Latest substantive UPC decisions

• This decision related to service of an infringement claim by Med-El relating to cochlear implant systems on a Chinese-domiciled defendant.
• Article 48(1) UPCA and Rule 8.1 RoP require parties in the UPC to be represented. The first defendant had previously been subject to an ex parte preliminary injunction obtained by Med-El, and had authorised lawyers in the EU to accept service in relation to the provisional measures action. It had, however, expressly stated that its lawyers were not authorised to accept service of the main proceedings.
• Med-El sought permission to serve its statement of claim on the first defendant's lawyers. It noted that the Court of Appeal had previously acknowledged that the Chinese authorities had failed to serve court documents as required by the Hague Convention, and referred to a decision of the Mannheim LD that a representative's authority could not be limited to "specific actions arbitrarily chosen by the defendants" to exclude service of a matter that was "inextricably linked" to the proceedings, in that case an anti-anti-suit injunction.
• The Hamburg LD rejected Med-El's application. It held that parties do not need to be represented by the same lawyer in all proceedings before the UPC, nor is a lawyer authorised to act in provisional measures proceedings "automatically…authorised to represent the same party in a subsequent infringement action concerning the same patent, even if there is a link between the two proceedings". The link was different from that in the Mannheim LD decision, where the representative in the main proceeding could be service an application that was "inextricably linked" to that main proceeding.
• As a result, service of the statement of claim on the first defendant would need to be carried out in accordance with the Hague Convention as required by Rule 274 RoP. The second defendant had already been served the statement of claim and this decision did not affect that.

• In these proceedings, Sun Patent brought an infringement action in the Paris LD claiming, among other things, that the terms of a licence to the patent at issue offered by Sun Patent to Vivo were FRAND. On the same day, Sun Patent filed an application for protection of confidential information under Rule 262A RoP, requesting that the access to the unredacted version of its statement of claim and relevant exhibits containing "highly confidential information" be restricted to certain persons (Vivo's legal representatives and, under certain conditions, no more than three Vivo employees). Sun Patent subsequently limited its request, asking the court to exclude Vivo employees from having access to the highly confidential information.
• The Paris LD restricted access to the highly confidential information to specific persons, including three Vivo employees. The Paris LD also granted leave to appeal. Sun Patent applied for suspensive effect under Rule 223.4 RoP. It also subsequently lodged a statement of appeal under Rule 220.2 RoP, requesting that the unredacted documents not be accessible to Vivo's employees or, in the alternative, the three employees shall not participate in or advise on any licensing negotiations with counterparties to the disclosed licences or related agreements for a certain period of time. Sun Patent argued that the suspensive effect should be granted because the appeal would become pointless if the highly confidential information was disclosed to Vivo's employees and therefore suspensive effect was necessary to safeguard Sun Patent's right to be heard and to a fair trial.
• The Court of Appeal found that Sun Patent's application for suspensive effect was not well founded and refused to suspend the Paris LD's order giving three of Vivo's  employees access to the unredacted documents, pending Sun's appeal against the terms of the order.
• The Court of Appeal noted that suspending an order pending appeal is exceptional, and disagreed that giving access to the highly confidential information in the meantime would make the appeal pointless. It stated that the employees were duty bound not to use or disclose the highly confidential information for any purpose other than these court proceedings and could be sanctioned by the court with a penalty payment for breach of that duty.
• The Court of Appeal held that Sun Patent had not demonstrated any other facts or circumstances that could justify the suspensive effect. It noted that even if the disclosure to Vivo's employees would undermine the purpose of the appeal to some extent, Sun Patent had not shown that its interests in excluding the three employees outweighed Vivo's interests in granting them immediate access, given the deadlines Vivo faced for filing its written submissions and the relevance of the highly confidential information to those submissions.

