Latest substantive UPC decisions

• Hologic commenced infringement proceedings against Siemens and, in response, Siemens filed a counterclaim for revocation. Siemans sought security for costs in relation to these proceedings, in the sum of €1.2 million, and requested that Hologic provide the security within three weeks.
• Siemens argued that enforcing a cost order against Hologic would be unduly burdensome because Hologic's registered place of business was in Massachusetts, USA, which had not ratified any international agreement regarding the recognition of foreign judgments. Meanwhile, Hologic maintained that mere foreign domicile does not warrant such an order: rather, it requires a demonstrable risk of non-enforceability of costs and/or concrete indications of financial instability.
• The Düsseldorf LD confirmed that the burden of showing that the enforcement of a cost order is "unduly burdensome" is on the applicant (here, Siemens). The applicant must provide evidence of the applicable foreign law to be applied in the territory where the order will be enforced and apply it to the situation at hand. The Düsseldorf LD held that as Siemens did not do this it did not provide sufficient evidence for its application and its application was dismissed.
• The Düsseldorf LD noted that according to UPC case law, the US courts routinely recognise and enforce judgments of foreign courts.

• This was the first UPC case dealing with second medical use claims. The case was part of a long running dispute between Sanofi/Regeneron and Amgen. This decision involved an infringement action in respect of a second medical use patent concerning the use of PCSK9 inhibitors for reducing Lp(a) in patients at risk of cardiovascular disease brought by Sanofi and Regeneron (Regeneron as patent proprietor and Sanofi as exclusive licensee) against various Amgen entities. Amgen made a counterclaim for revocation.
• The validity of Regeneron's patent was upheld but the Düsseldorf LD decided that there was no infringement by Amgen's Repatha product.
• The Düsseldorf LD held that to prove infringement of a second medical use claim, Sanofi/Regeneron would have to show that: i) the alleged infringing product (here, Repatha) was offered or placed on the market in such a way that either led to or may lead to the claimed therapeutic use (here, reducing Lp(a) levels in a patient from the relevant patient group); and ii) the alleged infringer (Amgen) knows or should reasonably have known that offering or placing the medical product on the market led to or may lead to the claimed therapeutic use.
• The second (subjective) element was where Sanofi/Regeneron had failed to make their case. There were doubts that Amgen's placing Repatha on the market led to the claimed use (or even that it may lead to the claimed use) and Sanofi/Regeneron did not dispel those doubts. Sanofi/Regeneron did not show that any marketing efforts by Amgen were aimed at "selling" Repatha for the claimed use. The information in the SmPC was determined not to lead to the claimed use of reducing Lp(a) level and there was no substantial likelihood that physicians would prescribe Amgen's product for such use.
• In respect of Amgen's counterclaim for revocation, Sanofi/Regeneron validly claimed priority from two priority documents as the combination of features in claim 1 were directly and unambiguously disclosed in the priority documents. The patent was held to be novel and inventive over the prior art. There was no unambiguous disclosure of the use of PCSK9 inhibitors for reducing Lp(a) levels in the claimed patient group, and the skilled person would not have been motivated to implement the claimed use due to prevailing hypotheses and genetic evidence. The patent sufficiently disclosed the claimed invention, including the therapeutic effect of reducing Lp(a) level in the patient group, and the combination of features in claim 1 was held to be unambiguously disclosed in the original application.

• The decision concerns the infringement actions relating to EP 466 brought by various Sanofi entities against multiple defendants, including Accord Healthcare, STADA, Reddy Pharma, and Zentiva, concerning various CABAZITAXEL products.
• The judge-rapporteur decided to exercise their case management powers in Rule 332(d) RoP, referring all requests to the panel for decision after the main oral hearing. With respect to the preliminary objections raised, the judge-rapporteur reminded the parties that the Court of Appeal has already ruled that there can be a carve-out of certain UPC contracting member states and that the UPC has jurisdiction over acts committed before 1 June 2023. The Court of Appeal has also held that Article 34 UPCA has the effect that it is sufficient to prove an act of infringement in one UPC contracting member state in order to claim infringement in all.
• As for the validity of the patent at issue, the judge-rapporteur noted that the French designation of the patent had been invalidated at first instance and that an appeal was pending, but also that the EPO Opposition Division had upheld the patent and a further appeal was pending. The non-final invalidation in France raised doubts about the validity of the patent and therefore it would be more economical to wait for the EPO Board of Appeal's decision. Likewise, infringement of the patent could not be decided and, again, it would be better to wait for the EPO Board of Appeal's decision.
• The judge-rapporteur found that Sanofi's representative had not succeeded in submitting a clear and unambiguous set of claims and requests. However, the court decided not to dismiss the action on formal grounds at this stage. Instead, any ambiguities would be interpreted by the panel to ensure that they were decided on their merits, although there might be costs implications for Sanofi because of the ambiguities.
• The preliminary objections were ordered to be dealt with in the main proceedings, and the remaining pending requests were referred to the panel for decision after the main oral hearing. The written procedure closed on 8 August 2025, with oral hearings scheduled for 14-17 October 2025.

