1 September 2025
Local Division Munich, Knapp v Becton
UPC_CFI_848/2024; UPC_CFI_612/2025
Extension of time periods
Facts
Due to issues with the CMS, the deadlines for the Statement of defence and the Counterclaim for revocation are different, resulting in different due dates for the Reply in the infringement case and the Defence to the counterclaim for revocation or potential Application to amend the patent.
The claimant requested an extension of time periods for all the submissions until 9 September 2025. The defendant agreed.
The JR
Granted an extension to 5 September 2025 because an extension until 9 September 2025 (as well as 6, 7 and 8 September 2025) would, due to the weekend, lead to a time schedule for the next statements that would leave insufficient time for preparing the interim conference, which is scheduled for 16 January 2026.
Comment
- A very good decision. Despite the parties having agreed, the JR wants to make sure that the planned time schedule can be met!
- This is all due to the fact that there are different workflows for the infringement and the revocation cases, and the formal checks by the Registry. In the Drafting Committee of the Rules, I always opposed these formal checks by the Registry, as they cost time, manpower and are in the end not necessary. If there is something wrong, the other party can raise it in the proceedings. I have also opposed the necessity of raising a Counterclaim for revocation. Why can you not raise the invalidity as an inter partes defence? In cross-border cases, where you only raise the invalidity inter partes, this now also leads to complications. However, I was outvoted every time! You win some, you lose some!
1 September 2025
Court of Appeal, Centripetal v Keysight
Discretionary review
Facts
The JR and, following a R. 333 RoP application for panel review, the panel of the Court of First Instance refused a request for further exchange of pleadings (R. 36 RoP).
On 27 August, Centripetal filed a request for discretionary review by the Court of Appeal (R. 220.3 RoP). Centripetal argued that the decision was manifestly wrong because Keysight had changed its product and wanted the Court to take this into consideration.
The JR of the Court of Appeal
Denies the request, stating that you always have the possibility to bring separate proceedings against newly released products.
Comment
- When do representatives realize that a review of an order of the JR in first instance (R. 333 RoP) and a subsequent request for discretionary review by the Court of Appeal can only be successful in very exceptional cases?
- The argument that the decision of the Court of First Instance is manifestly wrong and deprives the patentee of an effective remedy is not convincing, given that the decision fully recognizes the fact that the issue of a new infringing product was raised only four months after its release.
- Why continue to have representatives spending their client’s money and the precious time of the Court on requests with zero chance of succeeding?
1 September 2025
Local Division Paris, Emporia v Seoul
Strawman
Facts
In a preliminary objection, the defendant Seoul asked the Court to dismiss the case because an infringement case relating to the same patent was already pending between the same parties. Seoul argued that In fact, Emporia acted as a strawman for the defendant, ex-pert Klein, as Emporia delivered the allegedly infringing products to ex-pert Klein. The Counterclaim for revocation had been dismissed by the Düsseldorf Local Division.
The Court
A straw company is characterized by its lack of effective operational activity. In this case, there are two companies with their own business activities.
The Court rejects the preliminary objection by Seoul.
Comment
This is a logical decision. The patent was not revoked by the Düsseldorf Local Division. This does not mean that a different company cannot now initiate revocation proceedings based on perhaps better prior art or better arguments. In this case, Seoul could have avoided the action by Emporia by not only suing ex-pert Klein in Düsseldorf but also Emporia its supplier of the infringing products. However, that would not have excluded the possibility of another third party starting revocation proceedings.
2 September 2025
Court of Appeal, CeraCon v Sunstar
Amendment of case
Facts
- Infringement proceedings lodged by Sunstar against CeraCon.
- CeraCon filed a Counterclaim for revocation.
- On 8 May 2025, CeraCon filed an Application for leave to amend its case with an additional ground of invalidity, namely novelty based on a patent application published in 2021.
- The JR of the Mannheim Local Division rejected the application on 6 June 2025. After review, the panel of the Court of First Instance rejected the application on 8 August 2025. Leave for appeal was rejected by the Mannheim Local Division on 29 August 2025.
- CeraCon filed a request for discretionary review (R. 220.3 RoP) on 27 August 2025.
The JR
The request is dismissed as the decision is not manifestly wrong. The Division is right that it is no excuse that the service provider instructed for the prior art search did not find the document, which was only found later by the patent attorney dealing with the case.
