UPC Unfiltered, by Willem Hoyng – UPC decisions week 34, 2025

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14 August 2025
Local Division Hamburg, Dyson v Dreame International

UPC_CFI_387/2025

Cross-border jurisdiction

Facts

This was a preliminary injunction case. The defendants were:

• Defendant 1: Dreame HongKong, operator of the relevant country-specific websites, including Spain.
• Defendant 2: Teqphone GmbH, distributor for Defendant 1 in Germany.
• Defendant 3: Eurep GmbH, the European Union (“EU”) representative of Defendant 1 for a non-EU manufacturer.
• Defendant 4: Dreame Sweden, which operates a country-specific website and has a physical store.

The claimant requested a preliminary injunction for all UPC countries and Spain against all defendants.

The Court

1. The Court held that it has international jurisdiction against Defendants 2 and 3, who are established in Germany, pursuant to Article 4(1) of the Brussels Ibis Regulation (“BR”) . This jurisdiction extends to the territories of the contracting member states.
2. Under Article 7(2) in conjunction with Article 71(b)(1) BR, the Court has international jurisdiction against a defendant (whether EU or non-EU) that infringes in at least one member state of the UPC. This provides jurisdiction against Defendant 1.
3. Jurisdiction against Defendant 4 follows from Article 8(1) BR.
4. With respect to Defendants 1 and 3, jurisdiction also exists for Spain, as both allegedly infringe in Spain. This is consistent with the decision of the European Court of Justice (“CJEU”) in BSH v Electrolux.
5. With respect to Defendant 2, there is not even a plausible allegation of infringement in Spain, so there is no jurisdiction for Spain. The Court referred to the CJEU in Primus v Roche.
6. The Court granted the injunction for the whole Unified Patent Court (“UPC”) territory against Defendants 1, 2 and 4, and against Defendant 3 insofar as it provides services contributing to infringement. With respect to Defendants 1 and 3, the injunction also covers Spain.

Comment

1. The result of the decision appears correct.
2. It raises the question whether the EU representative (which every non-EU manufacturer must appoint) can be considered an (indirect) infringer and whether the UPC is competent to deal with indirect infringement outside Article 26 UPC Agreement (“UPCA”) (unlawful acts).
3. As to the Court’s reasoning, it seems clear that for the purposes of applying the Brussels Ibis Regulation, the Court considers each division of the Court of First Instance as a separate court, since it refers to “international jurisdiction” when addressing the jurisdiction for the other member states of the UPC and cites Article 8(1) BR with respect to the Swedish defendant. If the Court of First Instance were considered a single court, it would naturally have jurisdiction over the whole UPC (just as a national court has jurisdiction over its entire country).
   I agree that the latter may lead to the somewhat odd consequence that, also for the Swedish defendant, the Court is considered the Article 4(1) BR court (i.e. its “home court”), even when the case is handled by the Hamburg Local Division. Internal “national” (that is, UPC) competence rules then determine that a Swedish defendant should be sued in the Nordic-Baltic Regional Division, or as a co-defendant under Article 33(1)(b) UPCA in another division. Nevertheless, the Court, including the Hamburg Division, would have international jurisdiction under Article 4(1) BR, provided it is competent for the Swedish defendant on the basis of the internal UPC rules. This would mean the Court, also with respect to the Swedish defendant, has jurisdiction for Spain on the basis of Art. 4(1) BR.
   Apparently, the Hamburg Division finds this outcome unsatisfactory, as Article 4(1) BR is based on the principle that the natural forum for a defendant is its place of establishment, close to the Court, familiar with customs, language, and judges. For a Swedish defendant, this logic does not fully apply as regards language (The Regional Nordic-Baltic Division deals in English but almost all Swedes speak English), but it does apply in terms of hearings in Stockholm and having a Swedish judge. It is indeed unusual that all divisions must be treated as home courts. The Hamburg Division seems to read Article 71a BR as meaning that the UPC is to be considered a court of each participating member state when exercising jurisdiction under the Brussels Regulation.
4. If the Hamburg Division sees itself as a separate court limited to German territory, then arguably Article 7(2) BR should give it jurisdiction only for Germany. This, however, is essentially what the Division has done. It uses the term “international jurisdiction” to mean that any defendant (including non-EU defendants) can be sued in Germany via Article 71(b)(2) BR. The fact that the Local Division can decide also for other UPC countries derives from Article 34 UPCA and apparently, not from Article 7(2) BR. As the Local Division itself noted, Article 34 UPCA has nothing to do with international jurisdiction. In my opinion, one must first establish jurisdiction for the whole UPC before applying Article 34 UPCA, which the Hamburg Division denies for Article 7(2) BR. This interpretation by the Hamburg Division only makes sense if the Hamburg Division is treated as a German national court. The advantage of this reading of Article 71a BR is that Article 4(1) BR remains applied properly: the defendant is sued in its home court, while a single act of infringement in one country does not automatically lead to an injunction for the whole UPC unless Article 4(1) or Article 8(1) BR apply (similar to the Community Trademark and Design regimes).
5. Ultimately, it will be for the Court of Justice of the European Union to decide whether the Hamburg Division’s interpretation – i.e. that each Local Division is a separate national court for the purposes of the Brussels Regulation – is correct. Can the “home” court of a Bulgarian company also be the Local Division in The Hague? Hamburg thinks not. What will the Court of Justice decide?
6. The judgment also fails to set a (reasonable) penalty for each attachment by which the order is violated. This leaves unclear what will happen in case of non-compliance, creating unnecessary disputes if the claimant later seeks enforcement of penalties. Compare this with the approach of the Local Division of The Hague, which provides more certainty.