• The decision concerned YEALINK's application for rectification of a final order issued by the Brussels LD on 21 March 2025 concerning legal costs.
• The application for rectification was based on Rule 353 RoP, which allows for rectification in exhaustively specified circumstances: i) clerical errors, ii) miscalculations, and iii) obvious omissions.
• The Brussels LD found that there were no clerical errors, miscalculations, or obvious slips in the final order and determined that the awarded legal costs of €112,000 were correctly stated and justified. As such, the court dismissed YEALINK's application for rectification, affirming the original final order without any amendments.

• Grundfos brought a patent infringement claim against Hefei in the Düsseldorf LD relating to its patent (EP'423) concerning heating circulation pump assembly. Hefei counterclaimed for revocation. Grundfos made a number of auxiliary requests in case the patent as granted was found to be invalid.
• The Düsseldorf LD found Grundfos' patent to be valid. The invention according to claim 1 was found to be clearly and completely disclosed, meeting the requirements of Article 83 EPC.
• Hefei also claimed that the patent lacked novelty and/or inventive step. Hefei sought to introduce new prior art in support of its counterclaim, which was said to amount to an extension of its counterclaim. The court noted that under Rule 263 RoP a party may apply to the court at any point in the proceedings for leave to amend or extend their claim, including a revocation counterclaim. However, the applicant must state the reasons why the amendment or addition was not already included in the original pleadings.
• The court can refuse permission if, taking into account all the circumstances including the frontloaded nature of UPC proceedings, the party requesting the amendment cannot satisfy the court that: a) the amendment count not have been made earlier with due care; and b) the amendment does not unreasonably impede the other party in the conduct of the proceedings.
• Both conditions must be met and the burden of proof lies with the applicant. In this case, Hefei made no such application to the court. It did not provide any reasons why the prior art in question could not have been introduced earlier and it could not be established that Grundfos would not be unduly impeded in its conduct of the proceedings.
• The Düsseldorf LD found that Hefei's products infringed Grundfos' patent; they contained electronic means to switch from internal to external control, which fell within the scope of the patent claims.
• The court ordered a permanent injunction to cease the infringing activities. It also ordered Hefei to provide detailed information and accounting on the infringing products, recall and destroy the infringing products, and pay provisional damages of €64,000 to Grundfos.

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

• Insulet filed an application for an ex parte preliminary injunction against EOFlow relating to its patent concerning a fluid delivery device for delivering therapeutic liquids to patients in the Milan CD. The Milan CD held that the patent appeared to lack novelty over a US patent application and therefore it appeared more likely than not that the patent was invalid.  
• Insulet also submitted a simultaneous application for a preliminary injunction against Menarini, the exclusive European distributor of EOFlow's attacked embodiment, in the Milan LD. This application was also rejected. Insulet appealed both decisions and the Court of Appeal heard the two cases together. During the hearing, a settlement was reached between Insulet and Menarini but not with EOFlow.
• In the appeal against the Milan CD's decision between Insulet and EOFlow, the Court of Appeal held that Insulet's appeal was successful and the preliminary injunction should be granted.
• In the context of claim construction, EOFlow argued that its expert's opinion should be followed because Insulet did not provide an expert opinion of its own. The Court of Appeal disagreed, holding that interpretation of a patent claim is a matter of law and therefore the court cannot leave the task to an expert. It must construe the claim independently. Just because one party does not submit an expert opinion does not mean the court has to follow the submitted expert opinion. The Court of Appeal reminded the parties that the skilled person is a notional entity that cannot be equated with a real person in the technical field. When considering the definition of the skilled person, the decisive factor is not the individual knowledge and ability of a person, but the specialist knowledge that is normal to the relevant field of technology.
• Based on the Court of Appeal's own interpretation, it held that it was more likely than not that the patent is valid as the US patent application did not disclose all of the features of the relevant claim. The court also held that is was more likely than not that the attacked embodiments infringed the patent. After the weighing of interests, the Court of Appeal held that the requested preliminary injunction should be issued.