Comment
- R. 263 RoP is clear: leave should not be granted if you could have raised the new argument earlier acting with reasonable diligence, and/or if the other party is unreasonably hindered by the amendment. The JR correctly stated that the presence of one of these grounds alone has to lead to refusal of the request.
- The case highlights the dangers of relying on service providers. The fact that the patent attorney found the novelty destroying document shows that the search was not conducted diligently. CeraCon should have realized that this was a hopeless fight. If it would have started separate invalidity proceedings immediately in May based on the novelty destroying document, that may have been a better strategy.
2 September 2025
Nordic-Baltic Regional Division, Edwards v Meril
Rectification?
Facts
On 21 July 2025, the Court decided that the patent as amended was valid and infringed.
The Court ordered Meril to bear 100% of the reasonable costs of the claimant in the infringement proceedings, and to bear 75% of the costs in the revocation proceedings.
Meril requested a rectification of the decision and to include in the cost order that Edwards has to bear 25% of the costs of Meril in the revocation proceedings, arguing that omitting this addition was an obvious oversight.
The Court
This was no oversight. This was intended: Meril has to pay for its own costs in the revocation proceedings.
Comment
- If you read the decision, it appears that the amendment to claim 1 was a very minor change and that Edwards dropped the dependent claims. It is therefore clear that, in fact, there was an almost complete victory for Edwards.
- It seems that Meril was not very strong in math. Meril stated that they should have been awarded 25% of their own costs. To keep things simple, let us assume that both parties spent the same amount on costs. In that case, the net result would have been that Edwards would have received only 50% of its costs. This was clearly not in accordance with the Court’s finding that Edwards was largely successful in the revocation proceedings.
- The Court could also have decided that Meril had to pay 87,5% of the Edwards’s costs and Edwards 12,5% of Meril’s costs. Assuming the costs of both parties were the same, this would not have made a difference, but would it have made Meril happier?
2 September 2025
Local Division Munich, Shanghai v Longi
UPC_CFI_119/2025; UPC_CFI_401/2025
Stay
Facts
All parties except for defendant 4 asked for a stay because of settlement discussions, and want an order that, upon resumption of the proceedings, the claimant is given the full two months for its Reply and Defence to the Counterclaim for revocation. They also requested that the dates for the interim and oral hearings be cancelled.
Regarding the defendant 4, they asked for a stay for reasons relating to the proper administration of justice.
The JR
Grants the request.
Comment
The very busy Munich Local Division is understandably happy to agree. In general, the Court will grant such request, but I add a small warning. The Court is not obliged to agree, and it may not do so, for instance, a few days before the oral hearing which at that time they have prepared. In such case, parties have to settle before the hearing or have the hearing taken place (which of course does not prevent them from settling after the hearing). It would be understandable that a Court does not want to run the risk that they have to prepare a second time for a hearing.
3 September 2025
Local Division Düsseldorf, Hewlett-Packard v Zhuhai and Andreas Rentmeister
Preliminary Injunction
Facts
HP filed an application for a preliminary injunction (“PI”) against Zhuzai, a Chinese company that manufactures and offers cartridges for inkjet printers in the UPC territory.
Rentmeister sells the same cartridges.
The request has not yet been served on Zhuzai.
The representative of Rentmeister informed the Court that they had reached an agreement with HP, whereby they would not appear in court and HP would withdraw its demand for interim damages.
The Court
- Decides in a reasoned decision on the basis of the statements of the claimant that it is more likely than not that the two invoked patents are infringed and not invalid, and that there is urgency and necessity!
- The Court holds that it is not obliged to issue a default judgment as this is not mentioned in the Rules of Procedure regarding PI’s, and it is also undesirable because a party can lodge an application to set aside a default decision.
- The Court grants the injunction.
Comment
- I do not understand why no PI is granted against the Chinese defendant which simply can continue to offer cartridges on the internet also for UPC customers. The last paragraph of art. 15 of the 1965 The Hague Service Convention makes that possible. In The Netherlands, this article has always been interpreted as making a decision in PI proceedings possible as soon as the writ of summons (in the UPC “Statement of Claim”) have been sent to the Central Authority. Of course, the Court should make sure that the defendant knows about this and when the PI proceedings take place.
- The decision shows that, even when a defendant agrees with the Statement of claim, this does not necessarily mean that the Court will automatically grant the claim. On the contrary, as we have seen in other iesefault situations, the court also in this case judges if the claim is justified on its own accord.
