Dynamics Updates
Applying Ocado, the UPC grants a R262 request to access CFI documents
NJOY Netherlands B.V v Juul Labs International, Inc (UPC_CFI_309/2023)
Order issued 9 June 2025 (ORD_27305/2025) [1]
The Paris Central Division revoked Juul Lab’s patent EP 3 498 115 B1 by decision dated 5th November 2024 (UPC CFI 309 /2023). [2] Juul Labs subsequently appealed the decision, and while the appeal remains pending, a firm of lawyers and patent attorneys (“the Applicant”) lodged a request under Rule 262.1(b) on 21 February 2025 to access pleadings and evidence in the first instance proceedings. Juul Labs requested that the Court rejects the request, and alternatively, if the Court does grant the request, it should grant access only with a restriction ‘from filing the written pleadings or parts of them with other courts or judicial instances.’
The Law
Rule 262.1(b) states that written pleadings and evidence lodged at the Court and recorded by the Registry shall be available to the public upon ‘reasoned request’ to the Registry; the decision is taken by the judge-rapporteur after consulting the parties. A ‘reasoned request’ is one where an applicant explains why their access to the specified documents is necessary and legitimate. A party to the litigation may request that certain information in written pleadings or evidence be kept confidential and provide specific reasons for such confidentiality.
The Court of Appeal in Ocado v Autostore (UPC_CoA_404/2023)[3] expanded on Rule 262, finding that when there is a request made by a member of public to access court documents, the interests of a member of the public must be weighed against the interests mentioned in Articles 10 and 45 UPCA. Articles 10 and 45 govern the general principle that first instance and appeal proceedings shall be open to the public unless the Court decides to make them confidential, to the extent necessary, in the interest of one of the parties or other affected persons, or in the general interest of justice or public order.
The Applicant’s interest
The Applicants' interest is one of access to precedent. As a German IP firm, they submit that they represent various clients in revocation proceedings before the UPC which have ‘comparable subject matter’ to the first instance decision. For this reason, they argue their request is justified because they intend to obtain a ‘comprehensive picture of the line of arguments that led to the Court’s decision’ (para 3.7).
The Defendant’s interest
Juul Labs argued that, despite their claim to represent other UPC parties in revocation cases with ‘comparable subject matter,’ the Applicant has no legitimate interest in the subject matter of the present case. Juul Labs alleged that the Applicant would likely ‘copy-paste’ extracts from the written pleadings and evidence to reproduce into EPO oppositions or other court proceedings, leading to third party access of such material without lodging a reasoned request with the UPC, thereby contravening the interests of the parties and the UPCA principles to keep relevant materials confidential.
Decision
Per Ocado v Autostore, the Court must undergo a weighing of the balance of interests. The Court found that the Applicant had submitted a reasonable request; their intention to obtain a greater understanding of the arguments that led to the Court’s decision was justifiable. The Court did not find Juul Labs’ arguments to be capable of shifting the balance of interest towards withholding the case documents, and the Court found their denouncement of the Applicant’s legitimate interest insufficient. Juul Labs’ concerns about the potential misuse of documents in other jurisdictions were also dismissed. The Court clarified that the general position as found in Articles 10 and 45 is that ‘the register is public and proceedings are open to the public, unless the balance of interest involved is such that they are to be kept confidential’ (para 4.4). Quoting Ocado v Autostore (para 50), the Court clarified that withholding access to documents once a judgment has been published no longer serves the purpose of protecting the integrity of proceedings, as the publicly available decision will contain the relevant arguments and evidence presented by the parties and thus already subject to public debate.
The Court granted the Applicant access to written pleadings and evidence, with appropriate redaction of personal data. However, the Court also granted Juul Labs leave to appeal and suspended the effects of the order until the deadline for filing an appeal, or if an appeal is filed, until the end of the appeal proceedings.
[1] https://www.unified-patent-court.org/en/node/125754
UPC decides that the formalities of withdrawal of opt out do not matter
Dolby International AB v. Epson France SAS UPC_CFI_77/2025
Order of 27 May 2025 ORD_18316/2025[1]
The Hamburg Local Division of the UPC has decided that a withdrawal of opt out from the UPC is valid, even though it did not comply with the clear, albeit arguably over-strict, rules of procedure.
