1. In the absence of any pointer to the opposite, it must be assumed that a feature in a patent claim has a technical significance within the teaching of the claim and contributes to the teaching and its technical effect. 2. When assessing the disclosure content of an (priority) application, hindsight must be avoided. It is not sufficient that the skilled person having the granted patent claim in mind might recognize elements of the granted patent claim in the priority application and assign them accordingly to features of the granted patent. On the contrary, the subject-matter of the granted patent claim must be directly and unambiguously apparent from the content of the priority application, without prior knowledge of the granted patent claim.

The Mannheim LD revoked the SEP to the extent attacked and dismissed the infringement action, without reaching the FRAND defence. The decisive ground was an invalid priority claim: applying the Art. 123(2) EPC gold-standard disclosure test to the priority application under Art. 87 EPC, the Court held that a feature requiring time unit format information relating to a configuration period was not directly and unambiguously disclosed, so the patent was entitled only to its filing date and was anticipated by an intervening version of the 3GPP standard. The Court stressed that the priority test must be applied without hindsight: it is not enough that a reader who knows the granted claim can map passages of the priority document onto its features. In claim construction it presumed that every claim feature has technical significance unless something points to the contrary, and it held that a patentee asserting that a term had a well-known meaning at the priority date bears a secondary burden to substantiate the source of that meaning. None of the auxiliary requests or separately defended dependent claims restored priority, and the patentee offered no novelty defence against the intervening standard for any limited version.

1. The party alleging added matter must identify, by means of a specific comparison, the subject-matter of the original disclosure that is said to have been extended in the later application or divisional patent. The mere fact that the original application contains numerous embodiments and theoretically allows a very large number of combinations does not establish added matter. Although this may raise issues of clarity or drafting technique, an extension of subject-matter arises only where the granted claim conveys technical information that the skilled person could not derive directly and unambiguously from the application as filed, contrary to Articles 123(2) and 138(1)(c) EPC. Procedural fairness under recital 5 of the Preamble to the RoP requires each party to plead its grounds of challenge clearly and with sufficient specificity. The Court can neither cure deficiencies in those grounds nor supplement them of its own motion, since doing so would substitute the Court for the challenging party and compromise its impartiality. 2. Where the alleged contribution to the art lies in the identification of a physiologically or pathologically distinct patient subgroup, the patent must provide sufficient technical information to identify that subgroup and to make it credible that the medicinal product is suitable for the claimed therapeutic use in that subgroup. In that context, the precise therapeutic dosage need not be stated in the independent claim, provided that the skilled person, on the basis of the patent, the prior art and common general knowledge, can select a safe and effective dose without undue burden in the exercise of their routine competence. 3. An inventive-step objection cannot be sustained by reconstructing the claimed solution with knowledge of the patent. Where an obviousness attack can be constructed only by selecting and combining numerous (more than 10) disclosures addressing different technical questions, none of which supplies the missing pointer or gives the skilled person a reason to consult the others, the resulting mosaic is indicative of an ex post facto analysis rather than the course the skilled person would have followed at the effective date.

The Milan Central Division dismissed a generic company's revocation action against a second-medical-use patent defined by a patient subgroup, maintaining it in a form the proprietor had unconditionally limited to match its amendment before the EPO Opposition Division. Late-filed prior art and new attacks introduced in the rejoinder, partly drawn from the EPO's preliminary opinion, were excluded under the front-loaded procedure, and the Court held that an EPO Board of Appeal decision on a parent patent has no res judicata effect before the UPC. It held that a generic added-matter attack resting on the number of combinations in the parent application was insufficiently substantiated (while examining it anyway), that the patent was sufficiently disclosed although claim 1 recites no dose and the trials excluded some patients, and that a patient subgroup confers novelty under Art. 54(5) EPC where its defining characteristics are functionally linked to an improved therapeutic effect. Inventive step was upheld because no realistic starting point, alone or combined with over ten further documents, pointed to selecting the subgroup with a reasonable expectation of success; such a mosaic indicates hindsight.

Für eine unmittelbare Verletzung eines Erzeugnisanspruchs ist entscheidend, ob die angegriffene Ausführungsform aufgrund ihrer Beschaffenheit und ihrer Verwendungstauglichkeit objektiv in der Lage ist, die Merkmale des Patentanspruchs zu erfüllen. When determining whether a product claim has been directly infringed, the decisive factor is whether the challenged embodiment is objectively capable of fulfilling the features of the patent claim, given its nature and suitability for use.

The Düsseldorf Local Division found direct literal infringement of a product claim to a rotary osteotome and dismissed the revocation counterclaim in full. Its headnote states the test for direct infringement of a product claim: what matters is whether the challenged embodiment is objectively capable, by its nature and its suitability for use, of fulfilling the features of the claim. The defendants' argument that their burs are only ever rotated in the direction in which the alleged cutting faces trail therefore failed, since nothing prevented rotation in the other direction and their own brochure warned that reverse rotation produces high cutting performance. On the pleading standard, the Court held that once the claimant has substantiated infringement with a detailed party expert report, a broad denial does not put the allegation in issue; the defendants had to answer with comparable detail, if necessary with an expert report of their own. Standing was established under Art. 47(2) UPCA through a chain of exclusive licence and sublicence, whose validity despite identical signatories on both sides was governed by Michigan law and unrebutted. On validity, prior art recommending a rake angle of about 0° was held to point away from making that angle negative, so the person skilled in the art would not, rather than merely could not, arrive at the claim.