• The claimant, Agfa, is the proprietor of a patent relating to manufacturing methods for decorating natural leather. Agfa claimed that the defendants, various Gucci entities, had infringed the patent. The defendants made a counterclaim for revocation. Both the infringement claim and revocation counterclaim were admissible but were unfounded and therefore dismissed.
• In relation to claim interpretation, the court decided that if the specification is not consistent with the claims as granted, it cannot assist with a broad interpretation. The patent may be used as its "own lexicon". Thus, the term "achromatic" in claim 1 was given a narrow interpretation based on the narrow definition provided in the description.
• The court did not allow the defendants to raise new grounds of invalidity or new documents in the oral hearing for the first time.
• The defendants' invalidity counterclaim alleged that the patent was not novel, and that it lacked inventive step over both prior art and public prior use. With respect to the inventive step argument based on prior art, the Hamburg LD decided that a combination of the prior art would not lead the skilled person clearly and unambiguously to print an image and combine them together according to the solution of the patent in suit. As for the public prior use inventive step attack, the court held that the use did not amount to a disclosure of the specific type of base coat used in the products.
• Agfa's infringement claim also failed because the Hamburg LD found that the attacked embodiments did not make use of all of the features of the claims.

• As was the case in separate proceedings between the same parties, NJOY brought a revocation action against a Juul Labs' patent in the Paris CD. The patent was revoked and Juul Labs appealed, but sought to stay the appeal proceedings due to parallel opposition appeal proceedings before the EPO Boards of Appeal. The parallel EPO proceedings had been accelerated. NJOY agreed to the stay.
• The Court of Appeal applied the same reasoning as it did in its previous decision.. As the Board of Appeal had accelerated the appeal proceedings and as its decision was expected rapidly (before or soon after the possible date for an oral hearing at the Court of Appeal), the stay application was granted.

• Kinexon filed an action to revoke Ballinno's patent for a method and system for detecting offside play in football. The patent is in force in Germany and the Netherlands.
• The Paris CD revoked Ballinno's patent, finding that claims 1 and 8 were invalid for lack of novelty and lack of inventive step. Claims 3, 7, 10 and 15 were also invalid for lack of inventive step.
• With respect to claim interpretation, the Paris CD decided that a general term used in the main claim is not limited to an understanding derived from a narrower or more specific feature disclosed in a dependent claim or description. A dependent claim indicates embodiments which may provide additional advantages. Embodiments generally serve to describe options for realising the invention and therefore do not allow a more restrictive interpretation of a more general patent claim.
• The Paris CD applied the problem-solution approach in its inventive step analysis.

• NJOY brought an action for revocation of the patent in issue against Juul Labs before the Paris CD. The Paris CD revoked the patent and Juul Labs appealed and applied for a stay of the appeal proceedings. Juul Labs applied for a stay on the basis of parallel opposition proceedings before the EPO Board of Appeal that had been accelerated. NJOY agreed to a stay.
• Pursuant to Rule 295(a) RoP and Article 33(10) UPCA, the court may stay proceedings where the patent is also subject to opposition or limitation proceedings before the EPO or a national authority where the decision is expected to be given "rapidly".
• The Court of Appeal applied its previous decision in Carrier v Bitzer, concerning the definition of the term "rapidly". It must be interpreted in light of the relevant circumstances and the stage of the other proceedings.
• In these proceedings the Court of Appeal contacted the EPO Boards of Appeal, who confirmed that the opposition hearing was scheduled for 20 October 2025 and the decision without reasons would be announced at the end of the oral hearing (the decision with reasons was to follow some time afterwards). As such, the Court of Appeal was of the view that the EPO's decision could be expected rapidly, at some point before or just after the possible date for the oral hearing before the Court of Appeal. The Court of Appeal agreed to the stay, noting that there were no pending infringement proceedings or other circumstances that would balance against a stay.