• Brita brought infringement proceedings in the Munich LD against four Aquashield entities located in Germany, Austria, France and Italy in respect their distribution of Philips‑branded replacement water filter cartridges. Brita alleged direct infringement of its patent (EP 547) (claims 1–2) and indirect infringement (claims 12–13). The defendants counterclaimed for revocation.
• In considering claim construction, the court found that claim 1 protects a valve actuation device. The reference to a “valve” was construed as defining a purpose/fit (a purpose feature), and was considered to be an additional claimed component.
• In respect of validity, the patent was maintained in amended form with a single independent claim covering a liquid treatment device (comprised of a cartridge and a container) in which the valve is opened by applying a horizontal force component in such a way that the shut-off body is tilted to release the valve seat. The claim was found to clearly define the protection sought (meeting Article 84 EPC requirements) and the “tilting” feature did not amount to added matter (meeting the requirements of Article 123(2) EPC). The claim was also not found to be obvious over the cited art.
• As the defendants sold cartridges only, not the full “liquid treatment apparatus” of the maintained claim, the court found that there was no direct infringement. However the cartridges were held to be "a means which relates to an essential element of the protected invention". Such an element can be assumed if the means is "suitable to functionally interact with one or more features of the patent claim in the realisation of the protected inventive concept". As such, the contested embodiments were found to have indirectly infringed the amended patent.
• The defendants exhaustion defence under Article 29 UPCA was rejected by the Munich LD. The exhaustion defence failed because the filter cartridge offered and marketed by Brita does not have the characteristics of the maintained claim and therefore Brita has not exhausted its rights in respect of the patented combination.
• The court provided some clarity on the exhaustion defence more generally. The lawful acquirer of a product placed on the market by the patent proprietor is authorised to, among other things, use the product as intended. In this sense, exhaustion has occurred according to Article 29 UPCA. Intended use also includes customary maintenance and restoration for use if the functionality of the product is wholly or partially impaired due to wear, damage or other reasons.
• However, intended use does not include all measure that result in the re-manufacture of a patented product. If a part of a patented product is replaced, the decisive factor for determining whether it is treated as intended use or a new manufacture is whether the replacement "preserved the identity of the specific patented product placed on the market or whether a new product in accordance with the invention is created as a result". This is assessed by weighing the interests of the patent proprietor worthy of protection in the commercial exploitation of the invention and the interests of the customer in the unhindered use of the product according to the invention placed on the market, taking into account the nature of the patented product.
• If the part in question is normally expected to be replaced during the lifetime of the product and the public or customers legitimately expect to be able to continue to use the product by means of the replacement part, it can normally be assumed that the patented product placed on the market can be used permissibly. However, there are exceptional cases where the technical effects of the invention are reflected in the replaced part.
• This was held to be one of these exceptional cases because the technical and economic advantages of the invention were realised by the replacement of the part. As such, the Munich LD found there was no exhaustion
• A limited injunction was ordered, with the defendants being prohibited from offering, placing on the market etc its product without appropriate warnings. The Munich LD noted that if the attacked embodiment can (as was the case here) also be used without a patent, only limited protection is generally justified. This is to ensure, on the one hand, that economic trade with the attacked embodiment outside of the patent right remains unimpaired and, on the other hand, the patent-infringing use by the customer is excluded with sufficient certainty. The court ordered the defendants to put the following warnings in place: (i) B2B offers must carry a clear warning that use in a patented combination without Brita’s consent is not permitted; and (ii) consumer facing offers must clearly state the cartridges are not suitable for use in Brita “PerfectFit” containers. Brita was also awarded damages.

This analysis is based on a machine translation of a decision not available in English.

• Ahead of an in‑person oral hearing, Yealink requested simultaneous interpretation from the language of the proceedings (English) into Mandarin under Rule 109 RoP and for the Registry to make the arrangements, or, alternatively, permission to arrange interpreters at its cost.
• Yealink argued that simultaneous interpretation was appropriate because it is based in China (where English is not an official language), the case involves wireless presentation technology, and its company representatives would struggle to follow technical and operational arguments without real‑time interpretation. It further submitted that Barco chose the forum, language and parties, so interpretation costs should be costs of the proceedings.
• The Court of Appeal's judge-rapporteur held that the request was admissible (lodged within the one‑month window and compliant with Rule 109.1) but was unjustified on the merits.
• Article 51(2) UPCA and Rule 109 RoP permit court‑provided interpretation “to the extent deemed appropriate”. UPC proceedings are adversarial and commercial in nature and parties receive pleadings in the language of proceedings ahead of the oral hearing and therefore have time to organise themselves accordingly relative to the language of the proceedings. Absent court consent to hear witnesses/experts in another language (Rules 112.6, 177.2(f) RoP) and absent any interpretation needed for the judges, a party must justify a request for simultaneous interpretation (Rule 109.2 RoP).
• The fact that a defendant is based in a country where the language of proceedings is not an official language does not generally justify simultaneous interpretation. Parties must be represented under Article 48 UPCA and Rule 8.1 RoP by lawyers/patent attorneys familiar with the language. Difficulties for in‑house counsel or company officials do not generally justify simultaneous interpretation because their presence at the hearing is voluntary.
• The judge-rapporteur noted that parties remain free to engage their own interpreter at their expense, provided the Registry is informed at least two weeks before the hearing (Rule 109.4 RoP).
• On Yealink’s alternative request, the judge-rapporteur clarified the distinction between Rules 109.2 and 109.4 RoP. Under Rule 109.2 RoP the arrangements for simultaneous interpretation are made by the court and the costs become costs of the proceedings. If a party engages its own interpreter under Rule 109.4, that party bears the costs alone.
• As such, Yealink’s request for simultaneous interpretation was denied.

