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Decision date:
11 November 2025
Düsseldorf LD
Hewlett-Packard Development Company v Andreas Rentmeister & Anor (UPC_CFI_515/2025)
- HP sought a preliminary injunction and further provisional measures against two defendants, for alleged patent infringement, concerning its patent for electronic circuitry used in printer ink cartridges. A decision relating to the first defendant, who was based in Germany, was given by the Düsseldorf LD in October 2025. Service out of the jurisdiction on the second defendant, Shenzhen Moan Technology, a Chinese company, had not been completed by the date of that earlier decision.
- Service of the application on the second defendant had been initiated via the official online portal of the Central Authority of China on 18 June 2025. The documents were then forwarded to the Supreme People's Court for further processing the following day. No further processing by the Chinese authorities could then be detected on the online portal.
- HP sought voluntary acceptance of service by the second defendant by mid-September 2025, which was unsuccessful.
- HP asked the Düsseldorf LD to rule that the steps already taken constituted "good service" under Rule 275.2 RoP.
- The court held that although Rule 275.2 RoP refers to service of a statement of claim, its "good service" mechanism must apply to urgent preliminary injunction applications. The court had exhausted all formal service routes under Rules 270-274 RoP and complied with the formal requirements set out in the Hague Convention.
- Given the elapsed time, failed attempts to contact the Chinese authorities and the defendant, and the lack of alternative service options, the court ordered that the steps already taken constitute good service. Service was deemed to be effective as of the date of the order.
- An earlier decision from the Düsseldorf LD in relation to a similar application made by HP in another dispute can be found here.
Decision date:
07 November 2025
Court of Appeal
OTEC v Steros (UPC_CoA_579/2025)
- Steros is the exclusive licensee of a patent relating to an electrolytic medium and electropolishing process using the electrolytic medium. OTEC manufactures and sells electropolishing machines and electrolytic mediums for them in some UPC contracting states, including Germany. In June 2025, Steros obtained a preliminary injunction in the Hamburg LD against OTEC.
- OTEC appealed this decision and requested that the order be set aside, the injunction lifted and for Steros to bear the costs of the proceedings. OTEC had previously requested suspensive effect for the appeal under Rule 223 RoP, which had been rejected.
- The appeal turned on the interpretation of one claim feature, which related to the presence of non-conductive fluid. OTEC argued that the attacked embodiment contained one same electrolyte liquid inside and outside the particles that is a conductive oil-in-water-type emulsion with a water-type continuous phase and oily micelles. It maintained that the conductivity of the liquid should be assessed by measuring the emulsion as a whole, which shows that there is no non-conductive fluid according to claim 1 of the patent, and not, as Hamburg LD did, by separating the ingredients of the emulsion and assessing the conductivity of both phases separately to identify the presence of a non-conductive fluid.
- The court confirmed the principles on claim construction. The patent claim is not only the starting point but the decisive basis for determining the protective scope of a European patent under Article 69 EPC in conjunction with the Protocol on the Interpretation of Article 69 EPC. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, citing Nanostring v 10x Genomics, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
- The Court of Appeal agreed with OTEC – when considering an emulsion as the non-conductive fluid under the claim, the electrical conductivity of the overall emulsion was to be assessed, not that of each ingredient in the emulsion as the Hamburg LD had done.
- Steros had sought to demonstrate that the skilled person, on the basis of a table in the patent specification and their common general knowledge, would understand that the table presented an embodiment of a non-conductive fluid within the meaning of the relevant claim feature having an electrical conductivity above a certain level. Steros relied primarily on the results of experiments it conducted for the purposes of the present litigation and the Court of Appeal rejected this, clarifying that experimental data that are not disclosed in the patent specification are, as a general rule, not relevant to the interpretation of the patent claims.
- OTEC's appeal was successful. Based on the Court of Appeal's interpretation of the claim, it found that it was more likely than not that that the patent was not infringed. As such, it did not need to consider validity.
- The first instance order was set aside, Steros' application for provisional measures was rejected and therefore the preliminary injunction was lifted and Steros was ordered to bear the costs of the first instance and appeal proceedings.
Decision date:
05 November 2025
Hamburg LD
Dolle v Fakro & Ors (UPC_CFI_461/2024)
- This decision concerned an infringement claim brought by Dolle against four Fakro group companies (including the alleged parent company based in Poland, a non-UPC state) in the Hamburg LD. The claim related to the German, Austrian, Danish and Swedish parts of Dolle's patent concerning a foldable attic staircase. Fakro counterclaimed for revocation, arguing that the patent was not infringed and it was invalid for added matter, lack of enablement, lack of right to priority, lack of novelty and lack of inventive step. Dolle also filed various auxiliary requests for amendment of the patent.
- The court considered claim construction in relation claim 1 as granted. First, it set out a number of relevant legal principles. According to Article 69 EPC and Article 1 of the Protocol on its interpretation, the patent claim is the decisive basis for determining the scope of protection of a European patent. Citing previous UPC case law, the Hamburg LD noted that the precise wording of the claim is not the only factor of importance – the description and drawings must always be consulted as aides to interpreting the patent claim. However, that does not mean that the claim serves merely as a guideline. Patent claims and the description explaining them, as well as drawings, must be interpreted as "a meaningful whole".
- Where a claim is comprised of multiple features, the skilled person will deduce the technical function assigned to a feature individually but considering the feature in the context of the entire patent claim. A patent specification may define terms independently and a patent may have its own lexicon. Therefore, by refence to the specification, the skilled person may attribute a meaning to a term that differs from general usage. Lastly, the court stated that the meaning of a sub-claim can, in principle, contribute to the correct interpretation of the main claim. However, examples of implementation of the main claim in a sub-claim, do not, in principle, limit a more extensive main claim.
- In light of these principles, the court construed various features of the claim, concluding that the revocation counterclaim was unsuccessful and that the patent was valid in its registered form.
- On added matter, the Hamburg LD cited the Court of Appeal's decision in expert v Seoul Viosys, finding that there was no inadmissible extension of claim 1. The subject matter of claim 1 did not go beyond the content of the originally filed application.
- Fakro's lack of enablement argument was dismissed swiftly. On the court's claim construction, the invention was clearly and completely disclosed.
- The Hamburg LD also held that Farko's ineffective priority claim failed. The court held that the term "the same invention" in Article 87 EPC should be interpreted as meaning that a claimed invention is to be regarded as the same invention as the invention in an earlier application if the skilled person can derive the subject-matter of the claim directly and unambiguously from the earlier application as a whole using their common general knowledge. This standard corresponds to the disclosure standard for added matter as set out by the Court of Appeal in Abbott v Sibio, whereby implicitly disclosed subject matter that is clearly and unambiguously derived from what is expressly stated is also regarded. Applying this approach, the court held that the patent validly claimed priority. The skilled person could "immediately and unambiguously" derive certain features of the claim from the priority document, even if the features were not explicitly stated.