• Nicoventures filed an application requesting access to all written pleadings and evidence in an appeal submitted by Juul Labs and NJOY on the basis that it was a party to legal proceedings concerning the validity of the patent in issue. Nicoventures had opposed the grant of the patent in issue before the EPO, which resulted in the patent being revoked by the Opposition Division, with an appeal pending before the Boards of Appeal.
• The Court of Appeal granted the request, permitting Nicoventures access to the documents in the casefile at the time the application was made (subject to the redaction of personal data).
• Access was granted with conditions: i) Nicoventures was not allowed to file the written pleadings, or parts thereof, with other courts or judicial instances, such as the EPO Boards of Appeal, or ii) distribute them elsewhere until the present appeal had been adjudicated or otherwise closed.
• Nicoventures' request for any additional documentation not available at the time of the application but subsequently filed in the proceedings was rejected. Blanket requests for written pleadings or evidence that may be added to the casefile after comments, or after the decision granting or denying access has been issued, were not admissible.

• Seoul commenced an infringement action before the Paris LD against Laser Components in relation to its patent concerning an ultraviolet light emitting device. Laser Components did not raise a preliminary objection, but later requested the intervention of Photon Wave in its capacity as the manufacturer of the alleged infringing products.
• After the intervention request, Laser Components filed its statement of defence without a counterclaim for revocation. On the same day, Photon Wave agreed to intervene in the case and requested a two month period to prepare a request for revocation. This was refused by the panel. Photon Wave instead filed a revocation action before the Paris CD, which transferred the application to the Paris LD. The application was declared inadmissible and therefore the revocation arguments were not considered by the Paris LD.
• The Paris LD found Laser Components liable for infringement. There was disagreement on claim construction between the parties, but the court adopted the broader interpretation maintained by Seoul.
• To support its infringement claim, Seoul relied on an analysis performed by a private laboratory. Laser Components and Photon Wave claimed this analysis was an inappropriate piece of evidence due to the biased questions put forth to the laboratory by Seoul and the interpretation of the results. The Paris LD noted that the report did constitute a private expert report but that there was nothing to cast doubt on the laboratory's independence. In general, the court found that the questions put forth by Seoul were sufficiently objective not to have influenced the results of the tests and the court found the report to have probative value.
• The Paris LD granted a permanent injunction but limited it to France. Seoul had sought coverage in Germany, the Netherlands and the UK. The court reminded the parties that under Rules 13.1(m) and 171.1 RoP the claimant has to support their claims with evidence. Seoul only made a test purchase in France and the website it was purchased from stated that it only sold in France. Furthermore, Seoul only brought the claim against the French Laser Components entity, which the court said could not "bear the actions of the entire group on its own". Seoul did not adduce any specific evidence of Laser Components' sales in Germany, the Netherlands or the UK.
• Laser Components was also ordered to withdraw its infringing products from commercial channels in France, destroy the stock and provide Seoul with information relating to the infringement that would be useful for the calculation of damages.

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

• Article 58 UPCA and Rule 262A RoP provide for protection of confidential information. Alpina Coffee made an application to protect trade secrets and other confidential information. The Düsseldorf LD found the application to be admissible and successful in substance.
• The information contained in the unredacted version of its submissions related to Alpina Coffee's employee numbers, annual turnover, and annual balance sheet totals, which was found to be confidential.
• In judicial proceedings, access to documents containing or alleged to contain business secrets, submitted by the parties or third parties, may, upon request, be restricted in whole or in part to a limited number of persons.
• The requirements of Rule 262A RoP and Article 58 UPCA were met and therefore a protective order restricting access to the information to specified individuals at CUP&CINO was issued. CUP&CINO raised no objections.