• Suinno brought an infringement claim against Microsoft in the Paris CD. In response, Microsoft filed a request for security for costs, which the Paris CD ordered. When Suinno did not pay, Microsoft sought a decision by default under Rules 355 and 158.5 RoP, requesting that the Paris CD include a Rule 356.3 notice (that any further default decision would be final). The Paris CD rejected that request and refused leave to appeal.
• Microsoft filed a request for discretionary review to the Court of Appeal, which was allowed by the standing judge under Rule 220.4 RoP. Microsoft's review request did not seek a Rule 356.3 RoP notice. After hearing the parties, the Court of Appeal revoked the Paris CD's order and issued a decision by default against Suinno.
• Microsoft subsequently applied under Rule 353 RoP to “rectify” the Court of Appeal’s decision by supplementing it with a Rule 356.3 notice, or alternatively to issue such a notice in a separate order. Suinno opposed, maintaining that no such notice had been requested or argued in the appeal.
• Although Microsoft's rectification application was admissible as it was brought within the one month time limit, it was not well founded and was therefore rejected. The Court of Appeal held the rectification under Rule 353 is confined to clerical mistakes, errors in calculation and obvious slips. Substantive changes or additions fall outside its scope. Under Article 76(1) UPCA and Rules 220.3, 222.1, 225 and 226 RoP, the Court is bound by the subject‑matter defined by the parties’ requests; it may not award more than is requested.
• Because Microsoft’s discretionary review request did not include a Rule 356.3 RoP notice, that issue was not part of the appeal’s subject‑matter. Adding such a notice post‑decision would not be rectifying an “obvious slip” but expanding the relief granted, which Rule 353 RoP does not permit. As a general rule, any request to include a Rule 356.3 RoP notice must be made in the proceedings concerning the decision by default. Microsoft identified no facts justifying an exception.
• As such, the Court of Appeal dismissed Microsoft’s application for rectification and its alternative request for a separate order.

• Seoul Viosys (SV) brought an infringement action against two expert entities in the Düsseldorf LD. expert counterclaimed for revocation. On 10 October 2024, the Düsseldorf LD declared the patent invalid, revoking it for the territories of Germany, France, Italy and the Netherlands. SV's requests for amendment were dismissed, along with its infringement action. SV was ordered to pay expert's costs.
• On 12 December 2024, expert applied for a cost decision for the infringement proceedings and the revocation counterclaim, requesting €111,000 under the separate UPC costs procedure (Rules 150-156 RoP). The Düsseldorf LD dismissed the application as inadmissible for missing the one‑month deadline in Rule 151.1 RoP, which ran from service of the merits decision on 10 October 2024.
• expert subsequently sought leave to appeal, including requesting a preliminary ruling from the CJEU, arguing that Rule 151 RoP unlawfully restricts the right to costs under Article 69 UPCA, which conflicts with Articles 47 and 17 of the Charter of Fundamental Rights of the EU and national limitation concepts, and that extensions under Rule 9 RoP (including retroactively) should be available.
• The Court of Appeal's standing judge confirmed that the Rule 151 RoP one‑month period is "materially preclusive": once expired, the right to seek a cost decision lapses and cannot be rescued by Rule 9 RoP. Failure to meet the time limit for an application for a costs decision under Rule 151.1 can only be remedied through re-establishment of rights pursuant to Rule 320 RoP.
• On the CJEU referral requests, the standing judge held the UPC cannot seek interpretation of the UPCA (an international agreement) or the RoP (procedural rules akin to national law) from the CJEU. Any reference must concern EU law only. Article 69 UPCA implements Article 14 of the Enforcement Directive, which is silent on time‑limits; the real issue was the UPC’s own one‑month rule.
• Applying established EU principles of procedural autonomy, equivalence and effectiveness, the Court of Appeal's standing judge found that a clear, service‑triggered one‑month deadline, coupled with a re‑establishment safety valve, did not make exercising EU‑derived rights impossible or excessively difficult. There was no reasonable doubt to justify a reference and the requests were refused.
• Leave to appeal was denied and the Düsseldorf LD's dismissal of the late costs application was upheld.