1. For competition law reasons, the patent holder is only required to indicate to the patent user one licensing route that satisfies the FRAND requirements (concurring with LD Munich, decision of 18 December 2024 – UPC_CFI_9/2023 – Huawei v Netgear, p. 136). 2. However, there are constellations where the implementer can demand a bilateral licence instead of a pool licence. Such constellations are for example, but nonexclusively, given when the implementer expressed its desire to obtain a multistandard- licence or to sign cross-licencing agreements with the individual patent proprietors. The same applies when an implementer had already advanced with a significant number of other pool contributors to conclude bilateral licences for the whole pool portfolio. 3. Choosing the bilateral route does not ease the implementer’s obligation to show its willingness to sign a licence throughout the course of the negotiations In particular, an implementer’s insistence on bilateral licensing can still indicate unwillingness when the implementer fails to present comprehensible reasons for its decision to opt for bilateral agreements, failed to conclude bilateral agreements with the other SEP pool licensors within reasonable time, and refrained from placing a security. This is even more true when initially being provided a FRAND pool offer.

The Hamburg Local Division granted an injunction on a standard-essential patent for the AAC audio standard, dismissing both an exhaustion defence and a FRAND defence. On the pool-versus-bilateral question it held that for competition law reasons a patent holder need only point the implementer to one licensing route that satisfies FRAND, but recognised that in defined constellations an implementer may demand a bilateral licence instead of a pool licence, for instance where it seeks a multi-standard licence or cross-licences with the individual proprietors, or where it has already advanced with a significant number of pool contributors towards bilateral licences for the whole portfolio. Choosing the bilateral route does not relax the implementer's duty to demonstrate willingness throughout the negotiations: insistence on bilateral licensing still indicates unwillingness where the implementer gives no comprehensible reasons, fails to conclude bilateral agreements with the other pool licensors within a reasonable time, and provides no security. The Court expressly declined to follow the automatic-security trigger adopted by the Munich Local Division and the German Federal Court of Justice, treating the absence of security as one indication of unwillingness among others rather than a freestanding bar. On exhaustion it held that Art. 29 UPCA regulates the matter exhaustively and extends to method claims, but that a software library requiring compilation and integration is not an end-user product within the pool licence relied on.

The Court of Appeal decided three appeals against one Düsseldorf Local Division decision on an infringement action and the counterclaim for revocation of a patent for a moulded-fibre egg package. On procedure it confirmed that R. 222.2 RoP governs requests, facts and evidence and not legal arguments, so a new legal argument resting on first-instance facts is admissible while newly filed annexes were refused, and it held part of the patentee's appeal inadmissible because it rested on blanket references to first-instance submissions the impugned decision had addressed. On construction it read the disputed feature as excluding the traditional flexible locking flap, relying on the way the specification distinguishes itself from the prior art it describes, and expressly declined the first instance's rigidity-based reasoning because the patent discloses no rigidity requirement; the distinction it drew instead is where the nose sits and whether the part carrying it must flex to release, which the patentee accepted at the oral hearing. On validity it confirmed that choosing pulp from the small set of materials known for egg packaging is obvious over a starting point that leaves the material open, additionally revoked the method claim as granted for lack of inventive step because the missing manufacturing step would follow from routine testing, and maintained both independent claims in the amended form of auxiliary request 2. Infringement failed on the construction adopted, and the partial success on appeal was held too minor to disturb the first-instance cost allocation.

1. A device claim defined by structural features is not, as a rule, limited to the device performing a specific function. For the purposes of assessing the novelty of such a claim, this means that if the prior art discloses a device which fulfils all the structural features of the claim and is at the same time suitable for the purpose specified in the claim, the claim lacks novelty, even if not all the technical effects of the claimed device described in the patent at issue but not claimed are realised in the same way in the prior art. 2. There is no obvious typographical error in the prior art if, from the perspective of a person skilled in the art, it does not seem far-fetched that a particular term is in fact intended in the sense in which it is worded, and it is not immediately apparent to the person skilled in the art that there is a typographical error and that something other than what is stated is intended.

The Munich Central Division partially revoked a unitary patent in a standalone revocation action, holding claim 1 as granted anticipated by Art. 54(3) EPC prior art and maintaining the patent in the form of the first auxiliary request. Its first headnote states the governing rule for device claims: a claim defined exclusively by structural features is as a rule not limited to the device performing a particular function, so novelty falls where the prior art discloses all structural features in a device that is also suitable for the purpose recited in the claim — even if the unclaimed technical effects described in the patent are not achieved in the same way. The second headnote sets a demanding threshold for reading an obvious clerical error into a prior-art document: none exists where it does not appear far-fetched to the skilled person that the term is meant as written and the error is not immediately apparent. Applying the settled rule that dimensions are generally not directly and unambiguously derivable from schematic figures, the panel held the conicity range of the auxiliary request neither explicitly nor implicitly disclosed, and rejected the inventive-step attacks for want of any pointer or motivation. Added matter, priority and clarity objections all failed, and costs were apportioned 70/30 to reflect the substantial degree of revocation.