- As for novelty, Fakro had claimed the patent was not novel over the priority document. However, as the court found that the patent effectively claimed priority, the priority document was not prior art. Novelty was also contested in relation to two further patent applications; however, these had the same priority date as the priority document and therefore did not constitute relevant prior art.
- Various lack of inventive step arguments were also dismissed and claim 1 of the patent as granted was upheld. The validity of the subclaims was therefore not considered.
- However, the court reinforced the procedural rules on when validity challenges must be brought. Fakro had sought to raise new validity attacks for the first time in oral proceedings, based on a document that was already in the proceedings. This was deemed inadmissible. Any attacks against the validity of the patent must be introduced at the same time as the counterclaim for revocation.
- The court then went on to consider infringement, finding direct infringement of claim 1 by all four Fakro entities. Infringement by the first, second and fourth defendants was not contested as they all offer the infringing embodiments within the UPC territory. "Passive legitimacy" of the third defendant was also established, with the third and fourth defendants being found to have acted jointly within the meaning of Article 25(a) UPCA. The court held that by linking to the website of the fourth defendant, the third defendant adopted the offers made by the fourth defendant as its own.
- The court granted an injunction covering Germany, Austria, Denmark and Sweden. It ordered the recall and permanent removal of the infringing products from Fakro's distribution channels. Fakro was also ordered to provide certain information relating to the infringement and to pay €3000 (the court fee) as provisional damages, with damages to be calculated separately. The court did not order Dolle to pay security for enforcement as Fakro had not presented any reasons that would have justified it. The Hamburg LD did, however, set penalty payments of at least €10,000 per infringing product for breach of the injunction by Fakro.
Decision date:
05 November 2025
Court of Appeal
Seoul Viosys v expert e-Commerce & Anor (UPC_CoA_762/2024 & UPC_CoA_773/2024)
- Seoul Viosys (SV) is the owner of a patent for LED technology (EP 320). This patent is a divisional application of a European Patent application (the parent application or EP 598 A2). The parent application is the European regional phase of a Korean PCT application, which claims priority from three Korean applications.
- SV started infringement proceedings in the Düsseldorf LD and expert counterclaimed for revocation. The court held EP 320 invalid for added subject-matter, rejected the requests for amendment of the patent and dismissed the infringement action. SV appealed this decision.
- The Court of Appeal first acknowledged that the parties agreed on who the skilled person was before applying the claim interpretation principles from Nanostring v 10x Genomics.
- In interpreting features 1.2 and 3 of claim 1, the Court of Appeal agreed with SV. At first instance, the Düsseldorf LD took the view that claim 1 one was limited to one mesa, basing its opinion on the use of the singular in feature 4.1, according to which the reflective electrode is to be arranged on the mesa. However, the Court of Appeal disagreed, noting that "the mesa" in feature 4.1 merely means that at least one reflective electrode is arranged on at least one mesa. The Court of Appeal also considered the use of "comprehensive" at the beginning of claim 1 to suggest that the LED may have other elements, such as additional mesas with additional electrodes. The Court of Appeal therefore considered that "one" mesa be regarded as indefinite within the meaning of "at least one" and that the term "one mesa" in the patent claim refers to the presence of at least one mesa and thus includes embodiments with multiple mesas.
- Despite siding with SV on claim construction, the Court of Appeal went on to addressed the first instance decision on added matter. The Düsseldorf LD found that the earlier applications did not disclose an LED with a single mesa. The Court of Appeal rejected SV's procedural objection that the Düsseldorf LD had raised this view independently and without prior notice for the first time at the oral hearing. The Court of Appeal held that the finding was based on SV's own arguments and discussed during oral proceedings. The Court of Appeal ultimately disagreed with SV that Figures 24 to 26 showed a clear and unambiguous disclosure of a LED with a single mesa.
- As the patent in dispute was a divisional, there is added matter if the subject matter of the patent extends beyond the application as originally filed or beyond the content of the parent application as originally filed. In this case, the parent application was the regional phase of a PCT application, which was in the Korean language. The Court of Appeal stated that if an international application is not written in one of the official languages of the EPO, the content of the earlier application is determined primarily on the basis of a translation.
- Contrary to SV's view, this is not a purely formal or procedural requirement. The translation filed by an applicant is presumed accurate as it is in the applicant's interest that the examination be based on the true content of the application. The parties and the court can therefore rely prima facie on the accuracy of the translation.
- SV argued that the translation filed was incorrect and submitted a corrected translation. The Court of Appeal held that if an applicant considers the translation incorrect and wants to rely on a corrected version, it must prove the inaccuracy and that, based on the corrected translation, the subject matter of the patent does not extend beyond the content of the earlier application. Merely submitting a corrected translation is not enough. In any event, the Court of Appeal did not find convincing SV's arguments as to why the corrected translation better reflected the content of the earlier application.
- The Court of Appeal concluded that the first instance finding of invalidity based on added matter (a claim directed to an LED with only one mesa went beyond the content of the earlier application) was correct. The auxiliary requests all related to embodiments with a single mesa and therefore could not lead to a valid claim. The infringement claim was not considered in light of the invalidity finding. As such, SV's appeal was dismissed and SV was ordered to bear the costs of the appeal proceedings.
Decision date:
03 November 2025
Paris CD
IMI Hydronic v Belparts (UPC_CFI_104/2025 & UPC_CFI_364/2025)
- The parties are engaged in parallel proceedings before the Paris CD and the Munich LD. Belparts had commenced infringement proceedings against IMI before the Munich LD and IMI counterclaimed for revocation. Separately, a German IMI entity, IMI GmbH, brought a revocation action in the Paris CD, in which Belparts counterclaimed for infringement. There are also parallel EPO opposition proceedings, with a hearing before the Board of Appeals set for 27 November 2025.
- The Munich LD consulted the parties on bifurcation, which both the parties voted against. The Munich LD therefore decided to proceed with both the infringement action and counterclaim for revocation, taking into account the date of the oral hearing at the EPO Board of Appeals and the scheduling in the Paris CD.
- Belparts first sought referral of the counterclaim for infringement to the Munich LD under Rule 302.3 RoP, which IMI agreed to. The Munich LD rejected this request as the actions were not pending before the same division, as required under Rule 302.3 RoP.
- Belparts then applied in both proceedings for a connection joinder under Rule 340.1 RoP. Belparts requested that i) the counterclaim for infringement in the Paris CD be heard together with the pending infringement case in the Munich LD; and ii) if the request was granted and the infringement cases are heard together, the revocation claim in the Paris CD be heard together with the Munich LD revocation counterclaim. IMI consented to Belparts' requests.