• Genevant and Arbutus initiated two separate infringement proceedings at The Hague LD concerning the alleged infringement of two patents (EP 254 and EP 767) by fifteen Moderna entities domiciled across UPC contracting states, other non-UPC EU member states and third states, such as the US, UK and Switzerland.
• Moderna filed preliminary objections, challenging the UPC's international jurisdiction over certain defendants. For example those domiciled outside UPC Member States, and those that were neither domiciled nor accused of infringing acts in the Netherlands.
• Pursuant to a procedural order, the judge-rapporteur dismissed Moderna's preliminary objections save that it reserved its decision concerning the long-arm jurisdiction with respect to defendants Moderna US, Moderna US-TX, Moderna Switzerland, Moderna Spain, Moderna Norway, Moderna UK and Moderna Poland, to be dealt with in the main proceedings.
• Following this, Moderna filed an application under Rule 9 RoP for the panel to review the judge-rapporteur's case management order pursuant to Rule 333 RoP.
• Moderna argued that: (a) the decision did not take into account the burden of proof for infringing acts within the UPC territory; (b) the decision did not reflect the fact that holding a marketing authorisation for use by other entities within a group structure does not qualify as an act of patent infringement, but was merely an unlawful act for which the UPC has no competence; and (c) the judge-rapporteur wrongly stated that the requirements of Article 8(1) of the recast Brussels Regulation (or Article 6(1) of the Lugano Convention) had been met.
• The Hague LD found that the application had only been substantiated in respect of Moderna Norway and Spain. As such, the application was deemed not to have challenged the decision to refer consideration of the long-arm jurisdiction to the main proceedings.
• Jurisdiction with respect to Moderna Spain was based on Articles 7(2) and 8(1) recast Brussels Regulation. Under Article 7(2), the UPC has jurisdiction in an infringement action within the meaning of Article 31(1)(a) UPCA against a person domiciled in an EU Member State where the harmful event occurred or may occur. Under Article 8(1), a person domiciled in an EU Member State may also be sued where it is one of a number of defendants provided that the claims are so closely connected. This applied to Moderna Spain directly because it is domiciled in an EU Member State.
• With respect to Moderna Norway, it is not domiciled in an EU Member State, but Norway is a party to the Lugano Convention. The Lugano Convention provides provisions corresponding to Article 7(2) and 8(1) recast Brussels Regulation. The Hague LD assumed (and it was not contested by the parties) that the jurisdiction rules of the recast Brussels Regulation that apply to the UPC, correspondingly apply in the assessment of the jurisdiction rules under the Lugano Convention. As such, jurisdiction was established over Moderna Norway.
• Nonetheless, Moderna contested the court's international jurisdiction by arguing that the assessment that Moderna Spain and Norway (threaten to) infringe the patents within the UPC territory is incorrect. The court noted that for establishing international jurisdiction, it is sufficient for the claimants to allege in a substantiated way that either Moderna Spain or Norway infringe the same patents with the allegedly infringing product in their home countries collectively with Moderna Netherlands, with Moderna Netherlands acting as an anchor defendant. The Hague LD found that the burden for establishing international jurisdiction in relation to a preliminary objection is considerably lower than for the establishment of infringement in the main proceedings. Based on the available evidence, Genevant and Arbutus were considered to have sufficiently substantiated the home infringements in Norway and Spain connectively with the infringement involving Moderna Netherlands.
• Accordingly the Hague LD confirmed the judge-rapporteur's procedural order and refused the Moderna's request for an interim appeal of the decision.