ENGLISH: The claimant’s legitimate interest in the publication of a decision (Art. 80 UPCA) may, depending on the circumstances of the individual case, follow from the fact that the defendant has marketed the attacked embodiment by explicitly referencing to the key technology protected by the patent.

The Düsseldorf Local Division decided an infringement action together with the counterclaim for revocation on the merits. It rejected every validity ground — insufficiency, added matter, invalid priority, lack of novelty and lack of inventive step — and maintained the patent as granted, so the auxiliary requests needed no examination. It found literal infringement of the apparatus claim on the strength of the Defendants' own advertising material, holding that an 'offering' under Art. 25(a) UPCA is an economic concept and that a device incorporating the claimed structural features infringes even as an inferior embodiment. It granted a permanent injunction over Germany, France and the Netherlands, rejecting a proportionality defence built on patients' interests, and granted the full Art. 67 UPCA information and accounting order, recall including from commercial end users, destruction of the products, a declaration of joint and several damages liability, and publication of the decision in restricted form. It refused permanent removal from the channels of commerce for want of concrete measures, destruction of dual-use manufacturing tools and advertising materials, an interim award of damages, and any order for enforcement security.

ENGLISH: Claim construction 1. There is no general rule that the skilled person would always and automatically take into account fluctuations which are due to the manufacturing process and the measurement method and in doing so would automatically add deviations to the – as such precise – numerical value in a claim feature. This may be a result of claim interpretation but is not inherent to the use of a numerical value in a claim. Private prior use 2. According to Article 28 UPCA, “Any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.” 3. Whether a right of private prior use in respect of the German designation of the Patent may be relied on is thus to be determined under German law. Front loaded proceedings 4. It is not contrary to R. 29(c) RoP and the front-loaded system of the RoP if a party submits additional evidence of an already stated fact or submitted argument for which other evidence had already been submitted, but which was disputed by the other party. International jurisdiction 5. Art. 34 UPCA states that “Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect”. It is not meant to confine the UPC’s jurisdiction to its own territory. Art. 34 UPCA clarifies that as a rule – unless a more limited scope is requested (cf Art. 43, 76 UPCA) – decisions of the UPC shall cover the territory of all Contracting Member States where a European patent has effect. 6. There is no indication that the Contracting Member States when entering into the UPCA wished to confer a more limited jurisdiction to the UPC – confined to its own territory – in situations where the national courts would have extra-territorial jurisdiction. 7. The UPCA is expressly not limited to European patents insofar as validated for the UPC territory only. As such, European patents validated in territories outside the UPC territory is ‘matter governed by the UPCA’. 8. Art. 24(3) UPCA specifically leaves open the possibility that there is a need for the UPCA to apply national law, including that of non-contracting States. The use of ‘in particular’ makes clear that the areas of application of such foreign law is not limited to the matters referred to in the articles mentioned. 9. Where a court has jurisdiction under Article 4 Br I bis because the defendant is domiciled in its territory, as is the case in the present proceedings, the Regulation precludes that court from declining jurisdiction on the ground that a court of a non-Member State would be a more appropriate forum for the trial of the action, even if the jurisdiction of no other Member State is in issue, or the proceedings have no connecting factors to any other Member State (CJEU, judgment of 1 March 2005, Owusu, C-281/02, ECLI:EU:C:2005:120, paras 36 ‒46). This approach has recently been endorsed by the CJEU in BSH v Electrolux. 10. Accepting jurisdiction in the infringement action vis-à-vis a defendant domiciled in the UPC’s territory based on Art. 4 Br I bis as such cannot be considered contrary to the TRIPS Agreement. Exercising international jurisdiction 11. A court which has jurisdiction to hear an alleged infringement of a patent validated outside of its own territory, is not only required to apply the law applicable to that patent, but must also apply international law principles such as comity. 12. In situations where the Court has jurisdiction to decide on the alleged infringement and remedies requested by the patentee based on a non-UPC designation of a European patent (EP), and where the defendant has – as a defence – asserted that the EP relied on is invalid, then: - where designations in the territories of Members States of the European Union (EU) and Signatories to the Lugano Convention (LC) are concerned (‘EU/LC EPs’), it follows from Art 24(4) Br I bis and Art. 22(4) LC that the Court shall not consider the validity of such patents, but as decided in BSH v Electrolux the Court does not lose jurisdiction to decide the infringement action based on such patents; - where designations in territories of non-EU and non-LC States are concerned (‘non-EU/LC EPs’), it follows from BSH v Electrolux that the Court can consider the validity of such patents in inter partes proceedings and the Court may on that basis decide the infringement action based on such patents. 13. The Court of Appeal considers the following approach regarding actions based on EU/LC European patents and/or non-EU/LC European patents to be in line with BSH v Electrolux and international principles of law, including comity, for the following situations (I, II and III respectively): I. when a revocation action is lodged with the Court with respect to (a) EU/LC EP(s) and/or non-EU/LC EP(s) 14. The Court shall declare that it lacks jurisdiction to decide the action. II. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered invalid, but the attacked embodiment or process would infringe if it were valid 15. It will be appropriate for the Court to first offer the patentee the opportunity to withdraw the infringement action insofar as based on (a) EU/LC EP(s) and/or non-EU/LC EP(s) within an appropriate period of time. 16. Where it concerns EU/LC EPs: a. if the patentee does not wish to withdraw the infringement action, and insofar a revocation action is not already pending with the relevant competent national court(s), it is appropriate to give the defendant the opportunity to file a revocation action with the relevant competent national court(s) within an appropriate period of time. b. if and to the extent that (a) revocation action(s) is pending, or the defendant has lodged such action(s), it is generally appropriate for the Court to use its discretion and/or case management powers (cf R. 295(l) and (m) RoP) to stay the infringement proceedings insofar as based on that EU/LC EP(s) until a final decision has been rendered in the revocation action(s) by the competent national court(s). c. if and to the extent that the defendant does not lodge such action(s) within the given time period, the Court must assume that the patent(s) is/are valid and shall decide the infringement action on that basis. 17. Where it concerns non-EU/LC Eps: a. if the patentee does not wish to withdraw the infringement action, the infringement action shall be dismissed, unless there are specific reasons not to do so (e.g. because the claim(s) of an extra-territorial part is different and may be considered valid – in such a situation the next paragraph applies) III. in an infringement action which is also based on (a) EU/LC EP(s) and/or non-EU/LC EP(s), and the patent in force in the UPC territory is considered valid and infringed in the UPC territory 18. Where it concerns either EU/LC EPs (in view of Art. 24(4) Br I bis and 22(4) LC) or non-EU/LC EPs (in view of comity): a. the Court may – where appropriate and in order to avoid undue delay – consider there is a reasonable, non-negligible possibility that the patent will be held valid by the competent national court and issue a decision including its orders under the condition subsequent that the patent is not held to be wholly or partially invalid to the extent the infringement is based thereon in first instance or appeal proceedings before the national court competent to hear the revocation case in relation to such an EP (R. 118.2 RoP and Solvay v Honeywell (C-616/10) mutatis mutandis). b. if such a competent national court holds the patent to be valid, then the decision including its orders stays in place with the condition subsequent; if the decision is final, the injunction becomes permanent. c. if such a competent national court at first instance or on appeal holds the patent to be wholly or partially invalid to the extent the infringement is based thereon then the condition under which the decision, including its orders, was issued is not fulfilled and it falls away. d. In the case under c. the patentee may request the Court for orders consequential on such a decision within two months of the decision of such a competent national court (R. 118.4 RoP), including a request for a stay of the proceedings until a final decision is rendered by the competent national court. Joint tortfeasorship 19. As the Court of Appeal held in Belkin v Philips (UPC_CoA_534/2024, of 3 October 2025) an ""infringer"" within the meaning of Art. 63 UPCA in conjunction with Art. 25 UPCA is also a person who does not personally carry out the acts referred to in Art. 25 UPCA but to whom the acts of a third party are attributable because he is an accessory. The jurisdiction of the UPCA under Art. 32.1(a) UPCA to hear actions for patent infringement therefore extends to allegations of joint tortfeasorship.