- The court examined whether Rule 340.1 RoP could be applied consistently with Article 33 UPCA (competence of the divisions of the Court of First Instance) and its purposes.
- The Munich LD rejected Belparts' requests. The court stated that "[a]s a result of the (procedural) choices the parties made", permitting the requests would still result in multiple oral hearings and multiple decisions concerning the same patent and (partly) the same parties and where the infringement actions and revocation actions are not being heard at the same time. This was said not to be in accordance with the interests of proper administration of justice and avoiding inconsistent decisions.
- The proceedings were order to continue as scheduled.
Decision date:
31 October 2025
Court of Appeal
Sun Patent Trust v Vivo Mobile Communication & Ors (UPC_CoA_755/2025 & UPC_CoA_757/2025)
- Sun Patent brought an infringement action in the Paris LD against Vivo, 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 also filed an application for protection of confidential information under Rule 262A RoP, which were partially granted. Sun Patent appealed the order, with the oral hearing taking place on 26 November 2025. In the meantime, it applied for suspensive effect of the partially granted confidentiality order, arguing that the appeal would become pointless if the confidential information was disclosed to Vivo's employees. The Court of Appeal rejected Sun Patent's request for suspensive effect.
- Later, Vivo filed a preliminary objection under Rule 19 RoP, challenging the court's jurisdiction to decide Sun Patent's request for a FRAND rate determination. Vivo requested the court stay or postpone its deadlines for the statement of defence and counterclaim for revocation, until a final decision on the preliminary objection was made. The judge-rapporteur denied the request to postpone the filing under Rule 19.6 RoP, which was confirmed by the Panel. The Paris LD eventually rejected the preliminary objection.
- Prior to the Paris LD's rejection of Vivo's preliminary objection, Vivo had filed a request under Rule 9.3 RoP to the Court of Appeal for (i) a stay of the Paris LD proceedings pending the confidentiality appeals; or (ii) in the alternative, an extension resetting its statement of defence and counterclaim for revocation deadlines to two months starting from the day of service of the decision in the appeal proceedings concerning the confidentiality orders.
- The Court of Appeal refused the application. It held that Rule 21.2 RoP permits a stay only where an appeal has been lodged against a decision or order of the judge-rapporteur on a preliminary objection under Rule 21.1 RoP. Although a stay may be granted under Rule 21.2 RoP under exceptional circumstances, an appeal against a decision or an order on a preliminary objection must already have been lodged. There cannot be a stay based on anticipation or speculation of such an appeal.
- Rules 19 to 21 RoP provide specific rules for preliminary objections. The court emphasised a strict application of these provisions as they may differ from general rules, such as the rules for staying proceedings (Rules 295 to 298 RoP).
- The same approach applies to extensions of time limits for submissions in first instance proceedings under Rule 9.3 RoP. As a general rule, such extensions must be decided upon by the Court of First Instance. In this case, Vivo had not justified why the Court of Appeal should exceptionally decide first, nor had it justified why it had not applied to the Paris LD for the relief it sought first.
Decision date:
30 October 2025
Düsseldorf LD
Van Loon v Inverquark (UPC_CFI_1325/2025)
- This decision was an ex parte order for inspection and preservation of evidence.
- The application was made by Van Loon in the Düsseldorf LD against Inverquark, a specialist wholesaler of pool and garden technology. Inverquark exhibited a product called "InverJet" at the Aquanale trade fair in Cologne between 28 and 31 October 2025, which Van Loon suspected of infringing its unitary patent for a counter-current swimming device. Van Loon filed its application on 28 October 2025.
- The decision was issued 2 days later. The court granted an ex parte order that an expert be appointed to inspect Inverquark's allegedly infringing product, secure evidence and submit a written report on whether the product made use of the technical teaching of the patent.
- The court was satisfied that Van Loon had credibly demonstrated that the patent might be infringed. Van Loon had explained why it considered that all features of the patent were potentially realised in the "InverJet" product, relying on photographs showing the external structure and explaining why it believed the features were met. It had also explained that some features (such as interior aspects and dimensions) were dependent on inspection. The court considered that, due to the special circumstances in the relevant market, it had no other option for gathering evidence and required an inspection of the product.
- The court held that the inspection and preservation of evidence was urgent. The order was issued ex parte in accordance with Rules 192.3 and 197 RoP. Otherwise, there would be a demonstrable risk that evidence would be destroyed or would no longer be available for other reasons.
- There was a serious risk that the product would be removed from the exhibition grounds at short notice. In that case, it would be "almost impossible" for Van Loon to obtain evidence of the alleged infringement. Although Van Loon had been able to view the product after it had been offered to one of its own customers, it was not possible to conduct a test run, take detailed measurements, or disassemble it.
- The court considered a protective letter filed by Inverquark. It had filed this after receiving a warning letter from Van Loon's exclusive licensee a few days before the trade fair. However, it was primarily directed against the granting of provisional measures and the court considered it did not undermine Van Loon's case for inspection and preservation. Indeed, the fact that Inverquark disputed the presence of certain features that could not be determined externally demonstrated the necessity of an inspection.
- The protective letter also did not preclude an ex parte order. It did not contain any specific reasons against issuing an ex parte order for inspection and examination, focussing instead on preventing ex parte provisional measures.
- The court noted that validity was not to be examined in inspection and preservation proceedings unless there were "clear indications" that validity was in doubt (for example, a previous negative decision on validity), citing the Court of Appeal's decision in Valinea v Tiru & Maguin. The fact that Inverquark had questioned validity in correspondence and in the protective letter was not sufficient.
- The court held that Van Loon's interests outweighed those of Inverquark. It considered that the measures did not place an unreasonable burden on Inverquark, and its confidentiality concerns were adequately addressed by confidentiality provisions within the order.
- The court did not order security. The default position is that security should be ordered for ex parte orders to preserve evidence, but it considered that special circumstances for an exemption under Rule 196.6 RoP were present. Inverquark would still be able to offer and distribute its product and it would suffer "minor damage at most". Taking into account the short duration of the trade fair, ordering security would unreasonably delay the order.
Decision date:
30 October 2025
Court of Appeal
Oerlikon Textile v Bhagat Textile Engineers (UPC_CoA_8/2025)
- At first instance, the Milan LD held Bhagat liable for infringement of Oerlikon's patent relating to a false twist texturing machine. The Milan LD ordered Bhagat to pay the costs of the proceedings in the sum of €77,064.65 within one month of service of the costs decision. Bhagat appealed the costs decision and an oral hearing was scheduled on 14 November 2025.
- In the meantime, on 26 September 2025, Oerlikon filed an application for security for costs pursuant to Article 69(4) UPCA and Rule 158 RoP for the costs already awarded at first instance and the costs incurred in the appeal proceedings. Oerlikon argued that as a result of Bhagat's conduct to date, there were legitimate concerns that enforcement of a costs decision in India (where Bhagat is domiciled) would be "unduly burdensome".