• Cliag and Ethicon applied to the Munich LD for an order of provisional measures (preliminary injunction). The Munich LD granted the preliminary injunction. Rivolution appealed the decision, although the reasons for the decision were not yet available.
• Rivolution had applied for suspensive effect of the Munich LD's decision under Article 74 UPCA and Rule 223.1 RoP until the Court of Appeal's decision on the substantive appeal. The Court of Appeal rejected the request. The Court of Appeal can only grant a request for suspensive effect if the circumstances of the case justify an exception to the principle that an appeal has no suspensive effect. Therefore, the court must examine whether the appellant's interest in maintaining the status quo until the decision on its appeal outweighs the interest of the respondent. Suspensive effect may be ordered if the order being appealed is "manifestly erroneous" or the enforcement of the contested decision would render the appeal "largely irrelevant".
• According to Rule 223.2 RoP, an application for suspensive effect must also contain: (a) the reasons why there should be suspensive effect; and, (b) the facts, evidence and legal submissions relied upon. This means that such an application must, on its own, enable the Court of Appeal to decide on it, if necessary even without further information.
• As the reasons were not yet available, no evident error in the decision could be established. The Court of Appeal explained that if the reasons for the decision are not available, accepting that the decision contains an obvious error will only be considered where the error can be spotted without knowledge of the reasons. The Court of Appeal gave the example where the operative part of the decision results in a legal consequence that does not arise from either the UPCA or the RoP.
• In this case, it was not possible to determine whether the Munich LD misapplied the urgency requirements or the weighing of interests without knowing the reasons for the decision.

This analysis is based on a machine translation of a decision not available in English.

• The claimant sought a preliminary injunction to block allegedly infringing sales of the Dreame Airstyle Pro and Dreame Pocket Neo hair stylers, not only in UPC countries, but also in Spain (an EU country that is not participating in the UPC system). The products were manufactured by a Hong Kong-based company, Dreame International, and sold in Germany and Sweden via two local distributers, Teqphone GmbH and Dreame Technology AB.
• In addition, Dreame International had appointed a German entity, Eurep GmbH, as its "authorised representative" in the EU. The court relied on this entity as an anchor to extend its jurisdiction to cover all of Dreame International's alleged infringements, even beyond the UPC territory, to Spain.
• Under Article 4(1) of the recast Brussels Regulation, the UPC had jurisdiction over the local distributors and Eurep because they were incorporated in UPC countries. The court stated that it is established case law of the UPC that "the UPC has international jurisdiction also with respect of the infringement of national parts of an European Patent outside of the UPCA countries and even outside of the European Union", which it noted was in line with the CJEU's decision in BSH v Electrolux.
• The Hamburg LD concluded that jurisdiction based on domicile under Article 4(1) of the recast Brussels Regulation is a "universal jurisdiction", which covers infringing acts in non-UPC states if there is at least a "plausible allegation" of those acts by the defendant in the country in question.
• The court held that the claimant had provided "plausible facts" that Eurep infringed in Spain as an intermediary and that it could be injuncted under the Spanish Patent Act. The court therefore held that Eurep was subject to the court's international (or long arm) jurisdiction.
• Dreame International is based in Hong Kong, so the court could not exercise universal jurisdiction over it based on domicile. This would have meant that UPC's jurisdiction was limited to the company's acts in the UPC territory. The court therefore considered whether Eurep could serve as a UPC-domiciled "anchor defendant" to pull Dreame International into the court's universal jurisdiction.
• The court noted that it is mandatory under EU product safety regulations for a non-EU-based manufacturer to have an "authorised representative" in the EU. Eurep was therefore "an essential party in the distribution in the EU for the electronic products in question" that provided an "indispensable service to the actual infringer", and without which Dreame International could not sell its products in the EU. It observed that Eurep could "stop any distribution by its own will" because "by terminating its role, the distribution of the products are illegal".
• This meant that there was the necessary "close connection" in order for the court to have jurisdiction over Dreame International based on Eurep's place of domicile under the anchor defendant provision in Article 8(1) of the recast Brussels Regulation. As such, the court decided that it had jurisdiction over Dreame International not only in respect of its infringements in the UPC territory, but across the entire EU, including Spain.
• Accordingly, the Hamburg LD found that the claimant's patent was more likely than not infringed and the defendants had not submitted any "substantiated" validity attacks. After weighing the interests of the parties – including the fact that they were competitors and Dreame's products were half the price of the claimant's – the court granted a preliminary injunction against all four defendants for the UPC territory. For Spain, a preliminary injunction was granted against both Dreame International and Eurep.
• For more information and discussion on how the reasoning of this decision is applicable to other sectors such as medical devices and pharmaceuticals, see our Insight here.