Epson filed a preliminary objection in the infringement action filed against it by Dolby, arguing that the withdrawal of opt out of the patent from the competence of the UPC was defective.
Rule 5.1(b) RoP requires that an “Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application”. That is, it must include ALL the states designated at grant, not only those in which the patent has remained in force, or in respect of which a validation procedure has been carried out.
Rule 5.7 RoP then goes on to say that a withdrawal of the opt out must be “not in respect of different states for which the European patent has been granted or which have been designated in the application”. Thus again, all states must be listed.
In the opt out of the patent in suit, the opt out was correctly requested in respect of all 38 EPC member states in respect of which the patent was granted, but when the withdrawal of opt out was subsequently requested, the withdrawal document that was filed only named DE, ES, FR, GB, IT and NL.
The preliminary objection was decided by the judge-rapporteur as sole judge, who held that the withdrawal was nevertheless valid. The judge-rapporteur relied on the fact that during the process of submitting the opt out and the withdrawal of opt out, all the countries designated in the application at grant are automatically listed in the CMS (taking the data from the EPO Register). Therefore, it was considered that the declaration submitted at the end of the CMS process implicitly refers to all such countries. Therefore, the lack of listing of all the countries in the withdrawal document was not a fatal deficiency. Alternatively, it was considered that the withdrawal of opt out inherently refers back to the opt out itself, and therefore must be taken to refer to the same countries.
Accordingly, the preliminary objection was rejected and the infringement action will continue, although the order could be appealed.
This decision does not reflect what the UPC Rules of Procedure actually say. However, it is consistent with the UPC’s general reluctance to conclude that it lacks jurisdiction.
Paris Local Division rules on validity of juicer patent, scope of R. 19 RoP
Hurom Co., Ltd v. NUC Electronics Co., Ltd, NUC Electronics Europe GmbH & Warmcook (UPC_CFI_163/2024)
Order of 23 May 2025 (Order no. ORD_69293/2024[1] relating to EP 3 155 936)
The Paris Local Division of the Court of First Instance ruled on an infringement case concerning a patent for a juicer. On validity, unconditional amendments by the Claimant were found not to add matter, but the patent was held invalid for lack of inventive step. Further, the Court held that the Defendant’s objection based on Art. 34 UPCA did not fall within the scope of R. 19 RoP. The Claimant’s request for infringement remedies in Poland, not a participant in the UPC, was admissible, but unsubstantiated.
Background
The Claimant, Hurom Co., Ltd (“Hurom”), lodged an infringement action at the Paris Local Division against the Defendants, NUC Electronics Co. (“NUC”), NUC Electronics Europe GmbH (“NUC”) and Warmcook, in respect of patent EP 3 155 936 (“EP ‘936”). NUC Electronics Co., Ltd, based in South Korea, is the parent company of the NUC Group, a designer, manufacturer and distributer of kitchen appliances (sold under the “Kuvings” name), while NUC Electronics Europe GmbH is a German subsidiary of the NUC group, responsible for the sale of NUC products in Germany. Warmcook is a French company, independent of the NUC Group, and acts as an importer and distributer of kitchen appliances including NUC juicers. The three Defendants were represented by the same attorneys.
No preliminary objection was raised under R. 19 RoP in response to the infringement action. The Defendants filed a statement of defence with a counterclaim for revocation. In its reply to the statement of defence and its defence to the counterclaim, the Claimant rebutted the arguments for revocation of the patent and filed an application to unconditionally amend the patent, as well as an auxiliary request with further amendment.
Patent
The patent relates to a juice squeezing module for a juicer. Specifically, the juice squeezing module improves the structure of a brush rotating means for driving a rotating brush. In use, the rotating brush continuously brushes an inner peripheral surface of a juice squeezing drum and an outer peripheral surface of a screen drum, which helps to clear remnants from the juicer.
Hurom unconditionally amended claim 1 to include subject matter that was contained, at least in part, in claims 1, 2 and 3 of the patent as granted. These features describe the specific gearing arrangement of the brush rotating means.
