Rule 19 – Preliminary objection

1. Within one month of service of the Statement of claim, the defendant may lodge a Preliminary objection concerning:

(a) the jurisdiction and competence of the Court, including any objection that an opt-out pursuant to Rule 5 applies to the patent that is the subject of the proceedings;

(b) the competence of the division indicated by the claimant [Rule 13.1(i)];

2. A Preliminary objection shall contain:

(a) particulars in accordance with Rule 24(a) to (c);

(b) the decision or order sought by the defendant;

(d) where appropriate the facts and evidence relied on.

3. The Preliminary objection shall be drawn up in the language pursuant to Rule 14.

4. If the action has been commenced before a regional division the defendant may by a Preliminary objection request a transfer of the action to the central division pursuant to Article 33(2) of the Agreement. The Preliminary objection shall in such a case contain all facts and evidence supporting the existence of the same infringement in the territories of three or more regional divisions.

5. The Registry shall as soon as practicable invite the claimant to comment on the Preliminary objection. Where applicable, the claimant may of his own motion correct any deficiency [paragraph 1(b) or (c)], within 14 days of service of notification of the Preliminary objection. Alternatively the claimant may submit written comments within the same period. The judge-rapporteur shall be informed of any correction made or written comments submitted by the claimant. If the deficiency referred to in paragraph 1(b) is corrected and the claimant has indicated another division, which is competent, the judge-rapporteur shall refer the action to the division indicated by the claimant.

6. The period for lodging the Statement of defence [Rule 23] shall not be affected by the lodging of a Preliminary objection, unless the judge-rapporteur decides otherwise.

7. The defendant’s failure to lodge a Preliminary objection within the time period referred to in paragraph 1 shall be treated as a submission to the jurisdiction and competence of the Court and the competence of the division chosen by the claimant.

Case law

Court of Appeal

IPPT20260330, UPC CoA, Sinocare v Abbott
Jurisdiction (Article 31 UPCA). By not contesting the jurisdiction and competence of the Court in First Instance, the Appellant (Defendant in first instance) has in principle foregone this opportunity on appeal and cannot raise the alleged lack of jurisdiction and competence as a ground for overturning the impugned order (Article 26(1) Brussels I Recast and R. 19.7 RoP).

IPPT20260327, UPC CoA, NUC v Hurom
No tacit acceptance of jurisdiction, notwithstanding R. 19.7 RoP (Article 26 Brussels I regulation) by contesting jurisdiction in first defence, without having filed a preliminary objection. “Entering appearance” (Article 26 Brussels I regulation) is only when the defendant lodges its first statement, by filing a Preliminary objection pursuant to R. 19 RoP as to the issues listed in R. 19.1 and .4 RoP or, if not, the Statement of defence pursuant to R. 23 ff. RoP as to the substance of the dispute, that he will have deliberately chosen or contested the international jurisdiction of the court seized instead of the court which would normally have jurisdiction under the provisions laid down in the Brussels Regulation.

IPPT20260316, UPC CoA, Vivo v Sun Patent
The Court of First Instance has case management discretion to either decide on the Preliminary objection as soon as practicable or decide to deal with the Preliminary objection in the main proceedings (R. 19 RoP, R. 20 RoP, R. 102.1 RoP, R. 331.1 RoP). The decision to deal with the Preliminary objection in the main proceedings may be taken either by the judge-rapporteur, as laid down in R. 20.2 RoP, or by the panel if the judge-rapporteur has decided to refer the matter to the panel to decide. R. 102.1 RoP on the interim procedure shall apply applies mutatis mutandis to the written procedure where the judge-rapporteur, after his assignment to the case by the presiding judge pursuant to R. 18 RoP, is likewise tasked with the management of the case, including case management decisions or orders relating to a Preliminary objection. Limited review in appeal (Article 73 UPCA) Considering that the CFI has a margin of discretion […] the review by the Court of Appeal is limited. If, within this limited scope of review, it is established that the CFI erred in using its discretion, for example by misusing or exceeding its discretion, the order must be set aside. The LD Paris has not misused or exceeded its margin of discretion in deciding to defer the decision on the admissibility of claim A.II (FRAND) of the SoC to the main proceedings. There are sound reasons of case management efficiency for the admissibility of claim A.II to be dealt with in the main proceedings. Follows from Statement of claim that the claimed determination of a FRAND offer is only incidental or dependant on infringement.