• Dolby filed an application for admission of a further pleading, arguing that it was appropriate for each party to the infringement proceedings to be given the opportunity to submit two written submissions concerning the defendants' FRAND objection, which was raised for the first time in its statement of defence. Dolby also maintained that the defendant's "FRAND reply" (the duplicate legal part in the infringement proceedings) contained new submissions that needed to be addressed.
• The Düsseldorf LD exercised its discretion under Rule 36 RoP and granted Dolby leave to file a further pleading on the defendants' FRAND objection. It noted that this was necessary for reasons of fairness, equity and efficiency, as well as the right to be heard. The court also held that the defendant would not be prejudiced and it would not delay the proceedings because Dolby's application was filed before the close of the written procedure and it filed its additional written statement when making its application under Rule 36 RoP.
• This case illustrates the flexibility of the UPC, when necessary, to allow parties to file further pleadings provided that it does not delay the proceedings.

This analysis is based on a machine translation of a decision not available in English.

• Winnow filed infringement proceedings against Orbisk in relation to its patent for a system and method for monitoring food waste. Orbisk denied infringement and filed a counterclaim for revocation.
• The Hague LD applied the Court of Appeal's decision in 10x Genomics, and also cited the EPO's Enlarged Board of Appeal's decision G 1/24 when considering the principles relating to claim construction. The court needed to interpret the meaning of "cleaning" in one of the claim features, over which the parties disagreed. It held that it was used in a broad and generic way and was not limited to any of the examples or techniques provided later in the description. As such, it was "to be interpreted broadly and encompasse[d] any type of data cleaning relating to weights and/or categorisations".
• In considering validity, the court applied the problem-solution approach to assess inventive step, which had been suggested by the parties and as used by the EPO and the Munich LD previously. Given that the parties had followed the problem-solution approach, the Hague LD noted that it did not need to decide whether the problem-solution approach is the (only) approach to be followed, noting that "[a]ny approach would render the same result in this case".
• Due to the court's broad interpretation of the term "cleaning", it found the patent invalid. The first and second auxiliary requests were also invalid for lack of inventive step, and added matter and insufficient disclosure, respectively.. The Hague LD did, however, uphold the patent on the basis of the third auxiliary request. Winnow had not made an infringement claim on the basis of the third request and, as such, Winnow's infringement claim was unsuccessful and therefore dismissed.
• Given the outcome, the court took into account each party's partial victory in considering costs, stating:
• “[t]he Court considers that the economic focus of the dispute was on the Orbi [the challenged embodiment], while the patent is upheld in such a way as to take the Orbi outside the scope of protection. Furthermore, the threat of infringement was the primary reason for initiating the counterclaim. Hence the Court considers that Winnow shall compensate to Orbisk the costs for counterclaim for revocation in full. However, since Orbisk pursued the revocation counterclaim also against Conditional Request 3, which was upheld but not asserted against it, a deduction of cost of 15% is in order.”

• Boehringer applied to the Lisbon LD for provisional measures (preliminary injunction) against Zentiva in relation to its nintedanib generics. Boehringer alleged that the generic fell within scope of the patent and that there was a serious threat of infringement. The Lisbon LD denied the preliminary injunction, holding that Boehringer had not demonstrated that there was a risk of imminent infringement.
• The Court of Appeal overturned the Lisbon LD, granting Boehringer a pan-UPC preliminary injunction on the basis that infringement was "imminent" in Portugal following completion of pricing and reimbursement processes.
• The Court of Appeal held that the test for "imminent infringement" was whether the potential infringer has "already set the stage" for infringement to occur, such that it was "only a matter of starting the action" as the "preparations for it have been fully completed". This needs to be assessed on a case-by-case basis. The "set the stage" test has previously been used by the Düsseldorf LD in Novartis and Genentech v Celltrion (although in that case the stage was deemed not to have been set so no preliminary injunction was granted).
• In the generics context, the mere application for an MA does not amount to an imminent infringement, nor does the grant of one create imminence.. However, completion of national health technology assessment, pricing and reimbursement procedures can amount to an imminent infringement. This needs to be assessed in light of the national regulatory and legislative context and the circumstances of the case.
• In Zentiva's case, the Court of Appeal found it more likely than not that, having obtained PEP approval in Portugal, Zentiva could offer its generics to public hospitals without any further administrative steps or procedures. There was nothing but "self-restraint on Zentiva’s side" to stop it from offering its products for sale in public procurement exercises. The court also stated that Zentiva had "not offered any credible explanation" why, other than patent infringement, it had obtained its PEP over a year before Boehringer's patent expired.
• The court concluded that Zentiva had set the stage for offering its generics in Portugal, so that the infringement was only a matter of starting the action because the preparations had been fully completed. It went on to consider that the requirements for a PI of both "necessity" (given the lower price of Zentiva's products, which would undercut Ofev® by at least 30%) and "urgency" were met, and ordered a PI.
• For more information, see our Insight here.

