Context: The Licensing Executives Society (LES) is a well-respected organization whose efforts to foster respectful debate are appreciated by many members of the IP community. Today, the German, French, and Italian chapters of LES jointly organized, on the German Patent and Trademark Office’s premises, an event (PDF) to mark the Unified Patent Court’s (UPC) third anniversary.
What’s new: The final two conference sessions were superficially cordial, though substantively divisive:
- Michael Tappin KC, a Deputy Judge of the High Court of Justice for England and Wales (EWHC) who filled in for Mr Justice Meade at the event, made a clear antisuit injunction threat against the UPC (and other courts), formally saying he couldn’t predict what would happen, yet stressing more than once that antisuit injunctions, in response to BSH Hausgeräte v. Electrolux long-arm patent judgments concerning the UK parts of European patents, were an option.
- Hoyng Rokh Monegier’s Willem Hoyng is the chair of the UPC’s Advisory Committee, but acted as if his mission was to inflict damage on the institution. This led to an open disagreement between him and UPC President Dr. Klaus Grabinski over the UPC’s prospects of convincing additional EU member states to become UPC contracting member states (CMS).
- Equally surprising, but potentially attributable to his firm’s representation of Amazon against InterDigital, were Mr. Hoyng’s disrespectful comments about the Mannheim Local Division’s (LD) intentions behind the dicta on cross-border enforcement in a Fujifilm v. Kodak1 contempt order (January 23, 2026 ip fray article). Mr. Hoyng said that the Mannheim LD took incorrect positions on cross-border enforcement in order to be “politically correct” because it does not want UK interference with its InterDigital v. Amazon case.2
- Presiding Judge Pierluigi Perrotti of the Milan LD and Presiding Judge Dr. Hubertus Schacht of the Munich I Regional Court’s 21st Civil Chamber explained certain practical complications caused by long-arm claims.
Direct impact: None of the above has immediate consequences in litigation or at the policy level. The organizers cannot be blamed for what certain individuals said. But a “UPC +3 YEARS” celebration could have been more positive and harmonious.
- The seemingly conciliatory things Deputy Judge Tappin said would have eased tensions only if he had refrained from telling the UPC in public that long-arm rulings might draw antisuit injunctions from the UK.
- Unless the Mannheim LD elects not to blame Mr. Hoyng’s German partners for his disrespectful attitude toward the Mannheim LD, his comments on the Fujifilm dicta are unnecessarily inconducive to his firm’s relationship with that court, which will not have benefited from the interjurisdictional friction with the UK due to Amazon’s arguably malicious compliance (March 25, 2026 ip fray article).
- The UPC docket distribution debate (April 13, 2026 ip fray article) should be had without causing institutional harm. The focus should be on making low-caseload LDs more attractive. UPC-bashing over the current state of affairs smacks of sour grapes, distracts from potentially workable solutions, and is inconducive to certain relationships.
- Presiding Judge Perrotti’s position that any BSH claim involving a non-CMS EU member state should be stayed if there is a non-negligible possibility of a national revocation action succeeding is anything but an invitation to file BSH claims in the Milan LD.
- Presiding Judge Dr. Schacht’s comments on how the Munich I Regional Court applies BSH were considerably more encouraging for patent holders, with the perfectly honest caveat that assertions of non-European patents could result in delay.
1. UK judges talk to the UPC with a smile and a gun
It is clear that the UPC can either defend its jurisdiction vigorously or foreign interference will never end.
For the most part, Deputy Judge Tappin came across as a diplomat who wanted everyone to be on good terms. But his quote from one of Mr Justice Meade’s decisions about more things uniting than dividing the UPC and the UK judiciary rang hollow. He had two opportunities to dispel concerns, and seized neither.
First, he was asked by a moderator what response those BSH rulings involving the UK parts of European patents might draw from the UK judiciary. He started with what was perfectly appropriate to say: it remains to be seen what types of measures the parties to such disputes might request from the UK courts and what would then be decided. If he had left it at that, he would have given a non-answer, but that would have been the smart thing to do, even more so ten days prior to the Amazon v. InterDigital Court of Appeal (CoA) hearing.