IPPT20260313, UPC CoA, Adobe v Keeex
Preliminary objection granted: Jurisdiction of UPC under Article 7 BR limited to UPC territory. The Statement of claim must contain sufficient facts and submissions to establish internal and international jurisdiction of the Court (R. 13 RoP, R. 19 RoP)). In particular, where the claimant requests that the Court exercise its jurisdiction over the territory of States that are not members of the UPCA, the Statement of claim must contain the facts and legal arguments necessary to justify the jurisdiction of the Court in accordance with Article 71b(3) BR.

IPPT20251128, UPC CoA, Barco v Yealink
Application for interim measures (R. 206 RoP) . R. 19.5 RoP shall apply mutatis mutandis to proceedings for provisional measures. A referral to the competent division is therefore also possible in such proceedings (Rule. 19.5 RoP)

IPPT20251006, UPC CoA, Roku v Dolby and Sun Patent
Alleged invalidity of the rules on jurisdiction of Article 31 UPCA in conjunction with Article 71a of the Brussels regulation are a ground for a Preliminary objection (R. 19.1 RoP). Insofar as a violation of Article 47(2) of the EU Charter of Fundamental Rights and Article 6 of the ECHR due to the absence of a Central Division based in London does not concern any of the grounds for opposition listed in Rule 19.1 RoP, an opposition based on this is not admissible.

IPPT20240918, UPC CoA, Volkswagen v NST
Postponement of decision on Preliminary objection based on lack of jurisdiction for the claim for damages suffered in the UK and Northern Ireland within the boundaries of the discretion of the Munich LD and not unreasonable (R.19.5 RoP, R. 20.2 RoP).

IPPT20240917, UPC CoA, Mala v Nokia
A request for a stay pursuant to Article 31 Brussels I recast is to be regarded as a preliminary objection (R. 19 RoP).

IPPT20240903, UPC CoA, Aylo v Dish
Limited grounds for preliminary objections. The list of preliminary objections of R. 19.1 RoP must be regarded as exhaustive. The application of R. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.

Court of First Instance

IPPT20260323, UPC CFI, LD Paris, Valeo v Robert Bosch
Panel review confirming dismissal of preliminary objection (R. 19 RoP). Competence in case of multiple defendants (Article 33.1(b) UPCA). The commercial link between the defendants does not require a direct commercial link between the so-called ‘anchor’ defendant and each of the other defendants, but rather a commercial link between all the defendants. The condition that ‘the action concerns the same infringement’, refers to the infringement of the same patent by all the defendants, and does not require that the products alleged to be infringing be identical across all the defendants.

IPPT20260217, UPC CFI, LD Paris, Valeo v Robert Bosch
Preliminary objection dismissed (R. 19 RoP). The “same alleged infringement” (Article 33.1(b) UPCA) refers to the infringement of the same patent. Commercial link between defednats undisputed.

IPPT20260212, UPC CFI, LD Mannheim, Honeywell v Sovex
Rejection of preliminary objections confirmed by panel (R. 19 RoP, R. 333 RoP). R. 20(1) RoP does not require that a defendant has to be given another opportunity to be heard. Moreover, the Defendants were able to present their arguments in their application for review. Appeal of rejection of preliminary objection (R. 333 RoP, R. 220.2 RoP). If a Preliminary objection is rejected, as an exception to the general principle, leave to appeal may be given by the judge-rapporteur and the order may be appealed against without prior panel review under R.333.1 RoP being required.

IPPT20260126, UPC CFI, CD Paris, ALD France v Nanoval
Panel review confirms dismissal of Preliminary objection (R. 19 RoP, R. 333 RoP). Parent and subsidiary companies are not automatically “same parties” (Article 33(4) UPCA): depends on having the same or independent business activities. The assessment of the unity of the undertaking in the context of an antitrust action is subject to different requirements and must take other interests into account, meaning that the principles developed there are not transferable. The risk of conflicting decisions by the Central Division and the Local Division does not constitute grounds for a stay. (R. 295 (m) RoP). R. R. 295(m) RoP must be applied and interpreted in accordance with the right to an effective remedy and to a fair and public hearing within a reasonable time The requirement of effective legal protection demands a prompt decision on the action for annulment as well.