- Bhagat requested that the application be dismissed or, in the alternative, the costs already ordered against Bhagat in the first instance proceedings be excluded from any security to be ordered. It maintained that a security for costs order would limit its access to justice and unduly interfere with its right to an effective remedy.
- The Court of Appeal rejected the application for security for costs with respect to the first instance costs, but ordered Bhagat to provide security in the amount of €19,000 in relation to the appeal.
- The Court of Appeal explained that in accordance with Rule 158.1 RoP, an application for security for costs can be filed at any time during the proceedings, and may equally be filed in first instance and appeal proceedings. However, in accordance with Rule 150 RoP, the request must be made before an award on costs has been decided by the court as the main purpose of security for costs in the UPC system is to "protect a party from a future risk of not being able to recover its legal costs that the other party may…be liable to bear".
- The outstanding costs payment from the first instance proceedings was not a matter to justify security for costs before the Court of Appeal given that they had already been awarded. The payment is a matter of enforcing of a costs decision and does not justify a request for security for costs in regard to costs already awarded.
- On costs incurred by Oerlikon in the appeal proceedings, the Court of Appeal decided that Bhagat had not provided the court with sufficient comfort that there was no real and legitimate concern that an order for costs may not be recoverable. The Court of Appeal decided that given the scope of the appeal proceedings, which were not complex and were limited, the requested €90,000 was not appropriate. The court considered the ceiling for recoverable costs (€38,000) and ordered security for costs in the sum of 50% of the ceiling (€19,000) to be paid within 10 days from the date of service of the order.
Decision date:
23 October 2025
Milan CD
bioMérieux & Ors v Labrador Diagnostics (UPC_CFI_497/2024)
- bioMérieux UK brought a revocation action in the Milan CD against Labrador's patent claiming an instrument for detecting a biological analyte. Labrador had separately brought infringement proceedings in the Düsseldorf LD against French, German, Italian, Austria, Portuguese and Benelux bioMérieux entities (part of the same group as bioMérieux UK). These bioMérieux entities brought a counterclaim for revocation in the Düsseldorf LD and requested that the counterclaim be consolidated with the revocation action in the Milan CD. Permission to consolidate was given.
- bioMérieux challenged the patent on several grounds and filed a significant number of attacks, in total, filing around 50 invalidity attacks, over 12 added matter attacks, 3 novelty attacks, 1 insufficiency attack and had 6 different starting points for 30 inventive step attacks. Labrador only defended claims 9 and 14 of the patent as granted and filed a main request and 7 auxiliary requests.
- The Milan CLD initially asked bioMérieux to limit its number of arguments. In response, bioMérieux requested that the court indicate which arguments should be retained and which should be discarded. The Milan CD held that in light of the court's impartiality, it is not the court's role to indicate which attacks it considers to be the most promising or which are likely to be successful. As such, the court required bioMérieux to rank its attacks in order of importance and likelihood of success, citing the principles of proportionality and fairness from the preamble of the UPCA. The court stated that if the attacks the party considered most likely to succeed failed, then the other arguments would not succeed either.
- The court found that the patent as granted and the first auxiliary request lacked novelty as the claimed subject matter was directly and unambiguously disclosed in the prior art document known as "Clark". Although the second auxiliary request was found to be novel, it added matter beyond the original application.
- The third auxiliary request was found to be novel over several pieces of prior art (alone and in combination, and in combination with the common general knowledge). It also overcame arguments of lack of clarity, lack of inventive step and insufficiency. As such, the court concluded that claim 1 of the third auxiliary request was valid and, as claim 2 claimed a method corresponding to the instrument claimed in claim 1, claim 2 was also held to be valid.
- The court held that because the revocation case and counterclaim for revocation concerned the same group of parties and the same invalidity attacks against the same patent, the value of the proceedings should be set together at €5,000,000 and, as such, the ceiling of recoverable costs was €600,000, which applied to both the revocation claim and the counterclaim for revocation.
- The parties agreed that the legal costs of the successful party should be borne by the unsuccessful party and the amount of €600,000 was deemed undisputed.
- Labrador requested that the court keep the amount confidential, pursuant to Article 58 UPCA and Rule 262.2 RoP. However, the Milan CD held that the costs of proceedings are not covered by confidentiality unless they are "specifically indicative of the company's financial capacity, its commercial strategy, or the importance of the patent as a corporate asset". Here, the agreement on costs between the parties did not reveal anything about Labrador's financial capacity etc. and therefore the confidentiality request was rejected.
- At the oral hearing the parties clarified that it was up to the court to decide who was the successful party and what success meant. In accordance with Article 69 UPCA and Rule 118.5 RoP, the Milan CD held that Labrador was the most successful party. However, bioMérieux had some success as it initiated the revocation action and counterclaim against the patent as granted and that was not held valid (and neither were Labrador's main request or auxiliary requests 1 and 2), so the court ordered bioMérieux to pay two thirds of the costs (€400,000).
Decision date:
22 October 2025
The Hague LD
Abbott v Sinocare & Anor (UPC_CFI_587/2025)
- Abbott, a market leader in continuous glucose monitoring (CMG) devices, brought a second application for provisional measures (including preliminary injunction) against China-based manufacturer of CGM systems, including the GlucoMen iCan and corresponding app, Sinocare, and Sinocare's Italy-based exclusive European distributor, Menarini, in relation to another of its patent.
- Abbott claimed that Sinocare and Menarini individually and jointly (directly or indirectly) infringed it patent with unitary effect (EP 471) relating to displays for a medical device. Abbott applied for an immediately enforceable injunction covering the UPCA territory and other provisional measures, including delivery up and provision of information relating to the alleged infringement.
- Sinocare and Menarini were given the opportunity to respond to the application. They asserted that they did not infringe the patent with the GlucoMen iCan and corresponding app because certain features of the claim were not reproduced, and the patent was more likely than not invalid due to lack of inventive step and added matter.
- As in the parallel provisional measures application, jurisdiction was contested with respect to Sinocare due to it not being domiciled in the EU and it claiming that (threatened) infringement by Sinocare in the UPCA territory had not been substantiated. Again, the court rejected these arguments, noting that it was undisputed that Sinocare makes the iCan CGM app available on its website specifically for countries in the UPCA territory and it is the manufacturer of the GlucoMen iCan. Sinocare and Menarini had also announced that they would cooperate in bringing the device into the European market. The court noted that this was at least combined/joint threatened infringement in the UPCA territory. Additionally, as the case concerned the alleged (threatened) infringement of the same patent in the same territory by the same attacked embodiment, Menarini could act as an anchor defendant under Article 7(2) of the recast Brussels Regulation.
