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7 October 2025 (published last week)
Local Division Brussels, Cretes v Hyler
UPC_CFI_556/2024; UPC_CFI_216/2024
Settlement (R. 365 RoP)
Facts
- During the interim conference, the judge-rapporteur (“JR”) suggested a settlement. The JR gave the parties until 29 August 2025 to inform the Court if a settlement was reached.
- The parties informed the Court that a settlement was reached.
- The parties requested to confirm the settlement and to order confidentiality with respect to the complete content of the settlement agreement. No cost decision was necessary.
- Both parties requested a 40% reimbursement of the paid court fees (€ 11,000).
The Court
The Court granted the request except for the return of fees. The provisional value of the litigation was too low, and after calculation of the full fee that for court costs which the parties should have paid and deducting the 40% return, both parties received € 2,000 each.
Comment
- This is a correct settlement under R. 365 RoP with complete secrecy regarding the content.
- The two representatives argued that the JR had promised during the interim conference that the Court fees would not be increase if there was a settlement. However, even assuming this was true, they did apparently not check the order issued after the interim conference, which did not reflect this!
- The JR clearly wanted to impress with very extensive considerations about the different Rules in order to come to a very simple calculation of what money should be returned. If I had been the JR, the parties would not have received the € 2,000 because of the extra work caused by an untenable interpretation of the post-interim conference order.
10 October 2025 (published last week)
Local Division Munich, Heraeus v Vibrantz
UPC_CFI_114/2024; UPC_CFI_448/2024
Private prior use
Facts
Heraeus started infringement proceedings with respect to a European patent valid for Germany, France, Italy, and Romania. The patent has a different version in Germany as a result of a final invalidity judgment of the German validity court. The claimant argued that no new invalidity attack could be raised for Germany due to the German decision.
The Court
- The Court interprets the claim features, referring to the Court of Appeal’s decision in Nanostring v 10xGenomics.
- The Court defines the skilled person.
- The decision of the German court, between the same parties, with respect to novelty and inventive step, was considered res iudicata. However, the insufficiency argument (Art. 83 EPC) could be raised, as this was not addressed in the German invalidity proceedings.
- The claimant defends the patents in the other countries (besides Germany) solely on the basis of auxiliary request 3. These patents are therefore invalid as far as they extend beyond auxiliary request 3.
- The Court held that the auxiliary request does not contravene Art. 84 and Art. 83 EPC.
- For novelty, the Court applied the “gold test” and found the claim novel.
- On inventive step of auxiliary request 3, the Court applied the problem-solution-approach, (again) emphasizing that this promotes the legal certainty as this method is also applied by the EPO, and confirmed inventive step.
- The Court finds literal infringement of claim 1 according to auxiliary request 3.
- On private prior use, the Court has to apply (Art. 28 UPCA) the national laws. For Germany, the Court accepts prior user rights “for the products which are found to literally infringe”.
- As the claimant has not proven infringing acts in the other countries the Court does not have to decide about prior use in these countries.
Comment
- The decision on res judicata is correct, as the German national invalidity decision involved the same parties. One wonders why the defendant did not initiate revocation proceedings in the UPC with a different claimant, which would have circumvented res judicata.
- However, the Court allowed an insufficiency argument (based on Art. 83 EPC) to be raised with respect to the invalidity of the German part of the European patent, because it was not raised in the national invalidity proceedings. This may be correct as far as res judicata is concerned, but this implies that I can introduce new invalidity grounds in later proceedings. In my opinion, this should not be possible as it undermines legal certainty and the principles of fairness and equity.
- In this case, the Court only had to judge with respect to the prior private use defence for Germany, but as the Court noted, the defence has to be decided according to the law of each country concerned. As the law varies significantly, not only with respect to when the defence can be invoked but also as to the extent of the prior user right, the UPC countries should agree on one set of rules for the UPC. The same should be endeavored with respect to compulsory licenses. I agree it is not the most urgent problem to be resolved, but if in a few years European patents can only be litigated in the UPC, it would be logical if the law on patents would be, as far as possible, the same throughout the UPC territory.
10 October 2025 (published last week)
Central Division Munich, Wirplast v Vilpe Oy
Interim Conference
Facts