UPC Roundup (1 week): CoA clarifies two key prerequisites to suspension of enforcement; deposit may be used to offset costs; new cases

This is a summary of developments in and around the Unified Patent Court (UPC) in the week since our August 10, 2025 UPC Roundup.

1. CoA

1.1 CoA overturns denial of PI based on different take on imminent infringement (Boehringer Ingelheim v. Zentiva)

(link to detailed article)

The CoA has overturned a Lisbon LD decision that denied Boehringer an injunction across 17 contracting member states over its second medical use patent (PDF), EP1830843. The court entered an injunction and drew clear lines for when generic activity may cross into imminent infringement; merely applying for, or even obtaining, marketing authorization is not enough, but once national procedures on health technology assessment, pricing, and reimbursement are complete, preparations may be deemed sufficient to make infringement imminent. The ruling further emphasizes that national law can serve as a source of law under Article 24 of the UPCA, but only if the parties provide the relevant facts and evidence. Zentiva was ordered to bear the full interim costs, amounting to nearly €199K.

1.2 Urgency alone cannot justify suspensive effect before formal appeal (Sun Patent Trust v. Vivo)

The Court of Appeal (CoA) has rejected Sun Patent Trust’s application for suspensive effect in its disputes with Vivo (PDF), ruling them inadmissible because no appeal had yet been lodged. Sun had sought to suspend Paris Local Division (LD) orders from July 31, 2025 (PDF), which limited access to sensitive material, arguing that extreme urgency justified filing ahead of its appeal.

The court clarified that suspensive effect cannot be granted before a statement of appeal is filed and the appeal fee paid. While grounds of appeal are not required at that stage, there must be a properly pending appeal to establish a legal basis for interim relief. The court further explained that even urgent requests under Rule 223.4 presuppose an existing appeal.

1.3 CoA sets high bar for staying enforcement before written reasons are issued (RiVOLUTiON v. Cilag)

(link to LinkedIn post)

The CoA has rejected Rivolution’s request to suspend enforcement of a preliminary injunction obtained by Cilag and Ethicon (PDF). The injunction, ordered by the Munich LD on August 6, restricts Rivolution’s sale or use of a surgical device in Germany. The court emphasized that when the reasoning of a first-instance decision has not yet been issued, a manifest error can only be recognized if it is evident from the operative part of the order itself. In this case, no such error could be established without the written reasons.

It also noted that a non-compensable harm is not a necessary condition for interim measures and that cost rulings may vary based on equity considerations. On Rivolution’s request to extend its appeal briefing period from 15 days to four weeks, the court reminded the company that the 15-day deadline only begins once the reasoned decision is served.

1.4 CoA rules Barco cannot expand scope of case on appeal (Barco v. Yealink Network Technology)

The CoA has issued an order denying Barco’s attempt to amend its claim on appeal and rejected its request for further written pleadings (PDF). The court provided two key clarifications, first, the introduction of a subsidiary claim (litigation claim) will not be permitted if it effectively broadens the scope of the case compared to what was originally alleged, unless the claimant can show it could not have raised the point earlier with reasonable diligence. Second, on appeal, parties are allowed to refer to statements made during the first-instance oral hearing, provided they do not misrepresent the facts. If verification is required, the court has access to the recordings. Ultimately, the CoA dismissed all of Barco’s procedural applications, leaving the appeal to proceed on the basis of the original claims and submissions.

1.5 CoA and Hamburg LD allow agreed-upon use of deposit for reimbursement of litigation costs (Ballinno B.V. v. UEFA, Kinexon)

(link to LinkedIn post)

The Unified Patent Court and the Hamburg LG have issued two consistent rulings in Ballinno’s long-running dispute with Kinexon and UEFA over EP1944067. Both decisions allow Ballinno’s deposit to be paid out to the defendants in order to reimburse their legal fees. The parties had agreed on that course of action. The decisions do not provide an indication as to what would happen if one party opposed.

