UPC Roundup (1 week): CoA on requirements for UPC Representatives; other decisions; and new cases brought by major players

1. CoA

1.1 Accreditation rules reinforced; transitional period is fixed and final for representative registation (Anonymous v. Registrar)

The President of the CoA rejected a petition by a European patent attorney seeking review of a registrar’s refusal to register him as a UPC Representative (PDF). The applicant had attempted to rely on a certificate obtained from a Italian course completed before the UPC’s transitional deadline, arguing that the grace period should not apply to the registration date but only to when the qualification was earned. The course was deemed non accredited as the applicant filed for registration after the transitional period. The court firmly disagreed, holding that the transitional one-year period provided under Rule 12.1(a) of the EPLC Rules is clear, fixed, and not subject to extension or re-establishment, even for clerical errors.

The President affirmed that the UPC’s rules were adopted to ensure qualified legal representation and that expectations for accreditation must remain narrowly confined. The court found that the applicant’s late filing, even if due to an isolated paralegal oversight, did not satisfy the strict conditions for restoring rights. No grounds of proportionality or fairness warranted deviation from the established procedure. The request is rejected but the applicant is eligible to register in the future if they complete a qualifying litigation certificate or earn an appropriate legal degree.

1.2 Losing interest in enforcement after time-limited event has no bearing on costs (Ballinno v. Kinexon & UEFA)

In an order dated May 12, 2025 (PDF), the CoA affirmed that parties seeking urgent relief tied to short-term events must bear the consequences if they later withdraw for lack of a continued interest in enforcement. The court ordered that Ballinno, having withdrawn its request for provisional measures tied to the UEFA EURO 2024 event, is to be treated as the unsuccessful party and will bear the litigation costs. While the appeal on the security for costs was deemed admissible, the Court declined to rule on the withdrawn request itself, stating that it had become moot.

The official headnotes:

• An appeal against an order for security for costs (R. 158 RoP), brought together with an appeal against an order on provisional measures, is admissible. The admissibility is not affected by the fact that the appellant has later made clear that it no longer requests provisional measures.
• If a party when it comes to necessity and urgency builds its case entirely, or at least primarily, on a single event or window of time where allegedly there is a patent infringement, such as the existence of a trade fair or, as here, a major sports event, the party must accept an inherent risk in its procedural strategy. That risk is that the interest falls away once the event is over and that its requests must be rejected for the lack of urgent interest in the requested measures.
• If that risk indeed materializes and such a party decides to withdraw its requests for provisional measures prior to an order from the Court being issued, the result is that the action becomes devoid of purpose.
• If an action becomes devoid of purpose following a withdrawal of the main requests by a party who took the inherent risk in its procedural strategy that the urgent interest in the requests fell away before a final order was rendered, it is clear that – had the requests not been withdrawn – the requests would have been rejected for lack of urgent interest. Therefore, such a party must be considered as the unsuccessful party and consequently be held to bear the costs of the proceedings under the general rule of Art. 69 (1) UPCA.
• An exception to this may apply where it has been established that the impugned order is based on manifest errors.
• Where a party, on the other hand, withdrew its requests for lack of urgent interest before a (final) order in the action was rendered, caused by circumstances it could not reasonably have foreseen, and not due to a materialization of an inherent and foreseeable risk of a deliberate procedural strategy, equity may require a different allocation of costs.

2. Mannheim LD

2.1 Penalty for non-compliance with court order; piecemeal compliance, procedural excuses rejected (Fujifilm v. Kodak)

(link to LinkedIn post)

In an enforcement order (PDF), the Mannheim Local Division (LD) imposed escalating financial penalties on three Kodak entities for their failure to comply with a prior judgment rendered (April 2, 2025 ip fray article). Kodak was ordered to pay a €100K lump-sum penalty for past non-compliance, along with daily fines of €2.5K for continued non-compliance up to August 4, 2025, rising to €10K per day thereafter if disobedience persists. The court also ordered Kodak to cover all legal costs.

The ruling found that Kodak failed to provide required information, recall infringing goods, remove them from commercial channels, and destroy them, complying only with the sales ban. The court dismissed Kodak’s procedural objections, including its claim that enforcement required German-language translations or longer deadlines, noting that the proceedings were properly conducted in English and the recall period was reasonable.