IPPT20251117, UPC CFI, LD Lisbon, Boehringer v Zentiva
Preliminary Objection rejected, the UPC has exclusive Jurisdiction. (Article 31 , Article 32 UPCA, Rule 19.1(a) RoP) . No opt-out from the exclusive competence related to the Patent is in effect. (Rule 19.1(a) RoP). The action lodged by the Claimant does not concern an administrative matter. (Article 1(1) Brussels Regulation).

IPPT20251204, UPC CFI, LD Brussels, BARCO v YEALINK

Preliminary objection closed, all proceedings and requests made by YEALINK dismissed, based on request made for withdrawal of Preliminary Objection (Rule 19 ROP)

IPPT20251030, UPC CFI LD Paris, Sun Patent v Vivo
Preliminary objection on jurisdiction and competence rejected. (Article. 32(1)(a) UPCA , Article 33 UPCA, Rule 19 RoP). UPC has jurisdiction to hear the main infringement claim, including a claim for an injunction. (Article 32 (1 (a) UPCA). The main issue of infringement of an essential patent is undoubtedly linked to the incidental question of the FRAND offer, as a condition dependent on the main issue. The FRAND issue can be dealt with incidentally by the UPC according to consistent UPC CFI caselaw . Internal competence of first instance court (Article 33(1)(a) UPCA). The purchase and delivery of an allegedly infringing product via a French website establishing a link to France, is sufficient to establish competence. The claimant sufficiently showed a connection between all defendants and the alleged infringement.

IPPT20251022, UPC CFI, LD Mannheim, Honeywell v Sovex
Preliminary objections rejected (R. 19 RoP). International jurisdiction regarding defendant Hemtech, not domiciled in a Member State (Article 71(b)(2) Brussels). The fact that Honeywell did not (also) explicitly mention this paragraph 2 of Art. 71b Brussels I recast Regulation in the SoC, does not mean that international jurisdiction of the Court should be denied. Honeywell did state the facts and ultimate ground and principle for international jurisdiction it relies on, namely Art 7(2) Brussels I recast Regulation, […]. Honeywell also explicitly stated that it has suffered and suffers damage in Germany and other UPC Member States where the patent is valid because the Defendants have infringed and continue to infringe the patent in those States. The UPC has competence (Article 32 UPCA, Article 33 UPCA, Article 63 UPCA, Article 25 UPCA) with regard to managing directors (defendants Solvest V, Solvest VI, Solvest VII, Solvink and De Kleine Beuk) to whom infringing acts may be attributable since the action against them can be identified as an alleged action for actual or threatened infringement within the meaning of Art. 32(1)(a) UPCA. Whether these Defendants in fact commit infringing acts themselves and/or whether infringing acts of other entities are attributable to them in the sense that they are an “infringer” within the meaning of Art. 63 UPCA in conjunction with Art. 25 UPCA, is a question to be addressed in the case on the merits.

IPPT20251013, UPC CFI, LD Paris, Vivo v Sun
Request to postpone filing of the statement of defence under R. 19.6 RoP denied. No exceptional circumstances to slow down pace of main proceeding.

IPPT20251002, UPC CFI, LD Mannheim, Hurom v NUC Electronics
Preliminary objection admissible (R. 19.7 RoP) due to the primacy of Union law, the objections against international jurisdiction are not precluded by R. 19.7 RoP.

IPPT20251001, UPC CFI, LD Mannheim, Robert Bosch v Grizzly Tools

Oppositions challenging jurisdiction of the UPC dismissed , No appeal permitted. (Article 4(1) , Article 63(1) , Art. 71b (1) Brussels Regulation). No decision on the obligation to bear the associated costs is necessary as the objection pursuant to Rule 19 RoP is an internal procedural remedy and cannot bring about a decision on the merits.

IPPT20250909, UPC CFI, LD München, PAPST v Ecovacs
No extension of deadlines for second defendant to lodge Preliminary objection (R. 19.1 RoP) and Statement of defence (R. 23 RoP, R. 9.3 RoP). The defendant does not claim that it needs the extension in order to prepare an adequate defence. Although the aspect of procedural standardisation is to be recognised, it does not carry as much weight.