2. Dusseldorf LD

2.1 Headwater and Samsung agree to switch language of proceedings to English

(link to LinkedIn post)

The Dusseldorf LD has ordered that proceedings in Headwater Research LLC v. Samsung Electronics be conducted in English (PDF (in German)), the language of the patent-in-suit. The decision came in response to a joint request by both parties under Rule 321 RoP and Article 49(3) of the UPCA.

Headwater had previously asserted the same patent against Lenovo subsidiary Motorola Mobility in a German-language complaint.

2.2 Market power for standard alleged based on its use by service providers like Netflix (Dolby v. Beko & Arçelik)

(link to LinkedIn post)

The Dusseldorf LD has granted Dolby permission to file an additional brief in its infringement case against Beko and Arçelik (PDF in German). The court also noted that permitting the filing was necessary for reasons of fairness, efficiency, and the right to be heard. The defendants had raised a FRAND (fair, reasonable, and non-discriminatory) licensing defense, and their rejoinder introduced new arguments, including a “service provider” market dominance theory. Dolby successfully argued that fairness required both parties to have two opportunities to address FRAND issues.

We found out that the new argument related to the question of whether holding patents essential to the Opus Codec standard confers market power, with the defendants arguing that the widespread use of Opus by service providers like Netflix weighs in favor of a finding of a dominant market position.

3. The Hague LD clarifies cost allocation when infringement claim and revocation counterclaim differ in scope (Winnow Solutions v. Orbisk)

(link to detailed article)

The Hague LD has ruled in favor of Orbisk in its food waste technology dispute with Winnow (PDF), finding that Winnow’s patent EP3198245 is invalid in its granted form and only survives in a narrower form that was never asserted in the case. The decision also clarified cost allocation in infringement actions involving revocation counterclaims: while the losing plaintiff must bear most costs, defendants cannot recover fees for challenging auxiliary requests unrelated to the asserted infringement. Orbisk was therefore awarded most of its legal expenses, with Winnow ordered to pay for 100% of the infringement proceedings and 85% of the costs of the proceedings related to the revocation counterclaim. The 15% reduction was based on Orbisk having unsuccessfully attacked an auxiliary request outside the scope of the infringement action.

4. Munich LD orders €4M security for costs, limits collateral to bank deposits or EU bank guarantees (Syntorr LP v. Arthrex)

(link to detailed article)

The Munich LD has ordered what may be a record security for costs (PDF), requiring Syntorr to post €4 million in two cases (€2 million per case) in its disputes with Arthrex (PDF), rejecting the company’s proposal to use an EU-based insurance policy as collateral. The disputes center on EP2670898 and EP3835470. The court ruled that under Rule 158 of the RoP, only a bank guarantee from an EU-authorized bank or a direct deposit into the UPC’s account can serve as valid security. The court rejected Arthrex’s push for €3 million but still hit the statutory ceiling for disputes valued above €50 million.

5. New cases

5.1 Infringement actions

• IQIP Holding B.V. v. TMS Technical & Maritime Supplies B.V., EP2148123 (The Hague LD)
• SK nexilis Co. v. Volta Energy Solutions, EP3316363 (Mannheim LD)
• Bode – Die Tür GmbH v. Kangni Technology Service S.A.R.L., Nanjing Kangni Mechanical & Electrical, EP1914372 (Dusseldorf LD)
• BAG Diagnostics GmbH v. Imusyn GmbH & Co. KG, EP3548898 (Dusseldorf LD)
• Electronics and Telecommunications Research Institute (ETRI) v. INFINIX MOBILITY LIMITED, Shenzhen Transsion Holdings Co, Ltd, EP3258692 (Dusseldorf LD; this is related to a wider dispute between HEVC Advance licensors and Transsion: August 4, 2025 ip fray article)

5.2 Preliminary injunction proceedings

• ONWARD Medical N.V. v. Niche Biomedical, EP3421081 (Munich LD)

5.3 Revocation action

• Raimund Beck Nageltechnik v. BAUSSMANN, EP4283140 (Munich LD)

6. Recent and upcoming hearings

6.1 Recent hearings

• 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)

6.2 Upcoming hearings