- The urgency of Abbott's application was considered next, with the court finding that Abbott had made no unreasonable delay in seeking provisional measures. The Hague LD found that the iCan GMS App only became available in April 2025 and it was not unreasonable for Abbott to file its application just over two months afterwards because it needed time to "assess infringement".
- The court went on to consider claim construction as the parties disagreed on this. The court noted that the claim was particularly directed to a display that is configured to show a so-called timeline graph screen in which certain events are displayed. The Hague LD found Sinocare and Menarini's interpretation of the claim to be more likely than not correct and therefore the relevant feature of the claim was to be interpreted in a way that event data icons must be displayed on or near the graph line of the timeline graph.
- Therefore, a timeline graph screen where the timeline graph is displayed in one panel and the event data icons are displayed in another panel/section were not found to fall within the scope of the patent. Sinocare and Menarini were not found to infringe the patent because the timeline graph screen on the iCan CGM App displayed two separate panels and the event data icons were not included in the timeline graph.
- Due to the non-infringement finding, the court did not consider it necessary to discuss any validity arguments. Abbott's provisional measures application was dismissed and no preliminary injunction was granted.
- Abbott was ordered to pay an interim award of costs of €400,000.
- The parallel provisional measures proceedings between the same parties can be found here.
Decision date:
21 October 2025
The Hague LD
Amycel v XXX (UPC_CFI_499/2024)
- In these proceedings, Amycel obtained a default judgment and a permanent cross-border injunction against a Polish defendant over its infringing brown mushroom strain "Cayene", following the earlier grant of a preliminary injunction.
- After difficulties serving Amycel's statement of claim, the court authorised alternative service under Rule 275 RoP and deemed service effective on 25 November 2024. The defendant's late filed statement of defence was not admitted and its Rule 320 RoP re-establishment request was rejected.
- As the court was satisfied that service was properly effected under Rules 275 and 277 RoP, it proceeded to a default decision under Rule 355 RoP (failure of defendant to lodge a defence within the time limit). The Hague LD acknowledged that under Rule 355.2 RoP, the claimant’s facts must justify the relief sought. The Hague LD took this to mean that in a default situation, the court must assess whether the facts are sufficiently substantiated by evidence and whether the requested measures and orders are not prima facie unlawful or unfounded, that is the patent in question must not be obviously invalid and the allegedly infringing product must not be obviously outside the scope of the patent.
- Amycel alleged direct infringement of its patent by the Cayene strain offered and traded in the Netherlands, Germany, France and Italy. On the merits, the court adopted its findings from the preliminary injunction decision, namely that the patent was more likely than not valid and infringed. It rejected a raft of late defence applications and exhibits submitted by the defendant as inadmissible.
- The court granted a permanent injunction covering the Netherlands, Germany, France and Italy. It also ordered the defendant to provide certain information relating to the infringement, send recall letters to customers, publish a corrective notice on its website, and destroy any infringing returned and stock product. The court awarded damages – to be assessed in later damages proceedings – with an interim award of €50,000.
- The court also ordered a penalty payment of up to €50,000 for each day or part of a day the injunction is not complied with (up to a maximum of €1,000,000) and €5,000 for each day of non-compliance with the other orders (up to a maximum of €100,000).
Decision date:
21 October 2025
Hamburg LD
Occlutech v Lepu Medical & Anor (UPC_CFI_553/2025)
- Occlutech applied to the Hamburg LD for provisional measures (preliminary injunction) against Chinese company Lepu Medical and its Dutch subsidiary. Occlutech alleged that the Lepu companies directly infringed, or the infringement was imminent, its patent relating to a braided occlusion device with their "MemoCarna ASD" and "MemoCarna VSD" medical implantable occlusion devices. The attacked embodiments had recently received CE-mark approvals and had been exhibited at trade shows in Europe and Asia.
- The Lepu companies did not object to the UPC's international jurisdiction over the dispute, accepting that the Dutch subsidiary acted as an anchor defendant for Chinese company under Article 31 UPCA, in conjunction with Articles 7(2) and 71b(2) of the recast Brussels Regulation. However, the Lepu companies did challenge the Hamburg LD's competence to hear the matter, arguing that there was no special connection or targeted marketing to Germany and no "imminent infringement".
- The court rejected this argument holding that it had competence under Article 33(1)(a) UPCA, as it was the LD hosted by the UPC state where the actual or threatened infringement has or may occur. There must be at least a plausible allegation of infringing acts by that party in the country in origin or a situation of imminent infringement (as recently explained by the Court of Appeal in Boehringer v Zentiva).
- The Hamburg LD drew an analogy with the Court of Appeal's reasoning in Boehringer v Zentiva, noting that the Court of Appeal had decided in the context of marketing generics that the mere application for a marketing authorisation did not amount to an imminent infringement but completion of national procedures for health and technology assessment, pricing and reimbursement could amount to an imminent infringement. In this case, implantable medical devices are subject to the Medical Devices Regulation, which stipulates that devices can only be put on the market or put into service if they comply with the Regulation and have undergone clinical evaluation. Obtaining an EU CE-mark is a prerequisite to putting a medical device on the market in the EU and that requires clinical evaluation.
- Accordingly, obtaining and announcing CE-marks for both attacked embodiments was held to indicate an expected market entry in any of the EU Member States in the foreseeable future, including Germany. Plus, the presentation of the attacked embodiments at a trade fair in Germany was a sufficient indication that marketing was directed at the German market. Due to the imminent infringement finding, the court left open the question whether the presentation of the devices at the trade fair turned an imminent infringement into an actual infringement under Article 25 UPCA.
- The defendants challenged the urgency with which Occlutech had acted in bringing the provisional measures proceedings. The defendants pointed to Occlutech's earlier knowledge of the alleged infringing devices from catalogues from 2023 and a Dubai conference. The court held that the applicant had treated the matter with the necessary urgency. It was not relevant at which point the applicant gained general knowledge of the infringing devices as long as their marketing in the EU could not have been considered imminent due to the lack of a CE-mark. Any knowledge prior to the CE-marks being granted was deemed irrelevant. It was acknowledged that the defendants announced their CE-mark approvals in April and May 2025, with Occlutech finding out about it later. Occlutech filed its application in June 2025 and the court found that it acted without undue delayed as it demonstrated that it investigated the defendants' activities in Europe/Germany, even though it was difficult to obtain information on the specific products as they are sold through direct sales channels or tenders with hospitals.
- The defendants also challenged the validity of the patent, alleging added matter and lack of novelty. The court found these attacks unconvincing and held that the patent was more likely than not valid. The attacked embodiments were also held to make literal use of claim 1 of the patent.
