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.

[1] https://www.unified-patent-court.org/en/node/124296

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.

Listen to the episode

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

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Court of First Instance Order dated 8 May 2025 ORD_18599/2025 [1]

Summary

The Application for a PI by the Applicant, Boehringer, against the Defendant, Zentiva, was denied by the Court of First Instance. The Court did not find evidence to suggest a risk of imminent infringement of the Patent, relating to products containing nintedanib, based on Articles 25 and 62 UPCA. Boehringer was ordered to pay Zentiva EUR 92,944.15 in recoverable costs.

Background

The Applicant Boehringer Ingelheim International GMBH (hereinafter “Boehringer”) is the co-proprietor of European patent number EP1830843 (hereinafter “the Patent”), entitled “Indolidone derivatives for the treatment or prevention of fibrotic diseases”. The Patent relates to products containing nintedanib or nintedanib esylate, a small molecule tyrosine kinase inhibitor, for use in the prevention or treatment of idiopathic pulmonary fibrosis.

The Defendant Zentiva Portugal, LDA (hereinafter “Zentiva”) is a Portuguese pharmaceutical company holding two Marketing Authorisations (hereinafter “MA”) in Portugal for generic medicines comprising nintedanib (hereinafter “Zentiva Generics”).

In January 2025, Applicant Boehringer applied for a provisional injunction (hereinafter “PI”) against Defendant Zentiva before the Lisbon Local Division of the UPC. The Applicant alleged that the Patent was at risk of imminent infringement since 12 December 2024, which marked the announcement by INFARMED – National Authority of Medicines and Health Products, I.P. (hereinafter “Infarmed”) that Zentiva Generics could be purchased.

In March 2025, the Defendant denied the risk of imminent infringement and raised an objection to the competence of the UPC. The Defendant also requested a stay of proceedings due to a parallel application before the Lisbon Intellectual Property Court. Following the grant for a PI in the parallel application before the Portuguese Intellectual Property Court, the Defendant withdrew their request for a stay of the proceedings.

Order Sought by the Parties

The Applicant requested that the Court order the Defendant to refrain from making, offering, placing on the market or using, or importing or storing for those purposes any product comprising nintedanib or nintedanib esylate for use in the prevention or treatment of idiopathic pulmonary fibrosis, where the patent is in force: Austria; Belgium; Bulgaria; Denmark; Estonia; Finland; France; Germany; Italy; Latvia; Lithuania; Luxembourg; Netherlands; Portugal; Romania; Slovenia; and Sweden. They also requested documentation relating to the quantities of Zentiva Generics ordered, imported, stored and supplied. The Applicant sought for the Defendant to pay a penalty payment of EUR 250,000 for any violation of the order, as well as paying the interim costs of the proceedings.

The Defendant requested that the Court decline jurisdiction over the Application and dismiss it as inadmissible, or dismiss the Application and impose the costs of proceedings on the Applicant.

Grounds for the Order

The Defendant objected to the jurisdiction of the UPC, arguing that only a Portuguese administrative court is competent to hear the case due to the allegation of imminent infringement arising from an act carried out by a public administrative body (Infarmed). However, this objection was deemed to be unfounded due to the UPC having jurisdiction and competence under Articles 31 and 32 (UPCA).

Article 31 establishes the international jurisdiction of the UPC in accordance with Regulation (EU) No 1215/2012. Article 32(1) outlines the competence of the court, including in respect of actions for: actual or threatened infringements of patents (a); and provisional measures/injunctions (c). Overall, the assertion of imminent infringement of the Patent is sufficient to establish the jurisdiction and competence of the UPC.

2. Relevance of the Portuguese Court Order to this PI

The Defendant alleged that the Application for a PI has no legal basis, arguing that they are already prevented from carrying out activities relating to the Patent due to a PI being granted in a Portuguese Court Order, relating to SPC No.679, which expires later than the Patent. However, the Court found no basis for this request for at least the following reasons. Firstly, the present PI applies to all Contracting Member States of the UPC whilst the Portuguese PI is restricted to Portugal. Secondly, the Portuguese Court Order has potential to be appealed, as well as being granted on a prima facie basis. Also, the IP right itself has potential to be judicially amended or revoked.

3. Imminent Infringement

The Applicant argued that there is an imminent risk of infringement due to an alleged risk of the Defendant offering/placing Zentiva Generics on the market. Article 25 UPCA states that such acts would be acts of infringement and Article 62 UPCA states that the Court can grant injunctions to prevent imminent infringement.

Although it is undisputed among the parties that the Zentiva Generics medicine falls within the scope of the Patent, the Court states that administrative procedures and legislation associated with gaining market access for a medicine, which vary within each Contracting Member State, are not the basis on which the Court’s assessment of imminent infringement should be made. Rather, the Court must assess the risk based on Articles 25 and 62 UPCA.

It must be established, under Article 25 UPCA, that the acts of the potential infringer are more likely than not to intend to offer/place the product on the market prior to the expiration of the patent in question.[2] The Applicant bears the burden of proof that the Defendant is highly likely to enter the market.

Specifically, the Applicant alleged that the risk of infringement stems from the Defendant obtaining two marketing authorisations (hereinafter “MA”), and then pursuing and obtaining a Prior Evaluation Procedure (hereinafter “PEP”), whose grant represents the final administrative step necessary for the Defendant to offer and sell its product to the public hospitals.

The Court held that in this situation the issuance of the PEP in itself does not create a risk of infringement. Rather, Articles 25 and 62 UPCA require the risk to stem from the Defendant’s actions. Furthermore, the timing of the PEP was not considered by the Court to increase the risk of infringement. The Applicant further argued that there was evidence of imminent infringement in the Notice of 12 December 2024 by Infarmed announcing that the PEP had been completed, which set a one-year time limit to commercialise Zentiva Generics. However, the Defendant contested the relevance of the timing and the Court agreed that this did not indicate imminent infringement.

The Court also rejected allegations of imminent infringement in respect of possible sales to private hospitals, which would have been possible since the granting of the MAs on 30 August 2024. The Court considered that the Applicant had not demonstrated any conduct by the Defendant in that time making imminent infringement likely.

Overall, the request for a PI was dismissed because no imminent infringement could be demonstrated by the Applicant.

Value of the Case

The value of the case was set to EUR 1,000,000, in accordance with the Guidelines for the Determination of the Court Fees and the Ceiling for Recoverable Costs.[3] The Court also stated that due to the Application relating to provisional measures, the value of the case only relates to recoverable costs whilst Court fees are fixed.

Costs

Although the Defendant requested that provisional costs be set at EUR 250,000, only EUR 92,944.15 was substantiated. Therefore, the Court ordered the Applicant to pay the Defendant EUR 92,944.15 in costs, which falls within the recoverable costs ceiling as set by the Administrative Committee (which is EUR 112,000 for a value of proceedings being EUR 1,000,000).[4]

This decision falls in line with Article 69 UPCA, which provides that the losing party must bear the successful party’s costs, including reasonable and proportionate legal costs, in the absence of exceptional circumstances.

[1] The Order: https://www.unified-patent-court.org/en/node/118300

[2] Novartis/Genentech v. Celltrion, UPC_CFI_166/2024: https://www.unified-patent-court.org/en/node/1061

[3] https://www.unified-patent-court.org/sites/default/files/upc_documents/d-ac_09_24042023_guidelines_e_for-publication.pdf

[4] https://www.unified-patent-court.org/sites/default/files/upc_documents/d-ac_10_24042023_ceiling_e_for-publication.pdf