Interested in more of this? Stay tuned and subscribe here for weekly updates.
On the go, multi-tasking or just prefer to listen? “Willem Hoyng’s UPC Unfiltered AI Podcast” – your weekly, AI-generated podcast discussing Willem Hoyng’s commentary on UPC case law of last week, offers a convenient alternative. Listen on Spotify or Apple Podcasts.
20 October 2025 (late published)
Local Division Düsseldorf, Canon v Katun (late published)
UPC_CFI_351/2024; UPC_CFI_595/2024
Further written pleadings
Facts
- The claimant asks for permission (R. 36 RoP) for a further pleading.
- The claimant wants to comment on the (further) favorable preliminary opinion of the Opposition Division (“OD”) and has made further test purchases.
- The defendant does not object against the filing of the preliminary opinion of the OD but asks the Court to disregard the remarks of the claimant.
- With respect to the additional test purchases the defendant states that if they are the same as in the Statement of Claim they are redundant. If they are different, the claimant should file an amendment of claim (R. 263 RoP).
The Court
- The Court accepts the preliminary opinion of the OD and the summary given by the claimant and refuses the other remarks.
- The Court rejects the further requests.
Comment
- This is an old lawyer’s trick: already stating everything you want to put in the additional pleading in your request for a further pleading, thinking that if it is refused, the Court has the information anyway.
- The judge-rapporteur (“JR”) is (too) nice. Why accept the summary of the preliminary opinion?
- What should have happened: the claimant should have asked the defendant for their agreement to file the preliminary opinion. The defendant would have said yes so that the preliminary opinion can be filed. If the claimant wants to comment on it, they should have asked for further written submissions (R. 36 RoP) without any comments.
- If I was a judge, this manner of “requesting” (with a request that is in fact a submission) would be automatically refused. The request should contain certain (convincing) reasons why you want to file a further written submission but not what you want to submit.
24 October 2025 (late published)
Local Division Paris, Raccords v First Plast
File-wrapper estoppel
Facts
- On 31 October 2024 Raccords started infringement proceedings against First Plast.
- First Plast responded without a counterclaim for revocation.
- The written procedure was closed on 11 July 2025.
- The patent of Raccords was initially opted out, but the opt-out was withdrawn.
- The injunction is only asked for France and Italy, for which countries the patent is in force.
The Court
- During prosecution of the patent, the patentee limited its patent in response to a novelty objection of the examiner based on a prior art patent.
- According to the Court, in such a situation, one cannot give a literal reading to the patent that ignores this limitation.
- The parties defended different national tests for the doctrine of equivalence: the French method (means having the same function achieving the same result) v. the Dutch four steps test. The Court states that the UPC has not yet formulated its own test, but will apply a test that in its opinion forms a harmonized approach.
- The Court concludes that the function of the modified means is not essentially the same.
- Conclusion: the Court dismissed the claim.
Comment
- The decision as such is straightforward and Raccords should not have commenced the action.
- The Court correctly applied “file-wrapper estoppel”. If an applicant limits their claim in order to avoid the claim being not novel, common sense dictates that they cannot ignore that limitation in their claim interpretation.
- Common sense why? Because in that case the patentee would be defending a claim that, he himself admitted during the prosecution, is invalid (not novel).
- The same is of course true when invoking the doctrine of equivalence. Accepting infringement under the doctrine of equivalence in such circumstances is basically the same as accepting infringement of an invalid patent. The UK, The Netherlands and Germany invoke the Gilette or Formstein defence in such a situation. An equivalent which was already known in the prior art can never infringe. The same is true if an alleged equivalent is a non-inventive variant of something known in the prior art.
- I have already defended the test applied by the Local Paris Division (cf. Local Division of Paris, Decision of 1 August 2025, N.J. Diffusion v. Gisela, UPC_CFI_363/2024) several times. There is equivalence if with essentially the same means in essentially the same way essentially the same result is reached. The Dutch test (invoked understandably by the defendant) can lead to unpredictable and inacceptable results as you can always find (unjustified) reasons for the certainty of third parties to refuse equivalence. The Dutch Supreme Court case about Tinnus’ water balloons (ECLI:NL:HR:2024:293) is a perfect example. One should also understand that the qualification “Dutch test” is misleading. It is a test of which the Dutch Supreme Court has said that it does not violate Art. 69 EPC, but the Dutch Supreme Court has said the same for the test proposed by the Local Paris Division.
- Case lasted one year. Bravo Paris!