3 September 2025
Local Division Düsseldorf, Dai Nippon Printing Co. v Zapp
Extension of time periods
Facts
The defendants requested an extension of one month for filing of their Statement of defence.
They argue that they had to carry out an analysis of a prior art product by a third party laboratories (in order to argue that there was no novelty or prior private use).
One laboratory announced that the test results would be available at the end of August.
Another laboratory stated that its report would not be available before 12 September. This was not considered sufficient to grant a (further) extension by the JR, also because the results from the second laboratory should in any event be available within the already extended deadline.
Decision of the JR
An extension of one week is granted.
Comment
- The JR reached a balanced decision, but I would have preferred it if she had refused the request. In my view, the defendant has insufficiently realized that the 9 September deadline for an answer was a critical date, and insufficiently told the laboratories that time was of the essence.
- In any case, the JR has refused to accept the argument that the report cannot be ready before 22 September 2025, and the case should be seen as a further strong warning that you should preparing your defence as of day one of the receipt of the Statement of claim (and, if you have received warning letters, prior to day one).
4 September 2025
Local Division Mannheim, Huawei v MediaTek
Security
Facts
- Huawei, a Chinese company, started infringement proceedings against the Taiwanese (defendant 1) and German (defendant 2) MediaTek companies.
- There has been no successful service against the defendant 1 until now.
- The defendant 2 filed its Statement of defence and Counterclaim for revocation.
- The defendant 2 requested for security of costs.
The JR
- It has not been possible to serve documents in China until now. Therefore, it is likely that enforcing a judgment in China will be difficult.
- The fact that Huawei has assets in the EU does not change the situation, since service of the judgment is necessary before the judgment can be enforced.
- The mere statement that Huawei will pay is not sufficient.
- The security is only for the costs of the German entity.
- The decision is the same as the decision of the Local Division Munich in a parallel case.
Order: € 100.0000 security.
Comment
- Why is this case between a Chinese and a Taiwanese defendant filed in German?
- The Local Division is following the case law. However, the parent company refuses to appear but hides behind the non-cooperation of the Taiwanese authorities to effect the service of the Statement of claim, thereby frustrating the proceedings and claimant. In such circumstances can Huawei not argue that it should not be obliged to provide a cost guarantee for the German subsidiary of MediaTek?
- I invite you to read the Preamble of the Rules of Procedure under 2 (“fairness and equity”) and 5 (“having regard to the legitimate interests of all parties”).
Is it fair and a fight with equal arms if one party (Huawei) has to give a guarantee in order to overcome the problems (for MediaTek) of service while the other party (here MediaTek) misuses the problems of service by not appearing in Court and so frustrating proceedings. - Why do the claimants, who fear difficulties with service under the The Hague Convention, not file a request for a PI at the same time as the case on the merits? If service is frustrated and a decision cannot be reached within 12 to 14 months, then, in my opinion, “urgency” and “necessity” are present, and, as said before, a completed service is not necessary for a PI (Art. 15 sub 3 of the 1965 The Hague Service Convention).
4 September 2025
Cental Division Milan, Gilead v Medical Sciences
Service
Facts
- Gilead filed for revocation on 20 June 2025.
- On 17 July 2025, Medical Sciences asked for Unitary Effect.
- The Registrar served the Statement of claim on Lavoix according to R. 271(5)(c) RoP, as Medical Sciences had provided the name and address of that agent for the request of the Unitary Effect.
- Lavoix disputed the valid service by email.
- The claimant filed for a default judgment as the defendant had not filed a defence.
- On 29 August 2025, Lavoix contested the service again, but this time acting as representative in the CMS.
The JR
- You can only address the Court through an authorized representative within the proceedings, not by email.
- The application filed on 29 August 2025 shows that Lavoix represents Medical Sciences.
- The purpose of service (contacting the defendant) has therefore been achieved.
- The JR considers the service to be valid. The moment you are authorized by the company to represent them in UPC proceedings, valid service on that representative can take place.
Comment
- In this case, a Chinese holder of a Unitary Patent (but the same would apply for an European Patent) wanted to avoid being served with revocation proceedings. Its patent attorney, who represented the patentee in the application for Unitary Effect, wrote an email to the Court stating that service on him was not valid. However, thereafter (apparently nervous that a default judgment would be granted), she appeared in the court proceedings as the Chinese defendant’s representative. Therefore, the JR concluded that the service had been made on a representative who represented the Chinese company (also) for the purpose of UPC proceedings, and that such service was valid.