On Kodak's appeal of the Mannheim Local Division's 2 April 2025 infringement decision (German designation of EP 3 511 174), the Court of Appeal set the decision aside and dismissed Fujifilm's infringement action. Although the Sonora Xtra-3 plate falls within amended claim 1, Kodak Graphic holds a private prior use right under Art. 28 UPCA — determined by German law (Sec. 12 Patent Act) — acquired for the Sonora X plates, and that right extends to the modified Sonora Xtra-3 because the modification realises no additional advantage disclosed in the patent. The Court applied the principle that a numerical claim range is not automatically widened by manufacturing or measurement tolerances. Fujifilm, as the unsuccessful party in the infringement action, bears the costs at both instances and must compensate Kodak for the enforcement of the impugned decision.

ENGLISH: 1. The criteria set out by the Local Division The Hague form a coherent whole and are, as such, suitable for examining patent infringement by equivalent means. The present case does not give rise to any grounds for applying a different standard. 2. In order to determine technical equivalence, the claimant must not focus solely on the objective task of the patent in suit. Instead, it must demonstrate the function of each exchanged feature in achieving this objective and explain why the variation essentially performs the same function. 3. In general, it is not obvious to a skilled person how to apply the equivalent element if a complete redesign of the claimed device is required.

In a combined infringement action and revocation counterclaim concerning EP 1 905 615 (a swivel locking device for stroller wheels), the Düsseldorf Local Division dismissed both the action and the counterclaim. On validity, the patent survived: applying the Court of Appeal's added-matter principles it found features 1.9/1.10 directly and unambiguously derivable from para. [0014] of the application (the 'preferably' features being optional and independently disclosed, so no inadmissible intermediate generalisation); the sufficiency objection fell away under the adopted claim construction; claim 1 was novel over MB7, MB9, MB2/MB2a and MB12; and inventive step was not disproven because the defendants relied on the EPO Problem-Solution-Approach and failed to identify a pointer or reasonable expectation of success under the Court of Appeal's 'would-not-could' framework (MB14 being excluded as published on the validly claimed priority date). On infringement, the court held there was no literal infringement — the over-moulded 'stem' is in a fixed rotational relationship with the wheel bearing assembly and therefore part of it, not the seat, so features 1.9/1.10 were absent and there was no distinguishable clasping mechanism in the cavity. Crucially, since the Court of Appeal has not yet ruled on equivalence criteria, the Panel adopted the Local Division The Hague's four-question equivalence test and found no infringement by equivalents: the claimant failed technical equivalence (it did not show the function of each exchanged feature, reducing the invention to a mere 'secured connection'), failed the fair-protection limb (applying the equivalent required a complete redesign rearranging several components, which is not obvious to the skilled person), and failed legal certainty.