- The court weighed the parties' interests, finding that there were special circumstances justifying an injunction – namely, the parties were direct competitors and there was a likelihood that the launch of the attacked embodiments would result in lost sales for Occlutech due to the assumed lower price of the defendants' products. A preliminary injunction was granted, prohibiting the defendants from offering, placing on the market, using, importing and storing for those purposes the infringing products in Germany, France, Italy, the Netherlands and Ireland (the court noted that because of the imminent infringement finding an injunction covering all UPCA countries could have been granted under Article 34 UPCA, but this is not what Occlutech had requested).
- The defendants had sought security for costs from Occlutech, but the court dismissed the request. It stated that it was contradictory for the defendants to deny imminent entry into the market with the attacked embodiments, while at the same time requesting security. The information provided by the defendants did not allow the court to assess any possible damage if the provisional measures were later revoked.
- The court set a penalty payment of up to €250,000 for each case of non-compliance with the preliminary injunction.
Decision date:
20 October 2025
Paris CD
Meril & Ors v Edwards (UPC_CFI_189/2024 & UPC_CFI_434/2024)
- This decision is part of a wider dispute between Meril and Edwards relating to prosthetic heart valves and their delivery assembly.
- In this case, Meril filed a revocation action against one of Edwards' patents relating to a prosthetic heart valve and a delivery assembly. The patent in suit is a third-generation divisional application. Meril challenged validity on the basis of added matter, and lack of novelty and inventive step.
- Edwards responded by filing a defence to revocation, a request to maintain the patent as granted (or, in the alternative, in an amended form). Edwards also filed an application to amend the patent and a counterclaim for infringement by Meril's offering and selling the "Octacor THV" and the "Navigator Inception" (and later amended to include the "Octapro THV" and "Navigator Pro") in the UPCA territory.
- In response, Meril argued that it did not infringe the patent or, alternatively, the court should reject Edwards' request for an injunction pursuant to Article 63 UPCA as it would be "disproportionate", or further in the alternative, the court should refer a question to the CJEU on the interpretation of Article 3(2) of the Enforcement Directive. Its final alternative argument was that the court should exclude the Octacor system from any injunction in sizes in which other self-expandable valves are not available and stay the injunction for 12 months.
- The Paris CD rejected Meril's request to revoke the patent and upheld the patent in amended form (as per auxiliary request 2). It also found that Meril had infringed the patent and granted an injunction.
- The court first dealt with some procedural points. Although there were ongoing opposition proceedings before the EPO that the court had not originally been notified of, the Paris CD noted its discretion to stay its proceedings where there are parallel opposition proceedings. In this case, the court declined to exercise its jurisdiction, noting that neither party requested a stay of the proceedings, which "implicitly" demonstrated the parties' interests in getting a quick decision from the Paris CD.
- Next, he court did not allow Meril to plead grounds of invalidity that were filed late in the proceedings. The Paris CD confirmed that the UPC operates a "front loaded" system and claimants are not be allowed to gradually introduce new arguments. However, the court did allow both parties to submit new evidence that disputed facts or evidence already put forward by the other side.
- In relation to the oral hearing, the court had allowed the parties to use presentation slides during the hearing, to aid the court's interpretation. There was some argument between the parties over whether the slides had introduced new arguments and were therefore an inadmissible extension of the scope of the proceedings. The court disagreed that the slides from both sides had done this, finding that they merely strengthened arguments already introduced.
- Turning to the substance of the matter, the Paris CD followed the principles of claim interpretation set out by the Court of Appeal in Nanostring v 10x Genomics, noting that the claims needed to be interpreted in the context of the embodiments and diagrams included in the patent. This ultimately meant that some of the claims as granted were held invalid due to added matter.
- One of Edwards' auxiliary requests was deemed to be sufficiently novel and inventive to be valid. In considering inventive step, the Paris CD focused on a "holistic approach" to inventiveness, rather than focusing on "isolated distinguishing features" of the claim. Although the person skilled in the art may have been aware of certain features from the prior art and it may have been possible to add them to the claim, the court found that there was no clear motivation to do so in this case.
- Article 63 UPCA sets out that the court may grant an injunction against an infringer aimed at prohibiting the continuation of the infringement. However, Article 64(4) UPCA states that in considering corrective measures, the court must take into account the need for "proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non-infringing state, as well as the interests of third parties". The court noted that this appeared to be consistent with the Enforcement Directive (meaning a referral to the CJEU was not necessary) and the Agreement on Trade-Related Aspects of Intellectual Property. In line with this legislative framework, a general injunction to restrain future infringements is the "normal remedy" for patent infringement, but the court does have the discretion to tailor the injunction by "limiting its substantive scope or temporal effect" so that it is not disproportionate.
- Meril had sought to argue that no injunction should be granted because it would limit the diversity of treatments available to the detriment of the public interest. The court decided that Meril had not demonstrated that the availability of a variety of products in this specific field was essential to public health and therefore the "public interest" was not impacted. However, Meril did demonstrate that there was a "clear public need" for its XL-sized valves, which were carved out of the injunction (this was similar to the approach taken by the Munich LD in relation to another dispute between the same parties).
- Meril was also ordered to provide certain information relating to the infringement and to deliver up the infringing products.
- A recurring penalty payment of €20,000 per product was imposed for any non-compliance with the injunction and a recurring penalty payment of €1,000 for each day of delay with respect to the provision of information and delivery up.
Decision date:
17 October 2025
The Hague LD
Abbott v Sinocare & Anor (UPC_CFI_624/2025)
- Abbott is a leading provider of continuous glucose monitoring (CGM) devices. In June 2025, it applied for provisional measures (including a preliminary injunction) against two companies – China-based manufacturer of CGM systems, including the GlucoMen iCan, Sinocare, and Sinocare's Italy-based exclusive European distributor, Menarini.
- Abbott claimed that Sinocare and Menarini individually and jointly (directly or indirectly) infringed its patent with unitary effect (EP 633) relating to analyte sensor assemblies. Sinocare and Menarini were given the opportunity to object to the application and in doing so asserted that they did not infringe the patent because it did not employ certain features of the claim in the GlucoMen iCan and that the patent was more likely than not invalid due to lack of novelty and/or inventive step and because the subclaims add matter and insufficiently disclosed the invention.
- Firstly, The Hague LD held that it had both competence and jurisdiction to hear the claim. Regarding competence, Abbott was held to have provided evidence of alleged infringement within the UPCA territory by Menarini, including in the Netherlands, which satisfied the court's competence requirements.
- The jurisdiction of the court was contested with respect to Sinocare due to it not being domiciled in the EU. It also claimed that (threatened) infringement by Sinocare in the UPCA territory had not been substantiated. The court rejected these arguments, noting that it was undisputed that Sinocare was the manufacturer of the GlucoMen iCan and that Sinocare and Menarini had announced that they would cooperate in bringing the device into the European market. The court noted that this was at least combined/joint threatened infringement in the UPCA territory. Additionally, as the case concerned the alleged (threatened) infringement of the same patent in the same territory by the same attacked embodiment, Menarini could act as an anchor defendant under Article 7(2) of the recast Brussels Regulation.