18 August 2025
Local Division The Hague, Genevant v Moderna

UPC_CFI_191/2025; UPC_CFI_192/2025

Preliminary injunction

Facts

Genevant filed two separate infringement proceedings on 3 March 2025 against fifteen Moderna defendants. In both cases, the various Moderna companies (based in the United States (“US”) (twice), Belgium, Denmark, Sweden, Switzerland, Portugal, Norway, Poland, Netherlands, United Kingdom (“UK”), Italy, Spain, France, Germany) raised several objections regarding the jurisdiction of the Division.

The Judge-Rapporteur

The Judge-Rapporteur issued the following order:

1. the decision concerning long-arm jurisdiction (i.e. the possibility to deal with infringements outside the UPC with respect to Moderna US, Switzerland, Spain, Norway, UK and Poland) will be dealt with in the main proceedings;
2. all other preliminary objections are dismissed.

Moderna filed a request for review under R. 333 RoP.

The Court

1. The Court agreed with the claimant that a R. 333 RoP application should be reasoned and “shall set out the grounds for review and the evidence, if any, in support of the grounds”.
2. On this basis the Court concluded that the request for review does not pertain to:
   a. the validity of the opt-out in case 191/2025;
   b. the referral of the decision on long-arm jurisdiction to the main action;
   c. international jurisdiction other than Moderna Spain and Moderna Norway;
   d. the internal competence of the Local Division The Hague of the Unified Patent Court.
3. For these issues, the preliminary objection order is confirmed.
4. The preliminary objection order accepted jurisdiction with respect to Moderna Spain on the basis of Articles 7(2) and 8(1) Brussels Regulation (“BR”) and with respect to Moderna Norway on the basis of the same provisions of the Lugano Convention (“LC”).
5. The Court confirmed the preliminary objection order. The UPC is equivalent to a court of a Contracting Member State. Article 7(2) BR applies if the harmful event may occur in that Contracting Member State. Article 8(1) BR applies if a person domiciled in the European Union (“EU”) is sued together with a defendant in the court where that defendant is domiciled and there is a risk of irreconcilable judgments. These provisions therefore apply directly to Moderna Spain. As the Lugano Convention should be interpreted in the same way, these provisions also apply to Moderna Norway.
6. With respect to the argument that Article 7(2) BR was not applicable because Moderna Spain and Moderna Norway did not threaten to infringe in the UPC, the Court did not make a determination but moved immediately to Article 8(1) BR (Article 6(1) LC). It held that it is sufficient when Moderna Spain and Moderna Norway infringe in their own countries together with Moderna Netherlands, or alternatively that these entities threaten to infringe the same Unitary Patent or the national designation of a European patent with the same product.
7. The claimant sufficiently demonstrated that Moderna Netherlands’ activities also concern Spain and Norway. It is not a requirement of Article 8(1) BR that both companies infringe a patent in the UPC.
8. Moderna did not contest that Moderna Netherlands has a central role in the sales activities and sells to at least seventeen European countries.
9. Moderna Spain holds the marketing authorisation for the product, which it makes available to the other Moderna companies. Moderna argued that this did not constitute patent infringement but rather an unlawful act outside the Court’s competence. The Court disagreed.
10. Moderna Spain also manufactures the product.

