This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our May 31, 2025 UPC Roundup.
1. CoA: two rulings related to sanctions, one related to jurisdiction
1.1 Contempt sanctions despite subsequent compliance with injunction; electronic disclosure must be requested during proceedings on the merits (Philips v. Belkin)
The Court of Appeal’s (CoA) second panel upheld the penalty imposed by the Munich Local Division (LD) on Belkin for non-compliance with a patent injunction in a dispute with Philips. It ruled that penalty payments have not only a punitive but also a coercive function, applying even after delayed compliance. Belkin’s penalty was slightly reduced to from €46K to €42K due to a misjudged compliance window, while Philips’ bid for mandatory electronic disclosure was rejected. The court clarified that, unless specified, information may be submitted in either paper or digital form, refining enforcement standards under the UPCA (UPC Agreement).
1.2 First panel affirms jurisdiction over infringements prior to June 2023 and between an opt-out and its withdrawal (XSYS v. Esko-Graphics)
The court held that Article 32(1) UPCA contains no temporal limitation, confirming that the UPC retains jurisdiction over all infringements involving a European patent, regardless of whether they occurred before 1 June 2023 or during the opt-out period, provided the opt-out was withdrawn. Emphasizing that competence and applicable law are distinct, the Court rejected arguments invoking the non-retroactivity principle under the Vienna Convention. The Court also denied the request to refer questions to the CJEU, stating no violation of EU law arose. The ruling reinforces the UPC’s comprehensive jurisdictional scope, especially during the transitional period under Article 83 UPCA, and aims to avoid market fragmentation across member states.
1.3 Imposing sanctions requires panel decision (Hybridgenerator v. HGSystem, Infotech)
In a firm reminder of procedural discipline, CoA panel 2 ruled that only a properly constituted judicial panel and not a single judge may impose periodic penalty payments under the court’s rules (PDF). While the amount of penalties may be set individually, the court held that their imposition carries legal and practical weight that requires a panel decision. The court remanded for further proceedings.
2. Munich LD: Tiroler Rohre v. SSAB
The Munich LD ruled in favor of Tiroler Rohre, partially upholding the patent in a modified form further to an auxiliary request. The court found that the original version of claim 1 was not new because it had already been disclosed in earlier documents. However, it accepted a revised version of the claim, ruling that the changes made were new and inventive enough to deserve a patent. The court issued a multi-coutry injunction.
3. Munich LD: cease-and-desist covenant with penalties moots anti-antisuit injunction matter, but defendant must bear costs nonetheless (Sun Patent Trust v. Roku)
(section contributed by Florian Mueller)
The second panel of the Munich LD has applied the traditional German cease-and-desist approach to a fee-shifting matter, with one key holding being specific to anti-antisuit injunctions (AASIs) (PDF). That one comes down to the following logic:
- If a party moves for a preliminary injunction (called “provisional measures” in the UPC) and fails on the merits, it has to pay the court fees and reimbursed the non-moving party’s (capped) litigation expenses.
- If the movant prevails on the merits, fee-shifting depends on whether judicial intervention was actually necessary:
- It was definitely necessary if a cease-and-desist letter was sent to the other party, with a reasonable deadline to provide a cease-and-desist covenant involving a contractual penalty, but the recipient said no or didn’t comply within a reasonable time frame.
- There can be scenarios (such as in this present case) where the cease-and-desist process is dispensable.
- If none of those exceptions applies and the moving party (called “applicant” in the UPC) didn’t go through the cease-and-desist exercise first, it has to pick up the (capped) costs and fees even if it was right on the merits.
- Furthermore, the party against which the decision came down can only obtain fee-shifting against the prevailing movant by means of an immediate surrender. In a main proceeding, that means it has to concede the case. If an ex parte PI came down, it must accept that outcome as legally binding and final.
The legal policy objectives behind this differentiated approach are
- to discourage the waste of court and party resources through unnecessary litigation and, as a secondary result,
- to protect parties that violate a law from being damaged financially by someone who might sue them just to generate costs.
In patent litigation, lawsuits are typically filed without a prior cease-and-desist effort. The assumption is that the accused infringer will defend itself (and if not, then the patentee will normally be more than happy to win without a fight).
In Sun Patent Trust v. Roku, the defendant moved for an antisuit injunction (ASI) in the United States, only to be slapped with an ex parte anti-antisuit injunction (AASI) (March 5, 2025 ip fray article). But it appears that Roku discovered the AASI proceedings in the UPC and then backtracked, though not in a way that the court would have deemed satisfactory. The ASI proceedings in the U.S. were not on the fast track yet, but the U.S. complaint involved prayers for injunctive relief of the ASI kind, which Sun Patent Trust sought to thwart through a UPC AASI. Apparently Roku then realized it was going to lose this in the UPC and wanted to minimize the amount of the costs it would have to bear. Thus the (half-hearted) capitulation.
A little later, and after having been served the UPC AASI, Roku also provided a cease-and-desist covenant that (as the court and the parties agreed) mooted the AASI issue. There still was no agreement on who should bear the costs, and the panel had to resolve that one.
Roku’s argument that Sun Patent Trust should have sent them a cease-and-desist letter first was rejected by the panel. Someone praying for antisuit relief gives every reason to the patentee to move for an AASI, and to do so ex parte and without any prior warning. Sun Patent Trust argued that a prior warning might have enabled Roku to seek an anti-anti-antisuit injunction (AAASI) in the U.S., which has been tried by others (such as Continental Automotive Systems, though its motion was denied without prejudice) but not yet successfully. The UPC rightly found that there was no hard evidence that U.S. courts would have definitely denied an AAASI motion had it been brought.