• In this case, the Mannheim LD refused CeraCon leave to amend its revocation counterclaim under Rule 263 RoP to introduce new prior art. The application was made two months after its counterclaim, coinciding with the deadline for the defence to counterclaim. Thus judge-rapporteur held that it was too late. CeraCon's claim that the new prior art was a very strong novelty attack was irrelevant. As the judge-rapporteur refused CeraCon's request, it submitted a request for a review of the judge-rapporteur's decision by the panel.
• The Mannheim LD upheld the judge-rapporteur's decision. Where a prior art document "can be easily found applying an [sic] usual search method", there must be special circumstances to justify leave to amend. None were present here, and the panel was unconvinced that CeraCon had acted with reasonable diligence. Indeed, CeraCon admitted that its search string identified the prior art and it must have been overlooked by the search providers. The panel decided that admitting the new prior art at this stage would "unreasonably hinder" the patentee's defence to revocation and would delay the trial.
• The panel was not swayed by the argument that the new prior art was highly relevant, being largely identical to the patent in suit. CeraCon argued that it was clear beyond doubt that the patent was invalid, and thus it was in the interests of the public and procedural economy to admit it, rather than require separate proceedings. The panel rejected these arguments, noting that any "unacceptable hardship" could be avoided by suspending the infringement proceedings or rendering a conditional decision, pending a separate revocation action.

• This was a rare appeal against a refusal by the EPO to grant unitary effect to the applicants' patent concerning an ingestible biotelemetry device.
• The UPC hears appeals against tasks undertaken by the EPO in relation to unitary effect (that is, granting unitary patents), under Article 9 of Regulation 1257/2012 and Article 32(1)(i) UPCA. The tasks are essentially formal in nature, so the need for appeal is rare.
• In this case, the applicants for the unitary patent were Bodycap, the French National Centre for Scientific Research and the University of Rennes. The EPO refused unitary effect after the applicants had supplied an incorrect address for the University. This was identified by the EPO, but the applicants subsequently failed to correct it within the 30-day period granted to do so by the EPO.
• The applicants appealed to the UPC, requesting that the EPO's decision be annulled under Rule  97 RoP. They argued that the address information was sufficient to identify the University of Rennes and that, in any case, they missed the deadline to correct by a "negligible" period of 4 days.
• The Milan CD rejected the appeal. Unitary patent holders' addresses are required to guarantee the rights of third parties and for legal certainty. The address supplied for the University was "simply inaccurate". It was irrelevant that the address had only recently changed. The system allows for the correction of formal errors  the period of 30 days allowed was "perfectly reasonable", and there is no provision in the relevant regulations for this period to be extended. It is the responsibility of patent holders to comply with the deadlines allowed, and granting an extension would violate the principle of legal certainty and the coherent and uniform interpretation of the rules.

This analysis is based on a machine translation of a decision not available in English.

• This was an infringement and revocation action concerning Sanofi's patent EP 857, which was parallel to proceedings between Sanofi and Amgen relating to Sanofi's EP 3 536 712. In the EP 712 action, the Düsseldorf LD found the patent valid but not infringed by Amgen's PCSK9 inhibitor product, Repatha.
• The EP 712 decision is under appeal, and Sanofi sought to stay these proceedings pursuant to Rule 295(m) RoP on the basis that infringement of EP 857 involves the same factual and legal questions.
• The court allowed the stay, finding that the stay was in accordance with the requirements of proper administration of justice. It held that it was reasonable to conserve the court's and the parties' resources until after a decision of the Court of Appeal in the EP 712 case. It stated that, if the Court of Appeal upheld the finding of non-infringement of EP 712, the Düsseldorf LD was likely to dismiss the present claim, so staying proceedings would avoid unnecessary expenditure in the meantime.
• On the other hand, if the Court of Appeal upheld the appeal it was "reasonable and fair" that Sanofi should be able to present new legal arguments, and Amgen would then have an opportunity at first instance to argue why the case should be approached differently.
• Contrary to Sanofi's arguments, the Düsseldorf LD did not consider a stay to be in conflict with the right to an effective legal remedy and a fair and public hearing within a reasonable time or the principles of proportionality, flexibility, fairness and equity. It noted that no (permanent) injunction had been granted against Amgen.