Validity of the patent (as unconditionally amended)
Added matter
The Defendants objected to the patent as unconditionally amended on the basis that the amended claims contained subject matter which extended beyond the contents of the patent application as filed. Hurom disputed this argument.
The Defendants argued that one of the features of the amended claim 1, directed at the position of the brush rotating means, had the effect of introducing a feature to claim 1 that partially defines an embodiment described in the original application but omits several specific and essential features of the embodiment, therefore resulting in an unallowable intermediate generalisation of the application as filed. However, the Court rejected this attack, determining that the disputed feature in the claim was disclosed in the application as filed, and the missing features of the embodiment were not inextricably linked with that included in the claim. As a consequence, it was held that the amendment did not add matter.
Another dispute hinged on interpretation of the phrase ‘connected to’, which was used in the amended claims. The original wording of claim 3 defined a configuration in which a first shaft gear is ‘interposed between’ the driving shaft and the power connector. This wording is repeated in the detailed description with reference to a first embodiment. A second embodiment used the phrasing ‘engaged’. The Defendants argued that the term “connected to” represented a generalisation of the scope of the application as filed. The Claimant responded that the term ‘interposed’ should be interpreted more broadly, and in fact already covers both embodiments. The Court considered that the skilled person would regard the term ‘connected’ as an appropriate concept that covers both embodiments, justifying this conclusion with, amongst other things, a statement in the description that the structure of the brush rotating means may be freely varied.
Further added matter objections directed at the dependent claims were also rejected by the Court. The Court rejected the Defendants’ apparent argument that, for each amendment, the features should be literally present in the application – the Court held that this would be an unduly strict criterion, and considered that features can be unambiguously derivable from the application as filed without requiring verbatim basis.
Inventive step
Notwithstanding the failed added matter attacks, each of the unconditionally amended claims were held to lack inventive step over CN 202365584 U in view of KR 20130016748 A.
Auxiliary request
The Claimant requested an additional set of amended claims. However, these were a combination of features in the above claims that were already found to lack inventive step, and so no further discussion of the auxiliary request was deemed necessary.
Jurisdiction of the UPC concerning infringement in Poland
Hurom requested that the Court rule on an injunction and remedies concerning infringement in Poland (which is not a participant in the UPC) on the basis of the patent as granted. The Court noted that the Polish part of EP ’936 could not be revoked by the UPC, nor amended. Accordingly, the only possible request concerning the acts of infringement must relate to the patent as granted.
The Defendants argued in its statement of defence that the UPC lacks jurisdiction under Art. 34 UPCA to rule on injunctions and remedies concerning acts of infringement committed in Poland. Hurom responded that the objection should have been raised as a preliminary objection pursuant to R. 19 RoP within one month of the service of the statement of claim, and so the Defendants’ objection is late and should be declared inadmissible. The Court determined that a preliminary objection under R. 19 RoP is limited to three matters: the jurisdiction and competence of the UPC, the competence of a division and the language of the statement of claim. Under R. 19 RoP, the international jurisdiction of the UPC (Art. 31 UPCA), the substantive jurisdiction of the UPC (Art. 32 UPCA and the territorial jurisdiction amongst divisions (Art. 33 UPCA) may be challenged. The Court held that the objection raised by the Defendants related to the territorial scope of a UPC decision (Art. 34 UPCA), rather than the jurisdiction of the UPC, and so R. 19 RoP did not apply. The Defendants’ objection was therefore deemed admissible.
Hurom’s claim concerning alleged infringement in Poland was deemed admissible. However, on the merits, the Court decided that the Claimant did not produce sufficient evidence relating to alleged infringement by the products in question – the Claimant only alleged that the Kuvings and Warmcook websites are accessible throughout Europe, and the turnover figures Hurom provided did not give any indication as to whether they relate to the allegedly infringing products. Consequently, Hurom’s claim for infringement based on the Polish part of the patent was not considered to be well-founded, and so the claim was dismissed.
The infringement action did not concern itself with the UK part of the patent.
Decision
EP ’936 was therefore revoked in the Netherlands, France, Germany and Italy. Hurom was ordered to pay the costs of the proceedings in their entirety.