He went on to say, more than once, that antisuit injunctions are in the UK judiciary’s toolbox. That was a thinly veiled threat. As a guest at a celebration of the UPC’s third anniversary, and after all that has happened recently, “antisuit” was a word to avoid.
Second, he misleadingly said that neither a licensor nor a licensee had to act upon interim-license declarations, except that it might affect a patentee’s entitlement to a UK injunction or someone’s access to the UK courts over FRAND. Like other UK judges facing questions at conferences, he declined to answer the question of whether an interim-license declaration could give rise to damages claims. This is our question he refused to answer:
If an interim license declaration is just a declaration that affects access to the UK courts and to remedies in the UK, why was there so much wrangling between Amazon and InterDigital over the possibility of Amazon seeking damages in UK court based on a potential refusal to grant a global license?
At that stage, an interim-license request was no longer on the agenda because of the UPC’s anti-interference injunction. But that depends on the outcome of the appeal that the UPC CoA will hear next week and so-called final FRAND relief is still an issue.
The UPC panel doesn’t have the slightest problem with a declaration affecting only the UK proceedings. The whole concern was over whether InterDigital would be dissuaded from pursuing UPC litigation and enforcing a potential UPC judgment because of damages claims being brought in the UK.
A declaration of an entitlement can give rise to damages claims, can’t it?
The UPC knows the answer, and Amazon will not be able to deny its agenda. If the Mannheim LD’s anti-interference injunction is affirmed, patent holders seeking to enforce their rights in the UPC will be able to rely on effective protection, especially if it is subsequently held that such injunctions can be enforced at the UPC’s initiative (sua sponte).
2. Mr. Hoyng imputes ulterior motives to the Mannheim LD in a long-arm context
Mr. Hoyng was not on the long-arm panel, but he made a comment according to which the Mannheim LD had taken a legally incorrect but “politically correct” position in its Fujifilm contempt order. In that one, the Mannheim LD explained that in certain long-arm scenarios, actual enforcement with respect to activities in the UK market would (in the panel’s opinion) require recognition by a UK court.3
That was bad enough, and Mr. Hoyng made it worse by adding that the Mannheim LD only took that position because it does not want UK judges to take measures with respect to a certain case before the Mannheim LD, by which he meant InterDigital v. Amazon. And he pointed to longstanding practice in his jurisdiction (the Netherlands) regarding such cross-border enforcement.
That was, or at least could be perceived by many as, an insinuation that the Mannheim LD did not believe in its own stated views, and that it threw BSH-based long-arm enforcement partly under the bus only to strengthen its position in the anti-interference context.
Those comments were regrettable. The Mannheim LD has been handling those cases in the most appropriate way imaginable. It has narrowly tailored remedies; it has gone to extreme lengths to obviate the need for enforcement; and it has made it clear at all times that it would defend its jurisdiction, but would rather not have to do so.
Is it possible that the Mannheim LD’s views on long-arm enforcement were to some extent informed by the experience of being on the receiving end of overreach? That is definitely plausible. But it is a far cry from taking legally incorrect positions to advance some other agenda.
3. Venting frustration at the UPC’s expense
Later, Mr. Hoyng was the moderator of a conversation with UPC President Dr. Klaus Grabinski and European Commission (EC) policy officer Lena Pauschenwein. The focus was on the contemplated update of the EU Intellectual Property Rights Enforcement Directive. That was the title of the session (“Fireside chat: EU enforcement directive”).
But Mr. Hoyng did not focus exclusively on that question and on reasonably closely related ones such as a potentially Unitary Supplementary Protection Certificate. He engaged in hardcore advocacy concerning the UPC’s docket distribution, and connected that topic to the fact that the UPC has not yet been joined by all EU member states.
Mr. Hoyng alleged that Ireland raised the problem that with so many cases pending in Germany, a country participating in the UPC system would end up contributing financially without seeing many cases filed locally, and he said professionals in countries like Ireland dissuaded their governments from joining. Also, he wanted the UPC to become a monolingual judiciary (just English).
President Dr. Grabinski, who struck a mostly presidential but (where necessary) clear tone, strongly disagreed. He explained the real issue in Ireland, which is also the one ip fray has been aware of for a while: Irish politicians are afraid of a referendum failing because of citizens having voted against other proposals. The UPC president said: “I don’t buy this what you mentioned with respect to Ireland.” He went on to explain that the only non-UPC CMS from which a cabinet member (the minister of justice) joined the UPC in Luxembourg for its 2023 opening ceremony, came from Ireland.
