2026-07-02 - CoA - Guardant v. Sophia Genetics - UPC-COA-0000019/2026

ENGLISH: "1. A patent holder is not obliged to assert all patents in one application for provisional measures. If a patent holder has the necessary information for filing an application for provisional measures regarding some, but not all patents, delaying the filing of the Application for provisional measures until it has the necessary information regarding all allegedly infringed patents may be regarded as an unreasonable delay. 2. If a patent holder is aware, on the basis of a document, that one or more of its patents has been infringed, it must not turn a blind eye to the fact that the document also indicates the infringement of one or more of its other patents. 3. As a general rule, the patent holder is not obliged to monitor the market. However, if the patent holder becomes aware of specific circumstances that suggest patent infringement, the patent holder is expected to investigate the matter with due diligence so that the patent holder can take action against all infringers as quickly as possible. 4. A long-standing infringement may indicate that the patent holder has turned a blind eye to the infringement. 5. If the applicant is a legal entity, the decisive factor for assessment of urgency is when its authorised representative body or an individual, who by virtue of its position within the legal entity is capable of pursuing the infringement or reporting it, internally becomes aware of it. For example, this person could be an employee of the legal department, a senior member of the sales department or a mystery shopper engaged specifically to investigate intellectual property rights infringements. 6. As a general rule, the patent holder may wait a reasonable time for a response to a warning letter before drafting and lodging an application for provisional measures. 7. As a general rule, the unsuccessful party must bear the reasonable and proportionate legal costs and other expenses incurred by the successful party (Art. 69(1) UPCA). Exceptions apply where equity requires a different allocation of costs, in particular where a party succeeds only in part or in exceptional circumstances (Art. 69(2) UPCA) and where the party has caused unnecessary costs to the Court or another party (Art. 69(3) UPCA). As a rule, the withdrawal of an action or application means that the defendant must be considered the successful party. Equity does not provide otherwise in cases where the claimant applies to withdraw the application for provisional measures or the action after the defendant, for the first time in the proceedings and not in response of the warning letter, raises an argument against infringement. In principle, a person who has received an unjustified warning is under no obligation to provide clarification why it will not comply with the request."

In this appeal against the Paris Local Division's refusal of provisional measures (UPC_CFI_808/2025), the Court of Appeal (Panel 2) rejected Guardant's appeal on the decisive ground of urgency: Guardant unreasonably delayed by filing its application on 29 August 2025 when, exercising due diligence, it could have been aware of Sophia's infringing activity across the UPC territory, Spain and Switzerland by 15 May 2025. On the way there the CoA reversed the CFI on added matter (holding all features of claim 1 of EP 3 443 066 disclosed in the application as filed, in particular via Example 2), conducted a full claim construction (feature 1.7 'consensus sequence' is not limited to 'collapsing'; embodiments do not limit claim scope), and confirmed the UPC's international jurisdiction over infringing acts in Spain and Switzerland (Art. 4 + 71b(1) and Art. 8(1) Regulation 1215/2012). Because urgency failed, the invalidity, infringement and necessity questions became moot. The CoA declared Sophia's cross-appeal inadmissible (a party favoured in the result cannot cross-appeal only to alter the reasoning) and reduced the first-instance interim costs award to 50% of the applicable ceiling (EUR 300,000), granting a further EUR 100,000 interim costs award for the appeal.