IPPT20250908, UPC CFI, LD Paris, Adobe v KEEEX
Extension and alignment of time limits of R.19 and R.23 RoP to 4 September 2025 for all respondents (R. 9.3 RoP).

IPPT20250901, UPC CD Paris, Seoul Viosys v Emporia
Preliminary objection rejected in revocation action, claiming lack of jurisdiction because claimant in this revocation action is a straw company and effectively the same party as in previous proceedings regarding the same patent before the LD Düsseldorf (R. 19 RoP, R. 20 RoP, Article 33(4) UPCA). Insufficient evidence that the claimant for invalidity is a straw company. The fact that the two companies resorted to substantially overlapping defence strategies, including having the same exhibits, does not mean that they are not conducting autonomous business activities or pursuing their own interests, even if, in this case, those interests converge in challenging the patent claimed by the applicant. The UPC framework does not exclude that a patent may be attacked by different subjects, even if linked by organizational ties or commercial relationships, and by the means of different claims, even if structured in the same grounds of invalidity.

IPPT20250826, UPC CFI, LD Paris, Sun Patent Trust v Vivo Mobile
Extension for filing a Preliminary Objection (PO) and lodging the Statement of Defense (SoD) following Order establishing confidentiality club regime by order of 31 July 2025,but strictly limited to three weeks (nearly corresponding to the period between 31 July 2025 to the date of the present order) (R. 19 RoP, R. 23 RoP. R. 262A RoP)

IPPT20250825, UPC CFI, LD Munich, Qualcomm v NST
Preliminary objection rejected (R. 19 RoP). Lodged within one month of service, because, in the present case, the Statement of claim is deemed to have been served on the Defendants on the tenth day following posting, i.e. between 25 and 30 March 2024, in accordance with Rule 271.6 (b) RoP. Unfounded: the objections to the effectiveness of an opt-out or its withdrawal should be limited. Thus, the Defendant, who asserts the invalidity of a withdrawal of an opt-out in a Preliminary objection pursuant to Rule 19.1(a) RoP, can only object that the formal requirements of Rule 5.3 and 5.7 RoP have not been complied with, that the withdrawal has not been entered in the register or that the requirements of Rule 5.8 RoP are met. In particular, a mandate, a power of representation or any other authority for a representative acting under Rule 5.3 (b) (i) RoP is not required for an effective opt-out or its withdrawal. Unlike paragraph (ii), Rule 5.3 (b) (i) RoP does not require a mandate or any other substantive legal authority to represent.

IPPT20250728, UPC CFI, LD Munich, Papst Licensing v Roborock
Application for extension of time limits granted with plaintiff's consent and agreement that service on the other two parties would be accepted (R. 19 RoP, R. 23 RoP, R. 25 RoP)

IPPT20250620, UPC CFI, LD Munich, Headwater v Motorola
Preliminary objections rejected (R. 19 RoP, R. 20 RoP). Objections of defendants 1) and 2) were lodged one day after the expiry of the one month objection period (R. 300(c) RoP). Deemed day of service of Rule 271.6(b) RoP does only apply to service of a Statement of claim in a Contracting State but not in the USA. The actual date of service must be taken into account, for which the CMS is not decisive, but rather the certificate of service or other proof of service. Objections of defendants 1) to 3) rejected. Competence over multiple defendants having a commercial relationship and the same alleged infringement, even though the contributions of each defendant is not identical (Article 33(1)(b) UPCA). Objections of defendant 5) rejected (Article 33(1)(b) UPCA). The existence of a business relationship as such with companies belonging to the Motorola Group is not disputed, nor the existence of a commercial activity with the same purpose, namely the promotion of manufacturing through production management agreements. An indirect business relationship with other companies in the Motorola Group to which the third defendant also belongs and with which it maintains business relationships, is sufficient. Also competence on the basis of Article 33(1)(a) UPCA, although not stated in the Statement of claim. Plaintiff's reference thereto in its response to the opposition must be taken into account. (R. 13 RoP, R. 263 RoP). Even if the plaintiff had not invoked Article 33(1)(a) UPCA in the dispute, the court would have been free to base the jurisdiction of the Local Chamber on this provision. Fifth defendant is also allegedly an intermediary by enabling and promoting the infringing acts of the other defendants as a logistics service provider (Article 63(1) UPCA).

