Given the close connection with a patent pool, this article is not paywalled.
Context:
- The Unified Patent Court’s (UPC) first-ever standard-essential patent (SEP) injunction did not involve a FRAND (fair, reasonable and non-discriminatory licensing) defense (September 13, 2025 ip fray article). Philips prevailed over Belkin in the Munich Local Division (LD) on a Qi-related (wireless charging) patent. Prior to the appellate hearing, the UPC’s Court of Appeal (CoA) had to adjudicate a couple of enforcement-related disputes. It stayed enforcement of the injunction with respect to the Belkin corporate officers among the defendants (Section 2 of our November 2, 2024 UPC Roundup), effectively saying that they are not, without more, liable for patent infringement. It also largely upheld contempt fines imposed on Belkin (Section 1.1 of our June 8, 2025 UPC Roundup).
- Philips is a contributor to Via LA’s Qi pool, a successful collective-licensing program that has, for exampled, licensed about half of the global automotive supplier market (September 4, 2025 ip fray article).
What’s new: The CoA has affirmed (PDF) the Munich LD ruling apart from corporate officer liability, which was a given as the order to stay enforcement with respect to those persons was based on a finding of manifest error, and recall and destruction, which the Munich LD denied but Philips has now obtained on appeal.
Direct impact: Philips has achieved the best realistically achievable result, losing only what was clear after the partial enforcement stay but gaining ground with respect to remedies.. Belkin can still seek to benefit from the fact that certain entities were, even if maybe only for lack of a timely appeal, cleared of infringement in the German market by a national court, but the injunction clearly covers Belgium, France, Finland, Italy, the Netherlands, Austria and Sweden.
Wider ramifications:
- This is not the only case in which Philips is asserting EP2867997 on “wireless inductive power transfer”: for example, in June Philips sued Anker over the same patent in the same UPC division.
- Other implementers of the Qi standard with European exposure will now be more inclined than before to take a license to Via LA’s Qi pool. A winning UPC patent is a key asset, as is the fact that a FRAND defense failed in a German national court and was not even raised in the UPC in the first place.
- The appellate ruling provides some useful clarifications of transcendental relevance.
Clarification of “offering … a product” (Art. 25(a) UPCA)
The first two headnotes provide guidance on what constitutes “offering … a product” under Art. 25(a) of the UPC Agreement (UPCA). It is not meant in the sense of contract law, where an offer and its acceptance would result in an agreement, but in a commercial sense. Promoting the product in a way that generates sales leads is enough (“invitatio ad offerendum”). Therefore, it is not necessary that a price be stated, nor does the CoA’s second panel require the preparedness or ability to fulfill orders.
Executive liability
The CoA phrases it differently, but the shortest version would be that a managing director, without more, is not liable for infringement, and “more” means that there must be knowledge and either intent or a failure to put an end to it.
Like in some other jurisdictions, a legal opinion of non-infringement or invalidity will be sufficient to keep clear of willful infringement until a first-instance or appellate ruling to the contrary.
Recall and destruction will be ordered unless disproportionality is shown
Not the prevailing patentee who seeks a recall and the destruction of infringing goods but the losing defendant must prevail on (dis)proportionality.
If no deadline is set in the prayers for relief and set by the court. Otherwise it is up to the enforcing plaintiff to set such a deadline.
Validity
Belkin’s challenges to the validity of the patent-in-suit failed for different reasons.
Belkin’s invalidity contentions involved in part certain references to the prosecution history. The CoA decision does not comment specifically on the concept of prosecution history estoppel because the related arguments were deemed unavailing anyway.
No particular position had to be taken on the legal standard for added matter as the claim elements Belkin attacked were clearly disclosed in the CoA’s opinion.
In paras. 104 and 138 of the decision, the CoA is being somewhat permissive with respect to what other courts would have criticized as shifting sands: Belkin changed its arguments based on one prior art reference between the first-instance and appellate proceedings. The CoA admitted the new arguments, finding in one context that Belkin’s new argument merely reflected a “different understanding” of the relevant passages of a prior art document and accepting in another context that Belkin switched from a non-novelty to a lack-of-inventive-step argument with respect to a claim argument in that same prior art reference. But that generosity didn’t make a difference in the end. The patent was upheld.
The CoA did not overrule the Munich LD with respect to another obviousness argument and merely found that the outcome would have been the same even if the court below had not declined to admit that one.
Res iudicata effect of Dusseldorf Regional Court decision
Belkin again tried to leverage the outcome in German national court, which is mentioned further above, so as to be cleared of infringement even with respect to other countries than Germany.
In the Dusseldorf Regional Court, the defendants were Belkin GmbH (German subsidiary) and Belkin Limited. In the UPC, Philips also sued Belkin International Inc., and the CoA does not deem the German outcome to be binding with respect to a Belkin entity that was not previously sued. In this regard, the CoA applied German law.
As to the substantive aspects of res iudicata, the CoA says it is only the operative part that matters, and not the reasons. Furthermore, in a case like this which involves multiple national parts of a Europan patent, a national court’s decision with respect to one national part could not possibly adjudicate the other national parts.
Interpretation of “may” in Art. 64(1) UPCA enables Philips to obtain additional remedies on appeal
The CoA’s second panel holds that the word “may” (or “peut” in French and “kann” in German) in Art. 64(1) UPCA (“[T]he Court may order, at the request of the applicant, that appropriate measures be taken with regard to products found to be infringing…”) does not make the grant of remedies discretionary. The CoA points to the EU Intellectual Property Rights Enforcement Directive and the high degree of protection it mandates. There is a (dis)proportionality defense, but the denial of remedies on such grounds is an exception.
Therefore, the CoA holds that Philips was under no obligation to plead the proportionality of the remedies it was seeking. The pleading requirement and the burden of proof were on Belkin, and the CoA does not find that Belkin made a valid point other than arguing that recall and destruction are generally burdensome on a defendant given the impact of those measures on its distribution partnerships.
Accounting in electronic form must be explicitly requested in prayers for relief
The CoA stood by its prior holding in the same case that Philips would have had to specifically request the provision of infringement-related data in an electronic format (Section 1.1 of our June 8, 2025 UPC Roundup).
Court and counsel
Second panel: Presiding Judge Rian Kalden, Judge Ingeborg Simonsson, Judge Patricia Rombach, Technically Qualified Judge Alain Dumont and Technically Qualified Judge Uwe Schwengelbeck.
Counsel for Philips:
- Bardehle Pagenberg’s Dr. Tilman Mueller (not to be confused with Professor Dr. Tilman Mueller-Stoy; the former is based in Hamburg and also frequently active on behalf of licensors of Via LA and Access Advance while the latter is from Munich), Dr. Tobias Wuttke, Emely Rath, and Anita Peter;
- Eisenfuehr Speiser’s Dr. Désirée Heintz and Dr. Christoph Fehn; and
- Philips in-house counsel Arie Tol and Edwin Montie.
Belkin was represented by DLA Piper’s Dr. Philipp Cepl, Dr. Constanze Krenz, Dr. Benedikt Hammerschmid and Dr. Carl Prior.
The CoA order mentions only Dr. Mueller and Dr. Cepl by name, but we have listed the first-instance legal teams above.