The relevant point in time at which a matter is moot is when all requirements are met. For example, withdrawing a prayer for antisuit relief is insufficient as a party might try again (such as in another forum).
The net effect is that Roku bears the costs.
4. Hamburg LD: reinstatement possible after deadline oversight despite ‘all due care’ procedures in place (Lionra v. Cisco)
The Hamburg division ruled that missed deadlines cannot be extended retroactively under Rule 9.3 RoP and that reinstatement under Rule 320 is the sole remedy (PDF (in German)). The court granted Lionra Technologies reinstatement, finding its internal deadline system met the “all due care” standard despite an isolated error by staff.
5. Hamburg LD: counterclaimant may have to provide collateral (Visibly Inc v. Easee & Yves Prevoo)
The UPCA does not oblige defendants to provide security in infringement cases, but this is the case when the defendant files a counterclaim for revocation (PDF). Here, the defendants filed a revocation counterclaim. Balancing both parties’ interests, the court ordered a reduced but substantial amount of €75k to be deposited or guaranteed within four weeks.
6. CD Paris: alleged contravention of laws of physics as grounds for revocation for lack of industrial applicability (Lindal Dispenser v. Rocep-Lusol)
This revocation action was dismissed because the first auxiliary request succeeded, but led to an intellectually interesting clarification industrial applicability that will probably come to bear in only a very few outlier cases (PDF). An argument was made that a patent claim was irreconcilable with the laws of physics. The panel held that industrial applicability under Article 57 of the European Patent Convention (EPC) excludes inventions defying physical laws but found the claims in the surviving form workable, inventive, and sufficiently disclosed.
7. Settlement: Tandem Diabetes v. Roche Diabetes Care
The CoA confirmed a confidential settlement between Tandem v Roche ending a revocation appeal. In the previous order, CD Paris upheld the patent and ordered Tandem to pay costs. On appeal, the parties informed the court they had resolved the matter amicably. The settlement terms remain confidential as usual.
8. New cases
8.1 Infringement (main) proceedings
- Dai Nippon v. Zapp Precision (Dusseldorf LD)
- Sun Patent trust v. Vivo Tech (Paris LD)
8.2 Revocation actions
- Fisher & Paykel Healthcare Ltd. v. Flexicare Ltd. (CD Milan)
9. Recent and upcoming hearings
9.1 Recent hearings
- Tuesday, June 3, 2025:
- Maguin v. Tiru and Valinea Energie v. Tiru (CoA; Rule 220.1(c) RoP appeals)
- Manuela Hofmann v. Essetre Holding (CD Paris; revocation)
- Wednesday, June 4, 2025:
- Sibio v. Abbott (CD Paris; revocation)
- Maschio Gaspardo v. Spiridonakis (CD Milan)
- Thursday, June 5, 2025:
- Philips v. Belkin and vice versa (CoA; Rule 220.1 RoP appeals)
- Progress Maschinen & Automation v. AWM & Schnell (Milan LD)
9.2 Upcoming hearings
- Wednesday, June 11, 2025:
- Sumi Agro v. Syngenta (CoA; Rule 220.2 RoP appeal)
- Oerlikon Textile v. Himson Engineering (Milan LD)
- Thursday, June 12, 2025:
- Roche Diabetes Care v. Tandem Diabetes Care & VitalAire (Hamburg LD)
- Tuesday, June 17, 2025:
- Headwater Research v. Samsung Electronics (Dusseldorf LD)
- Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation and vice-versa (CoA)
- Wednesday, June 18, 2025:
- Qualcomm v. Network Systems Technologies (CoA; cross-appeals Rule 327 RoP)
- Winnow Solutions v. Orbisk (The Hague LD)
- Friday, June 20, 2025:
- N.J. Diffusion v. Gisela Mayer (Paris LD)
10. Around the court
10.1 Patent Mediation and Arbitration Centre opens consultation on draft arbitration rules
The Patent Mediation and Arbitration Centre (PMAC) has launched a public consultation on its draft Arbitration Rules, inviting global stakeholder feedback until 4 August, 2025. Aimed at shaping a transparent and user-focused arbitration framework, the draft rules propose digital-friendly, flexible procedures tailored for patent and IP disputes, including those involving SEPs and FRAND licensing. With operations expected to begin in early 2026, this consultation is a key step in PMAC’s mission to offer accessible, specialized, and confidential dispute resolution aligned with international innovation needs (June 5, 2025 UPC news item).
The PMAC previously started a consultation on draft mediation rules (see item 10 of our May 25, 2025 UPC Roundup).
10.2 Munich LD celebrates its and the overall UPC’s second anniversary
The Unified Patent Court’s Munich LD marked its (and the overall UPC’s) second anniversary with an in-person event on June 5, 2025 at the Palace of Justice in Munich. The best news was that the new case management system (CMS) is coming along nicely (June 6, 2025 LinkedIn post by ip fray).
Lord Justice Colin Birss of the England & Wales Court of Appeal (EWCA), once a key contributor to the UPC’s Rules of Procedure, highlighted in his keynote the UPC’s rapid evolution and harmonization of European patent enforcement. Broader reflections underscored the missed opportunity for UK judges to contribute.
It became known that during the first two years there was one incident where security staff seized a visitor’s knife, but most likely there was no clear and present danger to anyone (June 8, 2025 LinkedIn post by ip fray).
10.3 May caseload figures
As of 31 May 2025, the UPC reports steady activity with 883 cases filed since operations began in June 2023, including 15 new infringement suits and 4 applications for provisional measures in May alone. Observers call for more geographic diversity, suggesting that broader appeal will grow as case law matures especially following the Court of Appeal’s alignment on pre-UPCA damages, which brings more legal certainty to parties across divisions (link to LinkedIn post).