- Next, the court considered the urgency of Abbott's application, finding that Abbott had made no unreasonable delay in seeking provisional measures. It had filed its application approximately one month after publication of the grant of the patent. Abbott was also found to have sufficiently argued that the measures were objectively necessary/urgent to stop (imminent) infringement.
- The Hague LD also held that it was more likely than not that Abbott's patent would be held valid and the invalidity defences raised by Sinocare and Menarini were "not expected to affect the validity of the patent in the main proceedings".
- Based on the the Hague LD's wider interpretation of the claim, Sinocare and Menarini's argument that its product did not employ certain features of the claim did not hold true. The court found that on the correct claim interpretation, the features were present in the GlucoMen iCan and therefore it was more likely that not that Sinocare and Menarini infringed the patent.
- In view of the likelihood of validity and infringement, Abbott's requested measures were granted so far as necessary and proportionate. The Hague LD granted the preliminary injunction covering the whole UPCA territory, as requested. Necessity was made out due to the risk of lost sales and price erosion. The court also ordered limited provision of information relating to the infringement and delivery up of any GlucoMen iCan products held or owned by Sinocare and Menarini in the UPCA territory. The court did not order Abbott's request for a declaration that the GlucoMen iCan is considered "goods suspected of infringing an intellectual property right" as such a declaration is not possible as a provisional measure. The order was made immediately enforceable.
- Abbott was not ordered to pay any security for costs because Sinocare and Menarini "did not argue let alone demonstrate" that Abbott would not or could not pay damages if the injunction was reversed on appeal or in the proceedings on the merits.
Decision date:
17 October 2025
Düsseldorf LD
Hewlett-Packard v Andreas Rentmeister & Anor (UPC_CFI_515/2025)
- HP sought a preliminary injunction and further provisional measures against two defendants, for alleged patent infringement, concerning its patent for electronic circuitry used in printer ink cartridges. HP claimed that the two defendant were dealing in "rebuilt" HP ink cartridges. The first defendant is based in Germany and sells rebuilt cartridges online via its own website to customers in several UPC countries. The second defendant is based in China and also sells rebuilt cartridges online, but via the Amazon platform targeted at consumers in various UPC countries.
- Within one month of service of HP's application, the first defendant notified the court that a settlement had been reached between the two parties. The first defendant stated that it would not defend itself against four of five of HP's requests, and that HP had agreed to drop its final request (relating to costs of the proceedings). HP invited the court to issue a judgment by default against the first defendant in relation to the four claims it was not defending itself against.
- Service out of the jurisdiction in China on the second defendant had not been completed by the date of the Düsseldorf LD's decision. However, HP still requested a decision by default against the second defendant.
- This decision only concerned HP's application for provisional measures and default judgment against first defendant.
- The Düsseldorf LD first considered what type of order it should produce. Pursuant to Rule 209.1(a), the UPC has the discretion to inform a defendant about an application for provisional measures and invite them to lodge an objection to the application within a specified time period. If a defendant does not lodge an objection within that time period or does not substantiate its objection (as was the case here), the application for provisional measures can be decided based on the applicant's submissions by means of a regular order in the preliminary injunction proceedings.
- A decision by default (Rule 355.1(a) RoP) is not something that the court would consider in these circumstances. Firstly, this is because a decision by default is not provided for in Rules 205 RoP et seq for this scenario. Secondly, only a regular preliminary injunction order would be consistent with the underlying interests involved. If a defendant declines the court's invitation to lodge an objection against the provisional measures application then there is no reason to grant them the "advantages of a decision by default". The possibility of setting aside the decision by default would conflict with the applicant's interest in effectively enforcing their patent in preliminary injunction proceedings.
- The fact that HP had requested a decision by default, in addition to its provisional measures application, did not prevent a regular preliminary injunction order being granted. The court held that HP's default judgment request merely supplemented its provisional measures application and therefore the court was able to grant a preliminary injunction or other provisional measures through a regular order and still comply with Article 76(1) UPCA (that is, deciding in accordance with the requests of the parties and not awarding more than is requested).
- Proceeding on the basis, the court considered the application for provisional measures as directed against the first defendant in the usual way. It found that the application both admissible and successful on the merits.
- The first defendant did not challenge the validity of the patent, therefore the Düsseldorf LD did not consider validity in detail. It stated that since the defendant had not put forward any arguments against validity and nor had there been any nullity or revocation proceedings (national or UPC), there was no reason for it to doubt the validity of the patent.
- On infringement, the court found that the products sold by the first defendant made direct and literal use of the technical teaching of claim 13 of the patent because they had the same logic circuitry on the cartridge which functioned as a controller. HP supplied numerous images to demonstrate the similarities.
- The court also found that the balance of interests favoured the grant of the preliminary injunction, in part because the parties were direct competitors and there was a potential for price erosion.
- The court also found that HP had not hesitated in applying for provisional measures. HP had lodged its application approximately two weeks after becoming aware of the infringement.
- Lastly, the court found that the measures were objectively necessary because of the potential loss of revenue, the risk of permanent loss of market share, and the potential harm to HP's reputation by association with the lower-quality infringing products.
- The court granted the preliminary injunction against the first defendant and ordered it to provide information relating to the infringement. The court set a penalty payment of up to €1000 per infringing device made, offered, placed on the market etc or up to €250,000 per day for non-compliance with the preliminary injunction and up to €100,000 per day for failing to provide the requested information. HP has 31 calendar days or 20 working days (which is longer) from service of the order on the first defendant to commence proceedings on the merits, otherwise the provisional measures order will be revoked or otherwise cease to have effect.
- No security for costs were ordered to be paid by HP because the first defendant stated that it did not intend to challenge the application and it did not present arguments against the provisional measures to the court.
Decision date:
16 October 2025
Düsseldorf LD
Hewlett-Packard v Zhuhai ouguan Electronic Technology (UPC_CFI_449/2025)
- HP had sought a preliminary injunction and further provisional measures against the defendants for alleged infringement of two of its patents.
- The application had to be served outside of the jurisdiction on the first defendant. Service was initiated in June 2025 via the official online portal of the Central Authority of China. According to the portal, the documents were forwarded to the Supreme People's Court for further processing the following day. No further processing steps could be seen on the portal.
- HP asked the first defendant to voluntarily accept service by mid-September 2025. This was unsuccessful. Following this, HP requested that the Düsseldorf LD inquire as to the status of the service with the Central Authority of China. The Düsseldorf LD received a response noting that the documents had not been served as there was no company at the address provided.
- HP requested an order from the Düsseldorf LD acknowledging that the steps already taken constituted good service as per Rule 275.2 RoP.