Comment

1. At least on the basis of Article 8(1) BR and Article 6(1) LC there can be no doubt that the Local Division The Hague has jurisdiction.
2. It is sufficient that both Moderna Netherlands and the co-defendants (Moderna Spain and Moderna Norway) infringe in the same country, as in that situation both the Local Division The Hague and the home court (in Spain and Norway) would be competent to hear the same case, creating a risk of conflicting judgments. The argument that the infringement must take place within the UPC had no chance of success, as the key factor is the risk of conflicting judgments. This was already established by the Court of Justice of the EU (“CJEU”) in Solvay v Honeywell, where both the Dutch anchor defendant and the Belgian co-defendant infringed in (for example) Finland.
3. This was therefore straightforward. It is surprising that the R. 333 RoP request for review did not include Poland, which was in the same position as Spain. The fact that manufacturing also takes place in Spain is immaterial to the jurisdictional analysis.
4. A more interesting question is what happens if the Spanish defendant, the Article 8(1) BR co-defendant, raises invalidity arguments, as this has not been decided by the CJEU in BSH v Electrolux. In my view, and also in light of CJEU Solvay v Honeywell, this should make no difference.
5. A further intriguing question is whether the UPC would go so far as to accept jurisdiction over a UK company (or another non-UPC non-EU company acting in its own country) for infringements in its own country, especially if that company is not a subsidiary of a UPC-based company or a non-UK company over which the UPC has jurisdiction under Article 8(1) BR.

18 August 2025
Local Division Munich, Innovative Sonic Corporation v Oppo

UPC_CFI_460/2024

Change of language

Facts

The Statement of Claim was filed in German on 23 May 2025. On 25 July 2025 all Defendants requested a change of language. The President of the Court of First Instance invited the Claimant and the panel to submit their views. The Claimant requested that the request be dismissed or, in the alternative, that the parties be permitted to conduct the oral proceedings in German.

President of the Court

The President of the Court of First Instance granted the request for a change of language and dismissed the request to hold the oral hearing in German, noting that this could be considered at a later stage by the Judge-Rapporteur.

Comment

1. Given the facts of the case (claimant not German, defendants almost all non-German, prior art in English), this decision was predictable from the outset.
2. It again raises the question why the German representative chose to file before the Munich Division, which is the busiest UPC division. It has already indicated to parties not to request a switch to English because it considers cases more time-consuming if handled in English.
3. It would have been far simpler to start the case in English before a less busy division, such as The Hague, where the local judges speak English almost at the level of their native language. A German representative can of course appear before that division, and if not comfortable in English could have asked Dutch colleagues from the same firm to represent the client. This would have saved the client considerable translation costs.
4. When will local representatives begin to understand that the UPC is an international court, that they can act in all divisions, and that the common language of the UPC is English?

19 August 2025
Local Division Munich, Solvay v New Material

UPC_CFI_319/2025

Separation of proceedings

Facts

The Claimant sued four Chinese companies. Two companies were served on 3 June 2025. The two other companies have not yet been served.

The Judge-Rapporteur

Citing the fact that the Statement of Defence for the first two companies is due on 3 September 2025 and that the time period for the other two companies has not yet begun to run, the Court decided of its own motion to split the proceedings.

Comment

This is a sensible decision, enabling the Court to render a decision within fourteen months with respect to the two companies that have been duly served.

19 August 2025
Local Division The Hague, Adeia v Walt Disney

UPC_CFI_199/2025

Extension of term

Facts

Disney filed certain exhibits belonging to its reply in the counterclaim late. Adeia requested an extension of the term for its rejoinder in the counterclaim for revocation.

The Judge-Rapporteur

The Judge-Rapporteur granted the request: the term for the rejoinder (and the Defendant’s defence in the application to amend) begins to run as of the date of filing of the exhibits.

Comment

This is consistent with the decision of the Court of Appeal that the time period for a response begins to run only after the Defendant has received all exhibits referred to in the Statement of Claim.

19 August 2025
Local Division Mannheim, Wilus v ASUS

UPC_CFI_452/2025

Extension of time

Facts

The defendants argued that the time period for their response should only begin once the confidentiality proceedings pursuant to R. 262A RoP had been completed.