IPPT20250612, UPC CFI, LD The Hague, Genevant v Moderna
Claimants are given the opportunity to respond within one week (R. 19 RoP) to ‘application to review a case management order’ (R. 333 RoP), regarding preliminary objections filed by Defendants by the entire panel (Rule 333.1 RoP). In the alternative to allow the appeal against the decision of the panel on the preliminary objections.

IPPT20250604, UPC CFI, LD The Hague, Genevant v Moderna
Rectification of date of service in PO Order and assumed late filing of Preliminary objections (R. 353 RoP,,R. 19 RoP).. The applications are founded. The dates of service mentioned for Moderna Germany, Belgium and Poland in the PO Order are incorrect and constitute clerical mistakes, errors in calculation and/or obvious slips in the order which can be rectified pursuant to R.353 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.

IPPT20250523, UPC LD Paris, Hurom v NUC
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.

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.

IPPT20250417, UPC CFI, LD Munich, Promosome v BioNTech
Partial Preliminary objection regarding embodiment that has been produced and sold only before 1 June 2023, i.e., establishment of the UPC to be dealt with in the main proceeding (R. 19 RoP, R. 20.2 RoP.) Awaiting outcome of appeal proceedings on the same issue in another case.

IPPT20250416, UPC CFI, LD The Hague, Genevant v Moderna
Multiple defendants. No extension of deadline to file a R. 19 RoP Preliminary objection, if any (R. 9 RoP). Deadlines to lodge Statements of defense not extended but streamlined (R. 23 RoP)

IPPT20250404, UPC CFI, LD Mannheim, Fingon v Samsung
Inadmissible preliminary objection (R. 19 RoP): the validity of the withdrawal of the opt-out does not constitute an admissible ground for a preliminary objection (Article 83 UPCA). Material ownership of the patent-in-suit is to be dealt with in the main proceedings (R. 20.2 RoP). Unfounded preliminary objection with regard to the temporal scope of jurisdiction. No doubt about the UPC’s jurisdiction regarding alleged infringing acts committed before its entry into force.

IPPT20250402, UPC CFI, LD Munich, Biomarin v Ascendis
Preliminary objections rejected (R. 19 RoP). No opt-out applies: withdrawal of opt-out (Exhibit CRPO-1) identifies the opted-out patent. Sufficiently shown the infringement (actual and threatened) of the Patent in the statement of claim. The contested embodiment (...) and acts of infringement (...) are clearly explained in the statement of claim and summarized in the legal assessment accordingly (...). Furthermore, it is undisputed that the infringing acts occurred in Germany, i.e., within the jurisdiction of the Local Division Munich (...). Nothing more is required to establish the competence of the Court. Legal characterization of acts under substantive law is beyond the scope of the Rule 19 examination.

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - II

No jurisdiction of the UPC with regard to those national parts of UPCA member states which have already lapsed before 1 June 2023. The same applies to national parts of non-UPCA-member states. (Article 3(c) UPCA). It can be left open whether a lack of jurisdiction under Art. 3 (c) UPCA falls within the scope of R. 19 RoP.

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
The Defendants’ objection against the UPC’s jurisdiction with regard to the lapsed national parts of the patent-in-suit is not precluded by R. 19.7 RoP or Art. 26 (1) Brussels Ia Reg., although Defendants did not base their preliminary objection on the lack of jurisdiction under Art. 3 (c) UPCA, but raised an objection insofar in the oral hearing only. Applicable aw:

IPPT20250321, UPC CFI, LD Brussels, Barco v Yealink
Preliminary objections regime 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).

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.

IPPT20250311, UPC CFI, LD Mannheim, Hurom v NUC - I
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.

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.

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.

IPPT20250214, UPC CFI, LD Munich, GXD-Bio v Myriad
Preliminary objection rejected (R. 19 RoP) Defendants have not raised any of the grounds set out in the exhaustive list of Rule 19.1 RoP. […] the grounds put forward by the Defendants 1-8 in support of their preliminary objection do not appear to concern the Court's jurisdiction and competence under Article 32 UPCA, but only the question of the Claimant's standing to bring an action and/or the question of whether the Claimant has acquired substantive ownership of the claims it has asserted.