ENGLISH: 1. The person skilled in the art, outlined in Art. 56 EPC, is a notional figure who represents an average level of knowledge in a specific technical field and whose knowledge reflects the common general knowledge (CGK) at the priority date. This fictitious individual cannot be identified with any real person working in the technical domain of the invention. The skilled person is not required to possess (or disregard) a distinct affiliation, nor is it necessary; therefore, differentiating characteristics such as connections to a specific company are not admissible. 2. The person skilled in the art is an objective, rational figure who does not display fear of failure. The defendant incorrectly projects subjective attitudes onto this notional individual by likening them to Prof. XXXX. The skilled person questions information only when documented prejudice exists in relevant literature, and it is the party's responsibility to highlight proven flaws. Simply suggesting unexpected outcomes is inadequate. Recognising that risk and doubt are part of scientific progress, the skilled person would not reject a solution due to subjective concerns about possible failure. 3. The difference between an expectation of success and a mere hope of success does not depend on the researcher’s subjective state of mind. There is a reasonable expectation of success when the scientific data or experiments indicate that the tested solution can yield a positive result, despite the general uncertainty arising from the necessary experimentation and the application of the scientific method. A reasonable expectation of success is therefore based on reason and knowledge of scientific data, even though the expert knows that the outcome is never certain until it is the subject of clinical trials. Therefore, it can be said that the greater the realism or reasonableness of the starting point, the greater the expectation of success. Hope for success, on the other hand, arises when the result is based on sheer assumptions or there is a contradiction in the sources, so that the outcome is considered possible but not reasonable.

The Central Division Milan seat (Postiglione presiding, Knijff LQJ, Dorland-Galliot TQJ) revoked EP 3 854 403, AMMS's 'further medical use' patent on Remdesivir (GS-5734) for treating SARS-CoV-2 / COVID-19 infections, in its entirety for all UPCA Contracting Member States. Applying the CoA's holistic inventive-step framework from Amgen v Sanofi (UPC_CoA_528/2024) and Meril v Edwards (UPC_CoA_464/2024) and confirming that the problem-solution approach reaches the same outcome, the panel held that two Sheahan publications of 10 January 2020 (HRM 09 commentary and HRM 10 editorial), eleven days before the 21 January 2020 priority date, were realistic starting points (and equivalently the 'closest prior art') because they expressly identified Remdesivir as a likely active agent against the newly emerging SARS-CoV-2 within the broader pan-coronavirus context. The decision establishes three important normative propositions about the person skilled in the art (headnotes 1-3): the skilled person is a notional figure free of any corporate affiliation; the skilled person is objective and rational, does not display fear of failure, and would not reject a solution on subjective concerns absent documented prejudice; and 'reasonable expectation of success' is an objective concept grounded in scientific data — distinct from a mere subjective 'hope of success' — increasing with the realism of the starting point and following T 207/94. Applying these standards, the panel found that the skilled person would have had a high expectation of success on the basis of pan-coronavirus structural conservation of the RdRP (≈95-98% homology), Remdesivir's documented efficacy against SARS-CoV-1 and MERS-CoV (HRM 11 Sheahan 2017, HRM 16 Agostini 2018, HRM 12, HRM 13), and the explicit Sheahan suggestion in HRM 09/10 that 'remdesivir works against SARS and SARS-like viruses…and is likely to work against coronaviruses that are emerging now in Wuhan'. The insufficient-disclosure attack on the undefined phosphorus stereochemistry in claim formula I was rejected because isomeric separation by chiral HPLC is CGK and the patent description teaches the relevant formulations. The patent's main and 8 auxiliary requests were dismissed; costs of EUR 800,000 (agreed by the parties) and value of EUR 20 million (based on Veklury European sales of ~$284M in 2024) were set.

ENGLISH: In proceedings on the merits of infringement against several defendants, one of whom is domiciled in Spain and is sued for infringement of the Spanish portion of the same patent, the risk of irreconcilable judgements pursuant to Art. 8 of the European Regulation (EU) no. 1215/2012, as interpreted by the Court of Justice, exists if the Court verifies that: i) it is the same factual situation (i.e. parallel patent rights infringed in an identical manner: being part, as are the other defendants, of the same infringement chain, acting as a distributor of products manufactured by the other defendants; joint and several liability for damages); (ii) it is the same legal situation (in the case of Spain, implementation of the substantive rules set out in the Enforcement Directive); (iii) Spanish defendant reasonably would have been expected to be sued before the court of another Member State, such as the UPC (predictability); (iv) it is not an abusive summoning of the Spanish defendant before the Court of another Member State.