The court’s opinion makes clear that Kodak’s piecemeal compliance and procedural excuses without any valid reason would not shield it from escalating sanctions.

2.2 FRAND counterclaims tend to entail higher fees than technical claims over single patents (ZTE v. Samsung Electronics)

The Judge-rapporteur Dirk Boettcher (“Böttcher” in German) confirms his earlier decision (June 20, 2025 ip fray article) that Samsung’s FRAND (fair, reasonable and non-discriminatory licensing) counterclaim in response to ZTE’s Standard Essential Patent (SEP) infringement action significantly expands the scope and value of the dispute (PDF). The new decision, dated July 24, 2025, indicates that Samsung has meanwhile been “heard.” The order ruled that the filing of a FRAND counterclaim, particularly one not limited to the patent-in-suit, goes beyond a mere defense and constitutes an independent claim that justifies additional court fees.

Rejecting Samsung’s argument that such counterclaims should not trigger extra fees or should be treated like revocation actions, the court emphasized that FRAND counterclaims alter the substance of the proceedings. The judge clarified that even if the counterclaim is a strategic necessity to show a willingness to license and avoid being labeled an unwilling licensee, it still introduces new subject matter. Therefore, the additional fee burden is appropriate and proportionate, especially when the counterclaim seeks a broader license scope (a portfolio license) than the patent being asserted.

Furthermore, the order reaffirmed that the fee cap is applicable to revocation claims does not extend to FRAND actions, as the public interest component of patent invalidation, which can justify reduced fees, is absent in licensing disputes.

2.3 Evidence gathering can include monitoring of test network(Centripetal v. Palo Alto Networks)

In a procedural order issued on June 3, 2025 (PDF), the Mannheim LD granted Centripetal an ex parte saisie order to preserve evidence against Palo Alto. Following a referral back from the CoA, the court ordered that a court-appointed expert, Professor Dr. Christoph Krauß, be authorized to inspect Palo Alto’s German branch office in Munich, monitor a full operational setup of the alleged infringing system in real time, and collect technical and digital evidence. The expert must prepare a detailed report within one month.

While most of the order is enforceable immediately, the court required that Palo Alto be granted two hours’ notice to consult legal counsel before the real-time setup inspection proceeds, to ensure proportionality and procedural fairness. The court stated that preservation of evidence can be executed without delay but prohibited Palo Alto from modifying its system prior to inspection. The court has also instructed Centripetal to deposit a security of €100K to cover potential damages.

3. Nordic-Baltic RD: court-confirmed settlement can be enforceable like an injunction (Edwards v. Meril)

(link to detailed article)

In the ongoing patent battle between Edwards Lifesciences and Meril Lifescience, the Nordic-Baltic Regional Division (RD) confirmed a binding settlement agreement between them on July 18, 2025 (PDF). The decision brings to a close litigation over EP2628464, with the court formally endorsing the terms as enforceable like any final judgment.

The court confirmed the confidential settlement under Article 79 of the UPC Agreement (UPCA) and Rule 365 of the Rules of procedure (RoP), with Meril agreeing to halt sales and imports of the disputed heart valve in 12 UPC member states. Without admitting validity or infringement, Edwards accepted the terms. All proceedings were closed, and the court granted partial fee reimbursements: €12.6K to Edwards and €4K to Meril.

4. Munich LD: reference date for filing deadline can shift with access to evidence (Nanoval v. ALD Vacuum Technologies)

The Munich Local Division (LD) clarified the scope of judicial discretion under Rule 198.1 of the Rules of Procedure (RoP) concerning deadlines for filing a main action following an evidence preservation order (PDF). The court emphasized that while the length of the deadline—31 calendar days or 20 working days, whichever is longer—is fixed and not subject to judicial discretion under Rule 9.4, the starting pointof that period is discretionary and may be revised, even after the initial order, especially in cases where the expert report is delivered late.