IPPT20250212, UPC CFI, LD Munich, Biolitec v Light Guide
Local Division Munich has jurisdiction in spite of pending appeal (Article 33(2) UPCA, R. 19 RoP). The action for interim measures […] was already pending before the Court of Appeal on 19 September 2024. Consequently, on 20 November 2024, the date on which the present infringement action was brought, no action was pending between the same parties on the same patent before another division of the Court of First Instance.

IPPT20250210, UPC CFI, LD Munich, Phoenix v ILME
IPPT20250210, UPC CFI, LD Munich, Esko v XSYS
Preliminary objection admissible, but unfounded (R. 19 RoP). The UPC's has jurisdiction relating to a European patent that has not yet lapsed at the time of entry into force of the UPCA pursuant to Art. 32(1)(a) UPCA, Art. 2g), Art. 3c) UPCA and covers infringement actions to the extent that they are based on acts of use which are alleged to have taken place before the UPCA entered into force and/or in the period between an opt-out and the withdrawal thereof (Article 84 UPCA). Jurisdiction and applicable law are separate aspects that must be assessed separately.

IPPT20250205, UPC LD Munich, Ericsson v Motorola
A preliminary objection can also be raised with regard to a counterclaim for revocation (R. 19 RoP). Since a preliminary objection is allowed for a revocation claim under R. 48 RoP, there is no good reason why the same cannot be true for a counterclaim for revocation. No jurisdiction for the counterclaim which is brought twice before the same division. Art. 33 (2) UPCA must be interpreted in such a way that this provision is not only applicable if an action between the same parties on the same patent is brought before several different divisions, but equally if an action between the same parties on the same patent is brought twice before the same division.

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

IPPT20241230, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi
Requests to be decided by the judge-rapporteur or the panel. Procedural economy: request to amend the action based on a request to amend the patent (R. 30 RoP, R. 263 RoP, R. 334(h) RoP))
The Judge-Rapporteur must keep in mind the principle of procedural economy not only with regard to the parties, but also as a representative for the bench as a whole. In the interests of procedural economy, it is not normally necessary, outside the standardised cases of opposition under Rule 19 RoP, for the panel to decide, in the context of a preliminary ruling under Rule 334 (h) RoP, on questions of substantial significance for the decision on the merits, such as the substantive admissibility of five requests for amendment of the action (R. 263 RoP), which are based on a request for amendment of the patent (R. 30 RoP). Substantive decisions of this scope are regularly to be left to the main proceedings, namely the oral proceedings, in particular the final decision by the panel.

IPPT20241218, UPC CFI, LD Hamburg, Visibly v Easee
Preliminary objection dismissed (R. 19 RoP). An alleged patent infringement is a matter of tort, delict or quasi-delict in the meaning of Art. 7 sub (2) of the Brussels I recast Regulation. Thus, the UPC has jurisdiction also for claims based on personal (director) liability with regards to an alleged infringement of a European patent under Article 32 UPCA. Whether the director of a company can be successfully sued before the UPC and held liable for the infringement of a patent is a liable is a question of the merits of the case which is not subject to the determination of jurisdiction and competence.

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
A breach of a standstill clause does not necessarily divest the breaching party of the right to bring an action but it may only give rise to liability for breach of contract.

IPPT20241203, UPC CFI, CD Milan, Pfizer v GlaxoSmithKline
Milan Central Division competent for revocation action (Article 33(4) UPCA, R. 19 RoP)). CD Milan competent, partial overlap of parties. The revocation action does not concern the same parties as the infringement action. UPC lacks jurisdiction in infringement action before the grant of the patent (article 97(3) EPC). An infringement action that is inadmissible at the time it is lodged, and hence brought in the context of Art. 33 par. 4 UPCA, cannot challenge the competence of the Central Division concerning a revocation action based on the same patent. No hearing before decision on Preliminary objection (R. 19 RoP, R. 264 RoP). Where the parties have had many opportunities to discuss (legal) questions and the Court does not have further questions to the parties or need to discuss legal issues, the Court may desist from having an oral earing. In the present case, parties have submitted written statements in two proceedings. No stay of revocation action until final decision on Preliminary objection (R. 295 RoP). The question of the validity of the patent will have to be dealt with in the infringement action, so there is no disadvantage for the defendant to proceed with this revocation action.