In the first UPC merits decision to tackle Art. 8(1) Brussels I Recast against a Spanish (non-UPC) defendant, the Milan Local Division established a four-factor framework for irreconcilable-judgments jurisdiction over a non-UPC-domiciled EU defendant sued alongside UPC-domiciled defendants: (i) same factual situation, (ii) same legal situation (satisfied where the relevant national law implements the Enforcement Directive and tracks Arts. 25–26 UPCA), (iii) predictability for the defendant, and (iv) no abuse of forum. The Division declined to await the CJEU referral (UPC_CoA_789/2025–813/2025) because that referral concerns provisional measures, not merits. Applying this framework to Motocard Bike, the Division asserted jurisdiction over its Spanish conduct but — because of the parallel Spanish nullity action and the exclusive-jurisdiction rule of Art. 24(4) Brussels I Recast (including the BSH/Electrolux (C-339/22) considerations) — separated the Spanish-territory infringement limb and stayed it until the Spanish validity ruling is final. On the merits, the Division confirmed EP 4 072 364 as maintained by the EPO Opposition Division (main-request claim = granted claims 1 + 5 + 7) applying the Amgen/Sanofi (UPC_CoA_528/2024) and Meril/Edwards (UPC_CoA_464/2024) inventive-step framework; in particular, D11 (fabric air-mattress art) was held to be in a non-relevant technical field under Nanostring/10x, so the D1 + D11 combination required hindsight. But the Division dismissed the infringement action: the 'second region' of claim 1 must be non-negligible and must permit real ventilation, so minimal manufacturing-tolerance clearances (Aachen study: 7.5% of surface in Tech-Air 3/10) do not qualify, and Alpinestars' single-bag airbag is not a hand/comb shape. Costs allocated so that each party bears its own (Art. 69(2) UPCA), reflecting Dainese's victory on validity but defeat on infringement.

The Mannheim Local Division upheld a fibre-laser combiner patent against a revocation counterclaim and granted the full range of infringement remedies across seven contracting member states. On construction the Court held that where the claim wording is unambiguous, embodiments the specification discloses fall outside the scope of protection: the claim required an annular high-index region, so the figures showing a central core alone are not covered, expressly in derogation from the Court of Appeal's rule in Meril v Edwards that an embodiment presented by the specification may as a general rule be taken to be claimed. On validity it left open whether priority was validly claimed, holding the patent good even on the assumption that it was not: there was no added matter, the claim was novel over the cited European application, and it involved an inventive step starting from that document. Novelty turned on a single feature — the Court found the prior art disclosed the output-fibre structure and most of the overlay requirement, but not a bundle with only one inner fibre, and a novelty assessment may not combine or modify figures the document does not itself show together. Starting from that document there was no motivation to make that change, which would have worked against its declared aim of bundling light from several sources to raise power, so only hindsight could produce it. On infringement the Court held that the claim does not require entirely lossless coupling, so slight leakage of light from the outer input fibres into the central core through a reflecting fluorine-doped cladding is not an overlying within the claim. The remedies were granted in full except that everything but the injunction and interim damages was limited to acts from 5 December 2021, the ground for that cut-off being redacted from the published text.

GERMAN: 1. Eine beherrschende Stellung im Sinne von Art. 102 AEUV auf dem relevanten Markt kann sich daraus ergeben, dass ohne eine Lizenz am Streitpatent keine Produkte (hier Smart-TVs) angeboten werden können, die mit einem gängigen Standard kompatibel sind. Entscheidend ist dabei die Erwartungshaltung des Verbrauchers, dass Smart-TVs alle gängigen Audio- und Video-Codecs umfassen und dadurch alle Inhalte decodieren können, die von den Anbietern von Diensten entsprechend codiert wurden. 2. Im Hinblick auf die grundlegende Einordnung des FRAND-Verhandlungsprogramms nach Huawei v. ZTE schließt sich die Lokalkammer Düsseldorf den Lokalkammern Mannheim (UPC_CFI_210/2023, Entscheidung vom 22. November 2024 – Panasonic v. OPPO) und München (UPC_CFI_9/2023, Entscheidung vom 18. Dezember 2024 – Huawei v. Netgear) an. Soweit Unterschiede zwischen beiden Lokalkammern in der Anwendung der Grundsätze nach Huawei v. ZTE bestehen, kommt es auf diese in dem von der Lokalkammer Düsseldorf entschiedenen Fall nicht an. 3. Fehlt in Anwendung des Verhandlungsprogramms nach Huawei v. ZTE die initiale Bekundung der Lizenzwilligkeit durch den Verletzer („Schritt 2“), nachdem der Patentinhaber diesen auf die Patentverletzung hingewiesen hat („Schritt 1“), ist die Prüfung beendet. Die Frage, ob das Angebot des Patentinhabers FRAND ist, bedarf dann keiner Untersuchung mehr. ENGLISH: 1. A dominant position within the meaning of Article 102 TFEU on the relevant market may arise if products (here: smart TVs) that are compatible with a common standard cannot be offered without a licence for the patent in suit. The decisive factor is that consumers expect that smart TVs include all common audio and video codecs and can therefore decode all content that is encoded accordingly by service providers used for encoding. 2. Regarding the fundamental classification of the FRAND negotiation programme after Huawei v. ZTE, the Düsseldorf Local Division agrees with the Mannheim Local Division (UPC_CFI_210/2023, Decision of 22 November 2024 – Panasonic v. OPPO) and the Munich Local Division (UPC_CFI_9/2023, Decision of 18 December 2024 – Huawei v. Netgear). Any differences between the two Local Divisions in the application of the principles under Huawei v. ZTE are irrelevant in the case decided by the Düsseldorf Local Division. 3. In accordance with the negotiation programme established in Huawei v. ZTE, if the infringer fails to initially express its willingness to conclude a licensing agreement (“step 2”), in response to a compliant notification of infringement/invitation thereto (“step 1”), the examination is terminated. In this case, the question of whether the patent holder’s offer is FRAND does not need to be investigated.