Unified Patent Court: The Impact of Brexit
The Unified Patent Court (UPC) now has jurisdiction over 18 of the 27 EU states and advertises itself as an EU court but is there any prospect of the UK getting involved in the Unified Patent Court without rejoining the EU?
There have been several unintended consequences of Brexit. As an anti-Brexit person, I must declare myself at the start. One of the big tragedies from our point of view was that the Unified Patent Court had been 30 years in the gestation. I am old enough to remember when it was first mooted. The UK profession, including solicitors, barristers, judges, and the patent office, played a significant role in developing the rules for the Unified Patent Court.
To have the rug pulled out from under us at the last minute was a great pity. The end result has been that Germany is by far the most dominant jurisdiction, with over 90% of the cases now filed in the German divisions. While the UK might not have received half of those cases, it would have received a good chunk. The significance of this is that UK notions and English law, which we spent the last 200 years developing, would have been part of the system. The fact that it is not part of that system is a great tragedy.I know at least one prominent ex judge who believes that the UK could be part of the UPC without having to rejoin. I'm sure we would want to join it, the fact that we are not there is lacking. The UK is a leading patent jurisdiction. Clients like coming here. I mean, for one thing, not having the UK judges there and not having their thoughts on FRAND issues is a great missed opportunity, especially as many of these judges shaped FRAND.
A lot of Standard Essential Patent (SEP) cases are currently being filed in the UPC, and it remains to be seen how the UPC will deal with the Fair, Reasonable, and Non-Discriminatory (FRAND) valuation issues. Will they adopt the German model of simply determining who is the friendliest, or will they conduct a detailed valuation? If they opt for a detailed valuation, how will they do it? This remains to be seen.
Hear more about SEPs—including the landmark Optis v Apple ruling—in the latest episode of EIP Talks. We bring you the inside story from the team behind the landmark Optis v Apple judgment—now the highest-value court-determined SEP license on record. We also explore what this means for FRAND litigation, the future of SEP enforcement in the UK and how this ruling could impact global licensing dynamics.
Lionra Technologies Ltd. v Cisco Systems GmbH and Cisco Systems, Inc.
UPC_CFI_58/2024
Following a decision, a successful party has one month to apply for a costs decision (Rule 151). In the relevant case, the main decision (dated 19 February 2025) stated that the plaintiff, Lionra, should bear 40% of the costs and the defendants, Cisco, 60%, thereby requiring both of them to apply for a costs decision in order to claim their portion of the costs. Cisco successfully filed an application for a determination of the costs on 19 March 2025, the final day within the deadline. Lionra, however, did not make an application until 27 March 2025, along with two alternative applications – for a retrospective extension of the deadline under Rule 9.3(a), or reinstatement of the application for determination of the costs despite the missed deadline under Rule 320.
The application for retrospective extension of the deadline was dismissed without reference to the facts. Although retrospective extension is allowed under Rule 9.3(a), it does not allow the application to be made retrospectively. Instead, the court states that this rule allows that, when an application is made before the deadline has expired but has not been decided until the deadline has expired, the extension can be made retrospectively.
The application for reinstatement, however, does depend on the facts. Reinstatement can only happen in circumstances where the cause for missing the deadline was outside the control of the party (and, by extension, the named representative) despite “all due care having been taken by the party”. In this case, the deadline was accidentally not recorded by the paralegal at the law firm responsible for Lionra’s case. Lionra’s named representative presented detailed evidence of their firm’s procedures for recording deadlines, which included the initial recording by an experienced paralegal, a second employee checking all recorded deadlines, and further spot checks by partners of the firm. The second employee did not spot the missed recordal, and no spot check was carried out in this instance. The named representative was notified on 20 March 2025, the day after the deadline expired, that Cisco had filed its application the day before.
The Court cited the Unitary Patent System by Luginbühl and Hüttermann as showing that “due care” can be established if the missed deadline is due to “an isolated error within a normally satisfactory monitoring system”. The Court further found that Lionra’s evidence satisfied this level of care and was out of their control, and that therefore the mistake should not adversely affect Lionra.
The application for determination of the costs of Lionra was therefore accepted, and the costs of both Lionra and Cisco will be determined
.