IPPT20241029, UPC CFI, RD Nordic-Baltic, Texport v Sioen
Preliminary objection dismissed (R. 19 RoP). Parallel jurisdiction during the transitional period also includes actions for a declaration of non-infringement, although such actions are not explicitly mentioned in Article 83.1 UPCA. An action for a declaration of non-infringement is, after all, the mirror of an action for infringement (cf. e.g. ECJ, 6 December 1994, C-406/92, ECLI:EU:C:1994:400, Tatry). The Court finds that there are not sufficient reasons for staying the UPC infringement proceedings because of Belgian proceedings for a declaration of non-infringement and fot revocation (Article 30 Brussels I recast). The fact that a final decision by the UPC may include remedies also covering Belgium does not lead to a different conclusion.

IPPT20241011, UPC CFI, LD Düsseldorf, Truma v CAN
No extension of time period for lodging Preliminary objection or Statement of defence (R. 9(3) RoP, R. 19 RoP, R. 23 RoP). Not justified by an alleged ineffectiveness of the service of process at the trade fair: both the start of the time period for filing a Preliminary objection and the time period for filing a Statement of defence are linked to the service of the Statement of claim

IPPT20240515, UPC CFI, LD Munich, Headwater v Motorola
Deadline for filing Preliminary objection by defendants 3-5 is extended by agreement from 13/05/2024 to 17/05/2024 (the deadline for defendants 1-2) (Rule 9.3 RoP, Rule 19.1 RoP). If all parties agree on the request, the request must generally be granted unless there are serious reasons to the contrary. No reasons to the contrary are apparent in the present case.

IPPT20240510, UPC CFI, CD Paris, Roche Diabetes Care v Tandem Diabetes
Preliminary objection rejected that UPC currently lacks jurisdiction because of violation of standstill agreement requiring a party has to inform the other party of the intention to file a lawsuit 90 days before the lawsuit is filed (Rule 19 RoP). Jurisdiction – the ability of a specific court to hear and issue a decision on one or more specific disputes – has to respond to objective criteria which must not vary depending on the time of the filing of a claim or on the identity of the claimant.

IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. No stay of UPC revocation action possible because of pending German revocation proceedings. Article 30 (1) Brussels I Reg recast is not applicable and in accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay its proceedings in cases involving EPO opposition proceedings when a swift decision is anticipated from the EPO. No time extension for lodging Statement of defence to revocation because of preliminary objection (Rule 49.1 RoP, Rule 9.3 RoP).

IPPT20240411, UPC CFI, LD Paris, ARM v ICPillar
Preliminary objections concerning competence of the Paris Local Division dismissed (Rule 19(1)(b) RoP, Article 33(1)(b) UPCA). The Claimant has demonstrated that one of the defendants is domiciled in France, that all the defendants have a commercial relationship and that the action relates to the same alleged infringement. The internal jurisdiction of the Paris Local Division under Article 33(1)(b) UPCA is justified. If in a case of multiple defendants one of the defendants has its residence within the territory of the local division seized, article 33(1)(b) UPCA applies regardless of whether the other defendants are based inside or outside the CMS or inside or outside the EU. Hence the only requirements to be met are: 1) the multiple defendants have a commercial relationship and 2) the action relates to the same alleged infringement. The requirement of a commercial relationship implies a “certain quality and intensity”. However, to avoid multiple actions regarding the same infringement and the risk of irreconcilable decisions from such separate proceedings, and to comply with the main principle of efficiency within the UPC, the interpretation of the link between the defendants should not be too narrow. The fact of belonging to the same group (of legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33(1)(b).