The Düsseldorf Local Division decided a standard-essential patent infringement action on the merits together with a revocation counterclaim. It held that Art. 102 TFEU binds a SEP holder even where that holder never gave a FRAND undertaking to a standardisation body, and that dominance on the licensing market follows where a device cannot be marketed without a licence because consumers expect it to decode every common codec. It then aligned itself with the Mannheim and Munich Local Divisions on the Huawei v ZTE negotiation framework and held that where the implementer never expressed willingness to take a FRAND licence before the action (step 2), the examination ends and the FRAND character of the patentee's offer need not be assessed. The exhaustion defence failed because the implementer pleaded no placing on the market inside the European Union and because the two-tier licensing model expressly requires the device maker to take a separate licence. All validity grounds failed, and the Court granted an injunction, recall, removal from the channels of commerce, destruction, an Art. 67 UPCA information and accounting order including copies of invoices, and a declaration of liability in damages, while refusing publication of the decision.

The Mannheim Local Division dismissed a revocation counterclaim and granted the full set of infringement remedies over a fibre-optic laser combiner. On validity it left the priority attack undecided and simply assumed in the defendant's favour that priority failed, taking the intervening document into account for inventive step and holding the claim valid on that harder footing. On novelty it held that a figure showing an output fibre may not be read together with a different figure showing an input bundle: combining or modifying figures is not permitted in the assessment of novelty, and the output fibre of the one embodiment was disclosed only for a bundle with several inner fibres. Procedurally it held that R. 30 RoP is lex specialis to R. 263 RoP, so adapting the infringement requests to the auxiliary requests filed in the application to amend the patent is not an amendment of case needing leave. It ordered the account in electronically processable form because the defendant did not oppose that form on the merits, refused a provisional costs award for want of any explanation why it was needed before the final decision, but awarded the price of the specimen bought for testing as provisional damages.

The Mannheim Local Division upheld a burner patent against every ground of a revocation counterclaim and found one of two attacked embodiments to infringe, on a construction that reads a functional feature as requiring the function and not a level of performance. The claim requires the perforated disk to perform the internal distributor's function of guiding and distributing the mixture across the whole burner surface; it does not require any particular flame pattern or efficiency, because a quality of performance is not reflected in the claim. Read that way the feature is not superfluous beside the neighbouring features, and the embodiment whose disk shifts the entry point well above the disk level retains an internal distributor and falls outside the claim, whatever else it does. On validity the panel reached the same conclusions as the EPO Board of Appeal in the parallel opposition, held that the priority claim is valid for the independent claim even though two dependent claims have no basis in the priority document, and refused every obviousness attack as hindsight: no starting point gave the skilled person a reason to focus on making the disk and the flange from a single piece. Information and accounting were ordered in full under Art. 67(1) with Art. 68(3) UPCA and Rule 191 RoP, and the panel fixed an eight-week compliance period. Publication under Art. 80 UPCA, the mutual interim awards on costs and enforcement security were all refused for want of substantiation.

DEUTSCH: 1. Ein als selbstständiger Nebenanspruch ausgestalteter Verfahrensanspruch und die entspre-chende Beschreibung können für die Bestimmung des Schutzbereichs eines selbstständigen Erzeugnisanspruchs nur insoweit relevant sein, als sich aus der Patentschrift Anhaltspunkte dafür ergeben, dass hiermit zugleich Eigenschaften des beanspruchten Erzeugnisses be-schrieben werden. 2. Eine die Benutzungsform des Herstellens umfassende Unterlassungsanordnung kann auch dann ergehen, wenn das patentverletzende Produkt bislang von einem Dritten außerhalb der Vertragsmitgliedsstaaten hergestellt wird. // ENGLISH: 1. An independent process claim and the corresponding description can only be relevant when determining the scope of protection of an independent product claim if the patent specification indicates that it also describes characteristics of the claimed product. 2. An injunction covering the making of a product may also be issued if the infringing product has so far been manufactured by a third party outside the contracting member states.

The Düsseldorf Local Division granted provisional measures against three Menarini distributors over EP 1 962 668 B1 (implantable sandwich sensor). On construction, the panel held that the patent is its own lexicon: the claimed electrode comprises the electrode system and the electrode contact layer as one multi-layer unit, and where a substrate has more than one width the width relevant to the entire-width feature is the width in the region of the electrode layers, not the bulk width. Because claim 1 is a product claim, the route of manufacture is in principle irrelevant; an independent process claim and the corresponding description bear on product-claim scope only where the specification indicates that they also describe properties of the claimed product (headnote 1). Validity was sufficiently certain under R. 211.2 RoP, priority was validly claimed and the novelty and inventive-step attacks failed, and the applicants had not delayed unreasonably under R. 211.4 RoP, there being no general market-monitoring duty. The injunction extends to making although the product is currently made by a third party outside the contracting member states (headnote 2); custody with a bailiff was ordered under R. 211.1(b) RoP; and the information order was granted only for origin and distribution channels, information serving the calculation of damages being outside the reach of provisional measures.