- The Düsseldorf LD stated that it had complied with all formal requirements set out in the Hague Convention, to which the Chinese authorities did not object. The court held that HP had "credibly demonstrated" that the address provided for service was accurate and corresponded with the company's registered address.
- The Düsseldorf LD noted that Article 15(3) of the Hague Convention recognises that formal service requirements and associated time limits (in Article 15(2) of the Hague Convention) may prevent an applicant for provisional measures from having effective protection and therefore allows the ordering of provisional measures in urgent cases.
- In this case, all efforts to serve the application or otherwise bring it to the first defendant's attention had failed. As such, it was necessary to order that the steps taken constituted good service under Rule 275.2 RoP. Service was deemed to be effective as of the date of this decision.
- A related decision can be found here.
Decision date:
15 October 2025
Düsseldorf LD
Hartmann Packaging v Omni-Pac (UPC_CFI_115/2025 and UPC_CFI_377/2024)
- This was a case relating to infringement and validity of a patent for egg boxes. Hartmann issued proceedings against Omni-Pac in the Düsseldorf LD for infringement of the German, French and Dutch designations of its patent for "A display and distribution package for eggs". Omni-Pac counterclaimed for revocation.
- Hartmann argued that Omni-Pac's products infringed on a literal basis. It subsequently sought to introduce a claim for infringement by equivalence in its rejoinder to the reply to the counterclaim revocation. Omni-Pak challenged the priority of certain claims and argued the patent lacked novelty and inventive step.
- Regarding priority, the court stated that "[t]he term "the same invention" in Article 87 EPC must be interpreted as meaning that a claimed invention is to be regarded as the same invention as the invention in an earlier application if the skilled person can derive the subject-matter of the claim directly and unambiguously from the earlier application as a whole using general technical knowledge". It noted that this standard corresponded to the disclosure standard for added matter, as set out by the Court of Appeal in Abbot v Sibbio. The decisive factor was what the skilled person, using their common general knowledge, can directly and unambiguously derive from the earlier filing, including any implicitly disclosed subject matter.
- The court held that claim 1 could validly claim priority to the first priority document. Even though Figures 8 to 16 of the patent were not found in the first priority document, the essential features of claim 1 including “two substantially planar end surfaces” were disclosed. On the other hand, claim 6 could not claim priority from the first priority document. Features relating to the claimed manufacturing method were not disclosed. Claim 6 was entitled to the second priority date.
- The novelty attack failed. The first piece of prior art (EP 1 389 590 A1) did not disclose feature 1 of claim 1, which required the packaging to be made of fibrous material. The second piece of prior art (EP 1 373 100 B1) did not disclose features 2.2, 2.2.1 and 5. In particular, it disclosed flexible flaps, not the claimed retainment projection/nose arrangement, and did not clearly disclose a label covering the top and a substantial part of the front. Claim 6 was novel over the intervening prior art, WO 2013/164664. There was no clear and direct disclosure of features 3 to 5.
- For inventive step, the court applied an objective obviousness assessment under Article 56 EPC rather than the EPO’s problem-solution approach. It referred to the Munich CD's decision in Sanofi v Amgen and noted that the assessment always requires a case-by-case evaluation taking into account all relevant facts and circumstances. The subjective ideas of the applicant or inventor were irrelevant. The only relevant factor is what the claimed invention actually contributed to the state of the art.
- The court decided that claim 1 as granted lacked inventive step. Starting from EP 1 389 590 A1, the only difference was in the packaging material. The court stated that "a person skilled in the art is accustomed to selecting a suitable material from among those known to be suitable for a particular purpose. The selection of a material from a narrowly defined range of possible suitable materials available to the person skilled in the art does not normally require any special skills and therefore does not constitute an inventive step." Pulp was a leading material for egg cartons and it was obvious to use it. Arguments that pulp cartons could not be reused hygienically were rejected; there was no such teaching in the patent.
- On the other hand, claim 6 was upheld. WO 2013/164664 did not disclose the method steps for positioning the retainment projection and aperture during moulding to compensate cover part deformations, removal from the mould, and oven drying. When considering the three prior art documents in combination, they did not render the specific method, including the required label coverage of the top surface, obvious.
- Auxiliary request 1 failed to overcome obviousness. Auxiliary request 2 (adding a feature that the nose of the fastening works as a hook) succeeded, and claim 1 was maintained in that form.
- On the court's construction, the infringement claims failed. The allegedly infringing packages employed a flexible closure flap rather than the retainment projection required by the claims. Claim features requiring an upwardly extending projection with a downwardly and outwardly projecting nose were not implemented.
- The argument of infringement by equivalence had been late filed and was held inadmissible under Rule 9(2) RoP. In any event, there was no technical-functional equivalence so infringement would have been rejected.
Decision date:
15 October 2025
Milan CD
Insulet v EOFLOW (UPC_CFI_773/2025 and UPC_CFI_774/2025)
- This was an application by Insulet for costs against EOFLOW additional to those provisionally settled by a decision issued on 22 July 2025. It sought about €195,000 in addition to the provisional amount of €200,000.
- The Milan CD found the application admissible and partly well founded.
- It stated that, in accordance with Article 69(1) UPCA and Rule 152.1 RoP, Insulet was entitled to recover reasonable and proportionate costs for representation in the proceedings on the merits. Insulet's costs were within the UPC's Scale of Ceilings for Recoverable Costs adopted under Rule 152.2 RoP.
- The court excluded a number of items from recoverable costs. In particular, it excluded:
- Costs that were "unintelligible" because the relevant invoices were redacted. Pursuant to Rule 156 RoP, an applicant must indicate exactly which cost item it is requesting payment for so the judge can review it. The court said that a party has a choice "either submit the costs to the Court or keep them confidential and waive their payment. Obscured costs cannot be settled, even if they are only partly redacted, as it would be unclear which part of the costs is related to the proceedings and which part is not".
- Costs relating to the applicant's personal circumstances must also be excluded, giving the example of filing a motion to reschedule an interim conference due to a conflicting hearing. The court stated that it was not reasonable and proportionate for the losing party to pay for the scheduling problems of the applicant's lawyers.
- Costs relating to enforcement must be excluded as they do not fall within the scope of Rule 151 RoP. Not only was enforcement of a matter for the national courts and outside of the jurisdiction of the UPC, but the wording of Rule 150 RoP did not allow for the compensation of costs incurred after the publication of the decision.
- Having excluded unrecoverable costs, the court assessed whether the remainder of about €157,000 was proportionate. It noted that assessment focused on amount of costs, rather than their necessity. The court took into account a "fair balance" between the complexity of the case and necessary preparations. In light of this, it made an "equitable reduction" of 30% or the costs deemed reasonable. It awarded Insulet nearly €115,000 additional costs.