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

• Under Article 33(3) UPCA, if a counterclaim for revocation has been brought in an infringement action, the LD or RD concerned has discretion (after hearing the parties) to either: i) proceed with the infringement action and the revocation counterclaim; ii) refer the counterclaim for revocation to the CD and stay or proceed with the infringement action; or iii) with the agreement of the parties, refer the case to the CD.
• In this case, the Düsseldorf LD exercised its discretion to refer the counterclaim for revocation to the Milan CD, where a revocation action was already pending. The referral to the CD was requested by Labrador and was not objected to by bioMérieux and the other defendants. As a result, it was treated as a unanimous request and transfer was deemed appropriated for reasons of efficiency.
• The Düsseldorf LD decided to proceed with the infringement action pursuant to Article 33(3)(b) UPCA and Rule 37.4 RoP.
• The panel for the LD may stay the infringement proceedings pending a final decision in the revocation proceedings where there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision in the revocation proceedings. The Düsseldorf LD decided that a stay would not be appropriate as a detailed examination of the likelihood of invalidity requires consideration of the entire content of the file. However, the panel reserved the right to reconsider the possibility of staying the infringement proceedings at a later stage.

• This was a procedural order in an infringement action. The defendants in the infringement action, Nintendo, requested that their sales data in their statement of defence be declared confidential and access be restricted to two reliable natural persons within the claimant, Malikie.
• The Hamburg LD stated that when deciding whether to grant protection for the allegedly confidential information, the court has to weigh the right of a party to have unlimited access to the documents contained in the file, which guarantees its fundamental right to be heard, against the interest of the opposing party to have its confidential information protected. Both fundamental principles have to be balanced against each other on the instant facts of the particular case.
• In this case, the Court granted the request. The Hamburg LD concluded that the Nintendo's request was not too broad and granting the request did not interfere with Malikie's right to a fair trial.

• This was a procedural order in a revocation action. As well as defending the revocation action, Hafele filed 40 sets of auxiliary requests to amend its patent in two alternative forms, so 80 in total.
• Pursuant to Rule 50.2 RoP in connection with Rules 30.1 and 30.2 RoP, conditional proposals to amend the patent must be reasonable in number given the circumstances of the case. The Munich CD considered that the number of auxiliary requests was not reasonable in the circumstances and made it unreasonably difficult for the claimant to focus its arguments.
• The court considered that although the RoP are clear in that the proposed amendments must be reasonable, the resultant sanction for non-compliance is not made explicit. It held that it would be unreasonable and too far-reaching – also in view of Article 65(3) UPCA – to reject the application to amend altogether. Instead, it stated that it would deal with the auxiliary requests in the order they had been submitted until a reasonable number had been reached.
• In view of the circumstances of this case, which included the number of validity attacks on the patent and the technology involved, up to 10 auxiliary requests would most likely still be considered reasonable by the court.

• Bekaert is the proprietor of a European Patent relating to saws typically used in semiconductor manufacturing. Siltronic produced and sold wafers for the semiconductor industry and Hinterberger is a logistics company that provides Siltronic storage facilities.
• In the run up to the main action, Bekaert filed an ex parte application to inspect Siltronic and Hinterberger's facilities and for an order to preserve evidence (saisie). The Düsseldorf LD granted the order. Siltronic submitted an application for a review of the saisie order.
• It argued that the procedure under Article 60 UPCA and Rule 192 RoP et seq. serves to secure evidence, but not to obtain information or certainties. Siltronic maintained that Bekaert's enquiry had not been a serious attempt to obtain the saws in dispute and that the order should be revoked because Bekaert should have sought the evidence through more conventional approaches, such as a test purchase, or simple investigation or importation.
• The Düsseldorf LD found that Siltronic's application for review was admissible but it was unsuccessful on the merits.
• The court upheld the original order, stating that the review procedure is solely for examining the order for any (obvious) errors made by the court when issuing the order and no such errors had been shown. Further, Bekaert had a legitimate interest in preserving evidence and the measures ordered were appropriate.

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

• Syngenta requested leave to amend its claim to include the territories of Poland, the Czech Republic, and the UK under Rule 263 RoP.
• Syngenta argued that the amendment was only possible following the CJEU decision in BSH v Electrolux as it clarified various jurisdiction issues.
• Sumi Agro contended Syngenta could have made the amendment earlier with reasonable diligence.
• The court allowed Syngenta's application, finding that it could not have been expected to include the non-UPC territories in its original statement of claim in the main proceedings according to the established case law prior to BSH v Electrolux.
• Syngenta was not obliged to include the territories in question already in its original statement of claim on the basis of the Advocate General's Opinion in BSH v Electrolux as it was not binding and therefore did not create legal certainty on the issue.
• See our Insight for more detail on this decision.