IPPT20231117, UPC CFI, LD Hamburg, Fives v Reel

Article 32(a) UPCA confers competence on the UPC to determine damages only after a prior action for patent infringement has been brought before a chamber of the UPC. The UPC does not have competence for actions for the determination of damages on the basis of patent infringement proceedings that have become final before a national court. Preliminary objection granted (Rule 19(1)(a) RoP)

IPPT20231004, UPC CFI, LD Hamburg, AGFA v Gucci

Extension and alignment of deadline for lodging Preliminary Objection because of procedural advantage and representative for defendants helping to make a prompt and successful service of the Statement of Claim possible though risking a shortening of the relevant deadlines. Extension in alignment with UPC system (two months before Statement of Defence).

IPPT20231004, UPC CFI, CD Munich, Nanostring v Harvard

Objections based on articles 29 and 30 Brussels Ibis Regulation may be the subject of a Preliminary objection under Rule 48 in connection with 19.1(a) RoP. Preliminary objection is to be dealt with in the main proceedings for reasons of procedural economy and efficiency (Rule 20.2 RoP).

IPPT20231013, UPC CoA, Amgen v Sanofi-Aventis
Valid date of service of statement of claim with Annexes (Rule 271 RoP). A Statement of claim, even if it refers to or announces the later submission of Annexes, can be validly served on a defendant, provided that the Statement of claim without the Annexes enables the defendant to assert its rights in legal proceedings before the courts of the UPC. A Statement of claim must therefore at least state with certainty the subject matter and cause of action. Only annexes that are indispensable for the understanding of the subject matter and the cause of action must be served (and where necessary translated) on a defendant, together with the Statement of claim. Extension of terms for Preliminary objections and Statement of defense because of unavailability of Annexes (Rules 13, 19 and 23 RoP). If a claimant did not upload the Annexes simultaneously with the Statement of claim in the CMS, and thus did not comply with Rule 13.2, and as a consequence these have not been available when the representative of the defendant accessed the CMS with the Access Code contained in the Notice, this in itself is sufficient to constitute a reasoned request by a defendant for an extension of the terms mentioned in Rules 19.1 and 23 RoP for lodging a Preliminary objection and the Statement of defense, regardless of the nature and/or content of the Annexes. Failing any specific circumstances of an individual case which calls for another term, which have to be brought forward by the claimant, the extension of the terms mentioned in Rules 19.1 and 23 shall compensate for and thus be equal to the period during which the Annexes have not been available after service of the Statement of claim contrary to Rule 13.2 RoP.

IPPT20230929, UPC CFI, LD Munich, Edwards Lifesciences v Meril

The possible subjects of a Preliminary objection are exhaustively listed in Rule 19(1) RoP. Motions pursuant to Rule 158(1) RoP are not listed. The same applies to referring certain issues to the Court of Justice of the EU or of suspending te proceedings due to pending parallel proceedings. The objections will be dealt with by the Division in the main proceedings.

IPPT20230824, UPC CFI, CD Munich, Sanofi-Aventis v Amgen

Preliminary objection against competence of Central Division in revocation action rejected because revocation action was already brought before the Central Division (article 33(4) UPCA). Statement of Revocation in revocation action was lodged in hard-copy on 1 June 2023 at 11.26, prior to the Statement of Claim in the infringement action at 11.45.

IPPT20230810, UPC CFI, LD Munich, Edwards Lifesciences v Meril

The prevention of a divergence of the deadlines for lodging a preliminary objection (Rule 19) is not necessary per se. On the one hand, an extension of the opposition period is not necessarily accompanied by an extension of the time limit for filing a statement of defence. This is because, as Rule 19.6 shows, the running of the time limit for filing a statement of opposition is not even affected by the filing of the statement of opposition, unless the reporter decides otherwise. Secondly, the opposition alone concerns the issues of the jurisdiction of the court, the use of the exception under Rule 5 of the Rules of Procedure, the jurisdiction of the Chamber and the language of the proceedings. These issues per se can be answered quickly and also differently for different defendants. Furthermore, a legal interest of the other party to have certainty on these issues, also in relation to individual defendants, as soon as possible must also be recognised. However, it should be noted that working with the new procedural law and case management system (CMS) poses significant challenges to all parties involved. Therefore, a practicable handling of the challenges that arise is required in the initial period. The Rapporteur therefore exercises the discretion granted by the Rules of Procedure to grant the application by way of exception.

Advertisements

Rule 19 – Preliminary objection

Advertisements