made promptly after receipt of rejoinder. No sound justification as to why, based on the defendant's submissions in the rejoinder, it was necessary for the first time to submit written statements on a possible equivalent infringement.

IPPT20250303, UPC CoA, Sumi Agro v Syngenta
Provisional injunction confirmed. Person skilled in the art (Article 56 EPC). Common general knowledge is knowledge that an experienced person in the field in question is expected to have, or at least to be aware of, to the extent that he knows he could look it up in a book if he needed it. Claim construction – core of the invention (Article 69 EPC). Claim construction relating to feature c is derived from an understanding of the core of the invention, and from a close reading of paras 28 through 31 of the patent specification, together with examples 1 and 2. . Infringement more likely than not (Article 25 UPCA, Article 62 UPCA). Syngenta has […] fulfilled its burden – in other words, satisfied the Court that it is more likely than not – that the Kagura 2024 product contains FFA that fall within the range (1 % to 95 % by weight) protected by claim 1 of the patent. More likely than not that the patent is valid. Sumi Agro’s novelty attack fails because it relies on the presence of common general knowledge with the person skilled in the art that rapeseed oil may include a small amount (up to 2 %) of FFA, which has not been demonstrated, (Article 54 EPC). The mere chance that the skilled person could choose such an ingredient is insufficient for a finding of lack of inventive step. (Article 56 EPC). Necessity provisional injunction because price pressure and permanent price erosion can be expected (Article 62 UPCA, R. 206.2 RoP). Syngenta not required to demonstrate and quantify how sales have been affected during the time when both products (Elumis and Kagura) were on the market. Territorial scope – accession of Romania (Article  34 UPCA, R. 222 RoP). When a UPC Signatory State ratifies and accedes, the application of Art. 34 UPCA should be automatic and not subject to limitations, from the day of accession. In view of the general rule in Article 34 of the UPCA, the Court exercises its discretion to allow the application with regard to Romania in the appeal proceeding. Cost decision in inter partes proceedings for provisional measures (Article 69 UPCA) It concludes the action. 

IPPT20250303, UPC CFI, LD Munich, Headwater v Samsung
Rule 105.5 Order following interim conference: Value of claims, parallel proceedings, deficiencies in formal pleadings, inadmissibility of invalidity attack based on article 138(1)(e) EPC under applicable German and French law, no need to hear witnesses at this time, late filed documents, PowerPoint slides at oral hearing, hybrid hearing.

IPPT20250303, UPC CFI, LD Mannheim
Order to preserve evidence rejected. No sufficient degree of substantiation that that there is a sufficient degree of probability that infringement of the asserted claim combination can be found (Article 60 UPCA, R. 192.2 RoP). Required, if multiple ways are equally open to achieve the technical result, that facts are submitted which suggest that the result is being achieved by using the solution as patented and/or elaborating on alternative solutions and explain why it is rather to be excluded that these solutions are being implemented. These standards are of tantamount relevance in cases like the present one, where the application had been lodged before bringing an action on the merits of the case so that the court cannot refer to the main briefs to inform itself upon the arguments exchanged on infringement (cf. R. 192.2 RoP).

IPPT20250303, UPC CoA, Curio Bioscience v 10x Genomics
Withdrawal of appeal without objection (R. 265 RoP)

IPPT20250303, UPC CFI, LD Copenhagen, Hybridgenerator v HGSystem
The rules on the preservation of evidence do not prevent a subsequent further examination of the relevant material that has been secured during the preservation of evidence. (Article 62 UPCA,  R. 211 RoP). No order to pay recurring penalty: at this point in time, it appears that all the required codes have been provided in order for the evidence to be secured.

IPPT20250303, UPC CFI, CD Paris, Suinno v Microsoft
Exclusion of […] as representative of Suinno and granting a period of 30 days to appoint and instruct a new representative, who shall be required to ratify the written pleadings submitted by […] (R. 291 RoP, R. 9 RoP)