• In these proceedings, igus was granted judgment in default and an injunction against Whale Technology. Whale is based in China, but was served with proceedings at a trade fair in Germany, and failed to file a defence.
• igus brought a claim against Whale for infringement of its European patent with unitary effect relating to a cable protection guide for cleanroom applications. Whale had offered its cable protection system at a trade fair in Hannover Messe and via a catalogue sent to potential customers who visited its booth at the trade fair.
• Whale was served with the statement of claim at the trade fair, with a bailiff handing it to a Whale employee. Service at a temporary place of business is a permitted place of service under Rule 270(5)(a) RoP.
• Whale did not file a defence, and igus sought judgment in default. Judgment in default may be granted under Article 37 of the UPC Statute (Annex 1 of the UPCA) and Rule 555 RoP if the defendant has failed to file a defence in the time allowed, the facts put forward by the claimant justify the remedy sought and the conduct of the defendant does not preclude it.
• The Düsseldorf LD considered that igus had objectively justified its claim, and that nothing in Whale's conduct precluded default judgment. The court held that igus had "conclusively argued that the contested embodiment realise[d] all the features of claim 1 of the patent in suit in accordance with the literal meaning", and that it had "equally conclusive[ly]" argued that Whale offered its product in the UPC territory, namely in Germany, both through the trade fair and distribution of its catalogue.
• The Düsseldorf LD held that igus was entitled to the relief sought. It therefore ordered remedies including an injunction, and an order for recall of Whale's products from the channels of distribution, information about Whale's infringement, and provisional costs of €26,000. The remedies were reinforced by penalties of €10,000 per product or €30,000 per day for infringement, and €30,000 per day for failure to recall the infringing products.

This analysis is based on a machine translation of a decision not available in English.

• In these proceedings between Wonderland and Cybex relating to a patent concerning wheels to strollers, the Düsseldorf LD made an early decision not to bifurcate and to hear Cybex's revocation counterclaim alongside Wonderland's infringement claim.
• Under Article 33(3) UPCA, where a defendant counterclaims for revocation in proceedings for infringement brought in an LD, the LD must decide whether to proceed with both actions, bifurcate the case and refer the revocation action to the CD or refer both actions to the CD. If the LD hears the counterclaim, a technically qualified judge is to be appointed.
• Rule 37.1 RoP requires the panel to decide the approach as soon as practicable after the close of written proceedings. However, under Rule 37.2 RoP, it may take an earlier decision if appropriate having considered the pleadings and given the parties an opportunity to be heard.
• Here, the Düsseldorf LD exercised its discretion to hear both the infringement action and revocation counterclaim, stating that such an approach "seem[ed] to be appropriate in particular for reasons of efficiency". It also noted that it was preferable for both validity and infringement to be decided on the basis of a uniform interpretation by the same panel of judges, and that an early decision would set the framework for possible questions.
• The parties had been heard and not objected to the approach.

• These proceedings concerned three of CUP&CINO's patents for methods of producing milk foam. The Düsseldorf LD made an early decision not to bifurcate and to hear Alpina's revocation counterclaim alongside CUP&CINO's infringement claim.
• Under Article 33(3) UPCA, where a defendant counterclaims for revocation in proceedings for infringement brought in an LD, the LD must decide whether to proceed with both actions, bifurcate the case and refer the revocation action to the CD or to refer both actions to the CD. If the LD hears the counterclaim itself, a technically qualified judge must be appointed.
• Rule 37.1 RoP requires the panel to decide the approach as soon as practicable after the close of the written proceedings. However, under Rule 37.2 RoP, it may take an earlier decision if appropriate having considered the pleadings and given the parties an opportunity to be heard.
• Here, the Düsseldorf LD stated that "[s]ince the parties raised no objections to such a procedure, the question of how to proceed…could be decided before the conclusion of the written procedure that the parties".  
• It exercised its discretion to hear both the infringement action and revocation counterclaim. It noted that the technology was "rather moderate within the known spectrum of patent disputes", that an early decision under Article 33(3) UPCA was sensible for reasons of efficiency, and it was in the interests of procedural economy to appoint the technically qualified judge early, so their availability could be taken into account in scheduling.

This analysis is based on a machine translation of a decision not available in English.