Mr. Hoyng’s response was that his organization (the European Patent Lawyers Association (EPLAW)) had received a letter from the Irish branch of the Business Europe organization saying that the docket distribution “imbalance was not helping to convince everybody in Ireland to join”. The UPC president had heard this before, and reiterated that he was “not buying this” given the opportunities for Ireland if it became the only English-speaking country in the UPC system at a time where more than 60% of all UPC cases are already filed in English.
Contrary to Mr. Hoyng’s proposed monolingual system, the President Dr. Grabinski predicted that over time the languages of proceeding of UPC cases might more or less mirror the primary languages of European patents (75% English, 20% German, 5% French). He declared himself “optimistic that the family will grow very soon”.
Mr. Hoyng also talked about Poland and suggested that the country’s companies are not very innovative and that local politicians would want to “let them copy”. That was, again, not really diplomatic, and President Dr. Grabinski noted that while he is from the Rhineland, his family name is originally Polish.
Such arrogance concerning Poland is unwarranted. If adjusted for purchasing power, that country is now projected to catch up with Germany in a matter of possibly just ten years. It is growing at a significant rate, unlike most of the EU economy. Mr. Hoyng’s country is formally home to three tech powerhouses, but the two largest ones are not truly Dutch. ASML is a puppet of the U.S. government because it built its business on IP co-owned by the U.S. Department of Energy (DoE) under contracts with permanent obligations, and the U.S. could shut down ASML’s business overnight for another reason: ASML depends on critical components from U.S. companies subject to export control. The second-largest Dutch tech company, Prosus, is a holding company that has only about 1-2% of its workforce in the Netherlands and was spun off from South Africa’s Naspers. A large part of its value is its (minority) investment in China’s Tencent.
4. Milan LD scares away long-arm claimant with “non-negligible risk” standard for staying infringement actions
A less Germany-centric docket distribution would be more achievable if plaintiffs could expect decisions within a reasonable time frame. The Milan LD, which we would like to see succeed, has been sitting on a couple of Ericsson v. ASUS cases for almost two years, and the hearing is still months away (April 11, 2026 ip fray article). Well, a preliminary injunction hearing was held earlier this month, but that is a different story.
On LinkedIn, an Italian practitioner defended that delay, saying that there can simply be case-specific reasons. No, Signore, that kind of delay cannot be explained away, much less if one considers the time between the final written pleading and the trial. It was not ill will on our part to flag an objective problem.
Today, the Milan LD’s presiding judge shocked observers by explaining that any BSH claim relating to a non-UPC-but-EU member state would be stayed if there is a non-negligible chance of a national revocation action (which must then actually be pending) succeeding.
5. The Munich I Regional Court is open to BSH claims, but litigation over non-European patents could require more patience
Presiding Judge Dr. Schacht explained that the Munich I Regional Court applies national law to BSH claims where applicable (such as the Doctrine of Equivalents (DOE)) and German procedural law, but based on facts that may require differentiation by country, such as a patent holder having become aware of an infringement in one country before the same occurred in another country.
He merely managed people’s expectations with respect to long-arm claims that reach beyond Europe. He said that they would hear those cases, but would depend on input from the parties concerning applicable national laws. That could cause delays.
Such claims are not possible in the UPC anyway.
- Mr. Hoyng’s firm represented the plaintiff and won one of two cases against Kodak (including a long-arm ruling, a field in which that firm has scored several firsts), but for the enforcement and appellate proceedings, Fujifilm switched to another firm, which may indeed get a better outcome on the technical merits, but the long-arm part may be lost (and if so, it will not be due to the appellate counsel’s work, which became clear at the hearing). ↩︎
- He did not mention the case, but he said everybody knew which one it was, and there can be no doubt. Technically, there is more than one InterDigital v. Amazon case pending there, and the Mannheim LD does not tolerate interference with any single one of them. The key one that was meant is the anti-interference injunction (AII) case. The related appeal will be heard next week. ↩︎
- In the case at hand, no such requirement was identified, and penalties with respect to conduct in the UK were imposed on a Germany-based entity. ↩︎