Latest substantive UPC decisions

• 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.

• The claimants (Yellow Sphere and Hartwich) brought an infringement claim against the defendants in relation to their product-by-process patent. This patent covered a vehicle frame with one part made of foam resin, as well as a manufacturing process for it. The defendants counterclaimed for revocation, claiming it lacked reproducibility, novelty and inventive step.
• The Düsseldorf LD rejected the revocation claim and found that the defendants had infringed the patent.
• In relation to the revocation claim the court found that, contrary to the defendants' arguments, with product-by-process claims the invention usually did not consist of the process as such, but in the technical properties conferred on the product by the process. Therefore, in principle, the process served only to define the product. The decisive factor was how the skilled person understood the information on the method of manufacture and what conclusions they drew from this for the nature of the product. If the manufacturing process lead to properties in the product that could only be achieved by that process and those properties can be determined in the finished product, the patent would be limited to products that could be produced that way.
• The Düsseldorf LD granted an injunction, ordered the defendants to provide the claimants with information about the acts of infringement (including distribution channels and quantities manufactured), recall and remove the infringing products from distribution channels, and destroy the products, along with provisional damages.
• Separately, the court also found that the UPC has jurisdiction over financial compensation claims related to the use of published European Patent applications. As this compensation was not provided for in the UPCA, the court applied Article 67 EPC. However, the claimant seeking such compensation had to set out the requirements for each country in which they were seeking compensation. Here, the claimants complied with this requirement for Germany and therefore could claim appropriate compensation under the German rules from a person who used the subject matter of the application even though they knew or should have known that the invention was the subject of a European Patent application. The claimants did not meet this requirement for the other countries at issue and therefore the claim with respect to those countries was dismissed.

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

• Dainese brought an action against Alpinestars and other defendants, alleging infringement of its European Patent validated in various UPC territories and a non-UPC territory, Spain.
• Alpinestars, which is domiciled in Italy, filed a preliminary objection challenging the UPC's jurisdiction to decide on the alleged infringement of the Spanish designation.
• Applying the recast Brussels Regulation and the CJEU's interpretation of it in BSH v Electrolux, the court confirmed that it had jurisdiction to adjudicate on infringement issues relating to European Patents validated in non-UPC countries (in this case, the Spanish designation) when the defendant was domiciled in a UPC member state.
• Interestingly, the court stated that this principle had already been established by an earlier decision by virtue of the Düsseldorf LD's decision in Fujifilm v Kodak, which concerned a challenge to the UPC's jurisdiction over infringement claims relating to the UK designation of a European Patent.
• See our Insight for more detail on this decision.

• The Munich LD held that Edwards' divisional patent relating to an implantable prosthetic heart valve was valid and infringed by the three Meril defendants.
• Meril raised a preliminary objection based on Edwards seeking a decision "within the area of application of the UPCA as of the date of the hearing, excluding Malta". Edwards' phrasing was held not to be specific enough; it was the responsibility of the claimant to specify the exact territories for which relief was sought. Edwards made an auxiliary request specifying the countries in question and this was considered admissible.
• Meril also argued that the Munich LD did not have jurisdiction over Meril Italy. The Munich LD held that Article 33(1)(b) UPCA allows multiple defendants to be sued at their domicile, their principal place of business or, if not those, at the place of business of one of the defendants provided that they have a commercial relationship and the action concerns the same alleged infringement. In the case of an European Patent without unitary effect, the same alleged infringement covers a situation where multiple defendants are accused of infringing the relevant national designations of the same European Patent by the same product or process. This interpretation avoids undermining the UPCA's goal of avoiding a fragmented European patent litigation landscape.
• Here, the three Meril defendants were accused of the same infringement and there was a sufficient commercial relationship as members of the same group of companies.
• As for validity of the patent, Meril made invalidity claims based on added matter, lack of novelty and inventive step and enablement. All of these were unsuccessful. With respect to the Munich LD's obviousness analysis, it stated that the EPO's problem-solution approach was to be primarily applied to the extent feasible in assessing obviousness because it promoted legal certainty and "further aligns" the UPC's jurisprudence with that of the EPO and its Boards of Appeal.
• The relief sought was held to be widely justified, with the Munich LD confirming that Edwards was entitled to injunctive relief (with this order not applying to Meril's XL size devices as was the case in an earlier decision), damages, a declaration of infringement and a claim for information relating to distribution channels. Edwards was said to have a legitimate interest in the publication of the decision in five public media outlets.

• The Milan CD had earlier rejected Insulet's request for provisional measures against EOFlow, with Insulet to bear the costs of the proceedings. The Milan CD dismissed EOFlow's application for a cost decision without examination of the substance. EOFlow filed for leave to appeal under Rule 221 RoP. EOFlow then requested withdrawal of its appeal application and did not seek a decision on costs of its appeal application. Insulet agreed to the withdrawal of the application and also did not seek a decision on costs of the appeal application.
• The Court of Appeal held that under  Rule 265 RoP, as long as there is no final decision in an action, the claimant may apply to withdraw their action. This applies mutatis mutandis to a party seeking leave to appeal a costs decision. As such, the Court of Appeal permitted EOFlow's withdrawal of its appeal application with the agreement of the parties.