1. Der Begriff „derselben Erfindung“ in Artikel 87 EPÜ ist so auszulegen, dass eine beanspruchte Erfindung als dieselbe Erfindung wie die Erfindung in einer früheren Anmeldung anzusehen ist, wenn die Fachperson den Gegenstand des Anspruchs unter Verwendung des allgemeinen Fachwissens unmittelbar und eindeutig aus der früheren Anmeldung als Ganzes ableiten kann. Diese Norm entspricht dem Offenbarungsstandard für unzulässige Erweiterung (Bestätigung von Lokalkammer Düsseldorf, UPC_CFI_115/2024, Entscheidung v. 15.10.2025). 2. Sämtliche Angriffe gegen den Rechtsbestand des Streitpatents müssen nach der Verfahrensordnung grundsätzlich bereits mit der Nichtigkeitswiderklage in das Verfahren eingeführt werden. Die Behauptung einer fehlenden erfinderischen Tätigkeit auf Basis bereits im Verfahren befindlicher Dokumente erst in der mündlichen Verhandlung ist nicht zulässig. 3. Ein im Anspruch lediglich allgemein genannter Begriff kann ohne nähere Anhaltspunkte nicht auf eine Ausgestaltung beschränkt werden, wie sie im vom Streitpatent zitierten Stand der Technik beschrieben ist

The Hamburg Local Division found EP 2 476 814 B1 (loft ladder / hatch cover) infringed literally by four related FAKRO-group defendants and dismissed the counterclaim for revocation on every ground raised, including a late-stage attempt to introduce new prior art and a new inventive-step combination that the panel refused to admit under R. 263 RoP for want of due diligence. The decision restates that Art. 87 EPC's 'same invention' priority test mirrors the Art. 123(2) EPC added-matter disclosure standard, and that a broad claim term cannot be narrowed to a specific prior-art embodiment without textual support. Full relief was granted: injunction, recall, definitive removal, an Art. 67/68(3) UPCA information and accounting order, and a declaration of damages liability, with a modest interim damages award.

Düsseldorf LD dismissed infringement and partially granted revocation counterclaim for egg packaging patent. Two headnote holdings: (1) priority standard (Art. 87 EPC "same invention") = added matter standard (Art. 123(2) EPC) — directly and unambiguously derivable; (2) material selection from limited range of known suitable alternatives is not inventive. Patent maintained in amended form.

The Hague Local Division partially revoked a patent due to a lack of inventive step and dismissed the infringement action. Since the Defendant had already produced sufficient information, the Court dismissed a request for information under Rule 190 due to a lack of legal interest. The Court also decided on cost reimbursement and ordered the Claimant to compensate the largely prevailing Defendant; however, since the Defendant and Counterclaimant had also attacked the auxiliary request with which the patent was upheld, the Court subtracted 15%. The Court clarified that such compensation was in order because the Counterclaimant sought revocation of claims not asserted against it. The decision was published twice, once for the infringement action, once for the counterclaim for revocation.

If the patent is considered valid only in a form which is not claimed to be infringed, the patentee shall bear the costs of the counterclaim for revocation. However, if the counter claimant seeks revocation of claims not asserted against it, and those claims are upheld, a compensation of costs is in order, depending on the circumstances.

The Düsseldorf Local Division dismissed the infringement action as well as the corresponding counterclaim for revocation. The Court went into details regarding the parties' validity arguments. [To be amended]

1. In the case of a second medical use claim, a substance or composition within the meaning of Art. 54(4) EPC is used for any specific use which is not comprised in the state of the art. Such a therapeutic use can be a new indication, e.g. a disease not yet treated by the claimed substance, or an indication for a new group of patients. 2. For a finding of infringement of a second medical use claim, the alleged infringer must offer or place the medical product on the market in such way that it leads or may lead to the claimed therapeutic use of which the alleged infringer knows or reasonably should have known that it does. The requirements of such behaviour cannot be defined in an abstract manner but require an analysis of all relevant facts and circumstances of the patent claim in question. 3. In order to benefit from the notional novelty afforded by Art. 54(5) EPC, second medical use claims must relate to a specific use in a method according to Art. 53(c) EPC. The sole reason why such claims can still be patented is the novelty (and inventiveness) of the new use. 4. In terms of inventive step, the subject matter of the claim may be obvious if the skilled person would have been motivated to implement it as the next step in the view of the problem. A motivation to implement may be absent or negated if the skilled person is faced with many uncertainties or expected difficulties. If there is no motivation at all or a negated motivation, the subject matter of the claim is not obvious and involves an inventive step. 5. Objections based on pleading ignorance are in principle disregarded. The Rules of Procedure of the Unified Patent Court do not acknowledge this type of pleading.