Rejecting ALD’s attempt to invalidate the original evidence preservation order, the court held that Nanoval had filed its main infringement action within the legally valid period. The court underscored that failing to reset the deadline would have unfairly forced Nanoval to sue without seeing the expert report, a clearly unreasonable outcome. As a result, the court dismissed ALD’s application to revoke the evidence preservation order and ordered ALD to bear the costs of the proceedings.

5. CD Milan: revocation claim failed by default; injunction and interim damages award; some costs deemed excessive (EOFlow v. Insulet)

(link to detailed article)

The Milan seat of the Central Division (CD) concluded the main proceedings between Insulet and EOflow over insulin pump technology EP2785408 (PDF). The court dismissed EOFlow’s revocation claim by default after it failed to comply with an earlier order to provide financial collateral. While this technicality disposed of the revocation side of the case, the judges nevertheless conducted a comprehensive infringement analysis, ultimately finding EOFlow liable for infringing Insulet’s patent. The court ordered a sales ban, removal of infringing products from distribution channels, accounting of past sales, and issued a €230K interim damages award in favor of Insulet.

6. New cases: major companies increasingly choose to file UPC lawsuits

6.1 SAP initiates patent lawsuit against Celonis

(link to detailed article)

The German software giant SAP has filed a patent infringement action against Celonis, a German software startup. This is the first-ever offensive European patent case in SAP’s 53-year history. The case centers on EP3913496, a patent related to cloud-based data access.

6.2 HMD faces new patent infringement action from Fraunhofer

(link to detailed article)

The Fraunhofer Institute has filed two new patent infringement actions against HMD in the Hamburg Local Division (LD). The case involves two standard-essential patents (SEPs), EP2380167 and EP2609590, related to audio codecs. This latest action adds to a growing list of legal challenges HMD faces from SEP holders across multiple jurisdictions.

6.3 Other infringement (main) proceedings

• GlaxoSmithKline Biologicals SA v. Moderna Biotech (The Hague LD) (link to LinkedIn post)
• Bostik, Inc. v. Henkel Technologies (Paris LD) (link to LinkedIn post)
• Avago Technologies International Sales Pte. v. Renault Retail Group (Dusseldorf LD)

7. Recent and upcoming hearings

7.1 Recent hearings

• Monday, July 21, 2025:
  • Zentiva Portugal, Lda. v. Boehringer Ingelheim International GmbH (CoA)
  • Boehringer Ingelheim International GmbH v. Zentiva Portugal, Lda. (CoA)
• Tuesday, July 22, 2025:
  •  TOTAL SEMICONDUCTOR, LLC v. Texas Instruments Incorporation and others (Mannheim LD)
• Thurday, July 24, 2025:
  • Dyson Technology Limited vs. DREAME INTERNATIONAL (Hamburg LD)

7.2 Upcoming hearings

• Thursday, July 31, 2025:
  • DDP Specialty Electronic Materials US, LLC. v. Greenchemicals S.R.L. (Dusseldorf LD)
• Friday, August 01, 2025:
  • Headwater Research LLC v. Samsung Electronics GmbH (Munich LD)
• Wednesday, August 06, 2025:
  • Cilag GmbH International and Ethicon LLC v. RiVOLUTiON GmbH (Munich LD)
• Tuesday, August 12, 2025:
  • Amgen, Inc. v. Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe S.A. and Sanofi Winthrop Industrie S.A (CoA)
  • Amgen, Inc. v. Regeneron Pharmaceuticals Inc. (CoA)
• Thursday, August 14, 2025:
  • Washtower IP B.V. v. INDUSTRIEBETEILIGUNGS- UND BERATUNGS GMBH, BEGA CONSULT INTERNATIONALE HANDELSAGENTUR GMBH & CO. KG, BEGA BBK SP. Z O.O. SP. K.UL., NEG NOVEX WHOLESALE COMPANY FOR ELECTRICAL AND BUILDING SERVICES ENGINEERING GMBH (The Hague LD)
• Friday, August 22, 2025:
  • HL Display AB v. Black Sheep Retail Products B.V.Black Sheep Retail Products B.V. (The Hague LD)

8. Around the court: Roku’s U.S. attack on UPC proceedings dismissed

(link to detailed article)

9. Future availability of UPC news

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