The Judge-Rapporteur

The Judge-Rapporteur reiterated the “Mannheim principles”.

1. Time periods begin to run in accordance with the Rules of Procedure regardless of when the party concerned obtains access to the unredacted version. In principle, the Court will grant an extension, upon reasoned request, for the period during which the party does not have full access to the unredacted version.
2. In this case R. 262A RoP was not at issue. An exhibit, merely confirming what had already been stated in the Statement of Claim, was filed later. The Ddefendant, however, submitted its request very late, and the exhibit was in fact unimportant for its defence. The Judge-Rapporteur therefore granted only a one-week extension.

Comment

1. This was clearly not a good faith late request by the representative. The Judge-Rapporteur was still accommodating in granting a one-week extension.
2. The two main reasons for requesting extensions are late-filed exhibits and R. 262A RoP confidentiality requests. Each of these must be dealt with by the Judge-Rapporteur (and, of course, drafting such requests costs the client money). It would therefore be preferable to introduce a rule specifically addressing these frequent situations.
   I have proposed that for a R. 262A RoP request the period for a response should be extended automatically by half of the period between the defendant’s representatives receiving the unredacted version and receiving the Court’s decision on the R. 262A RoP request (which states which persons at the Defendant may have access).
   With respect to late-filed exhibits, the solution would be simple: they should not be accepted. The Court of Appeal has in practice accommodated a German national habit of filing exhibits late. While this may have been understandable at the beginning of the UPC, it is contrary to the frontloaded principle. A new rule could clarify that exhibits referred to in pleadings must be filed at the same time. Alternatively, exhibits could be filed within one week after the deadline for pleadings, which would automatically extend the response deadline by one week.
   Such reforms could be considered when the Rules are revised. R. 9 RoP should of course be maintained so that extensions remain possible in exceptional circumstances.

19 August 2025
Local Division Brussels, Ortho Apnea v X

UPC_CFI_131/2025

Correction of judgment

Facts

1. On 25 July 2025 the Court issued a costs decision.
2. On 1 August 2025 the Claimant requested a rectification of that decision.
3. The Claimant argued that the costs of the expert, which were accepted by the Court (€2,200), had not been included in the total awarded costs (€43,865.64).
4. The Claimant also requested clarity regarding the start of the period for filing a possible appeal.

The Court

1. The Court agreed with the Claimant and added the €2,200 to the awarded costs.
2. It further clarified that the period for appeal is not affected either by a request for correction of the judgment or by the correction itself.

Comment

1. The decision appears correct. The mistake was so obvious that one wonders why the Defendant did not concede the point.
2. I also note that the decision itself contains a (minor) error: it refers under point 1 to a decision “pursuant to Rule 131” of the Rules of Procedure, whereas it should have referred to Rule 151 (or better, Rule 150).
3. The Court, recognising that not all UPC users are proficient in Dutch, provides a service by adding a lengthy headnote in both English and German. The addition of German is significant: it signals to German representatives who do not wish to (or feel unable to) proceed in English that they need not go to the very busy German divisions, but may instead file their case in German before the Brussels Local Division.

20 August 2025
Local Division Mannheim, Centripetal v Keysight

UPC_CFI_414/2024

Further pleadings

Facts

The Claimant requested, after the rejoinder, to submit a further pleading because it had discovered a new functionality of the accused embodiment. In its rejoinder, the Claimant had already advanced three alternative infringement theories in addition to the one set out in the Statement of Claim.

Review by the panel of the Judge-Rapporteur’s decision to refuse
The request for review was dismissed.

Comment

1. As I have said before, in my opinion the possibility to request review of an order of the Judge-Rapporteur should be abolished when the Rules are revised.
2. In this case it was clear that a fifth infringement theory, presented after the exchange of pleadings and based on information already known at the time of the Statement of Claim, could not be permitted.
3. The Claimant, represented by a German lawyer, apparently did not appreciate the difference between the frontloaded procedure of the UPC and German national proceedings.
4. This is a lesson for all representatives: the Statement of Claim is of critical importance. Before launching proceedings, it is essential to prepare thoroughly, developing every possible infringement argument and anticipating non-infringement arguments as fully as possible.

20 August 2025
Court of Appeal, Expert v Seoul