- In my opinion, the decision is correct. This representative tried to be too smart and got exactly the opposite result!
4 September 2025
Local Division Munich, Ueran v Xiaomi
Agreement on time periods
Facts
There was email correspondence with the Court regarding an agreement between the claimant and the defendants. The non-German defendants agreed to appear in Court if a certain deadline regime was accepted by the Court.
Decision JR
The JR accepts because it simplifies the proceedings, especially because service has not yet taken place for several defendants (among others in China).
Comment
This all makes sense and is a lesson for representatives.
If you sue Chinese defendants (or defendants in other countries where service is difficult or impossible), you should sue a subsidiary in the EU as well. Such defendants may be inclined to make a deal about appearing because the case against the EU (or also Lugano) subsidiary will proceed according to the regime of the Rules of Procedure. During negotiations, the claimant may agree to a somewhat more liberal timeframe, which the Court will accept.
4 September 2025
Local Division Munich, Belparts v IMI
UPC_CFI_801/2024; UPC_CFI_392/2025
Not heard together
Facts
- Belparts requests that the Counterclaim for infringement filed in the Paris Central Division will be heard together with the infringement case filed in the Munich Local Division. Both cases are based on the same patents and same products, and are against companies in the same group.
- IMI agrees.
The Court
The application is dismissed because R. 302.3 RoP provides that two cases may be heard together if they are pending before the same Division.
Comment
If you cannot read, you might make mistakes! The representatives should have checked
R. 340 RoP!
5 September 2025
Local Division Milan, Edwards v Sintec/Value Med
Settlement
Facts
Edwards started PI proceedings on 6 March 2025.
The respondents filed their objection to the application on 24 April 2025.
On 5 May 2025, the JR invited the parties to negotiate a settlement and made some suggestions for such settlement.
The parties then settled and Edwards asked the Court to confirm the settlement.
The respondents agreed (R. 365.1 RoP).
Edwards requested 60% of the court fees back.
The Court
The Court confirmed the settlement.
The Court refused reimbursement of the court fees.
Comment
- Excellent work by the JR, who managed to get the parties to settle without even the need for an oral hearing. This is an example for other JRs to follow. The Rules (see for example R. 104(d) RoP and R. 332(f) RoP) are clear: the Court should facilitate and encourage settlement.
- In PI proceedings, you do not get the court costs back. The representative should have known this by now. After the excellent work of the JR (which saved his client a lot of money), he should not have even asked for them!
5 September 2025
Local Division Mannheim, Centripetal v Keysight
Stay refused
Facts
A preliminary opinion issued by the EPO in opposition proceedings held that the patent is invalid. The defendant has asked for a stay.
Decision
The Court refused to stay as the case is ready for a full-fledged hearing on 9 and 10 October 2025.
Comment
- This confirms that a stay due to opposition proceedings is clearly only granted in exceptional circumstances. The UPC, as is clearly stated in the Preamble, has as a clearly defined purpose to hold an oral argument within a year and issue a decision six weeks later.
- The Drafting Committee did in fact not want delays due to pending opposition proceedings, see R. 295 RoP. The Court may (but not must) grant a stay where a decision in opposition proceedings may be expected to be given rapidly.
- What does “may be expected to be given rapidly” mean in this context? The idea is that, in fact, such a stay hardly leads to a delay. Therefore, measured against the year for oral argument, the delay should not be more than one or a maximum of two months.
- Of course, a decision of the Board of Appeal (to be given rapidly) is a (far) more compelling reason for a stay than a decision by the Opposition Division, which is not a final decision. There is in fact no problem if the Court decides differently because (with the TQJ) it may sometimes be better equipped and/or better instructed than the Opposition Division.
5 September 2025
Local Division Düsseldorf, Avago v Renault
Change of language
Facts
Avago, a Singapore company, starts proceedings against Renault.
The Renault defendants (French, German, Dutch) all request a change of language to the language of the patent (English).
The President of the Court
Granted the request, applying the usual criteria.
Comment
Why did Avago file in German in such a busy Division knowing that the language would in all likelihood be changed? Why not filing in English, in the less busy The Hague Division, where the Court speaks English almost as their mother tongue? A better spread of cases over the different Divisions is essential for the ultimate success of the UPC.
– All comments above are Prof. Hoyng‘s personal opinions –
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.