Summary of the Four UPC Cases

Paris Local Division

24 October 2025

00 : 25 to 10 : 12

Whether a single covering element with crenellated portions is equivalent to a patented design requiring two covering elements and spacer elements

• Patent claims a gutter with two covering elements and two spacer elements (Feature 1.3)
• Allegedly infringing product uses single covering element with crenellated (castle-like) form
• Both designs claim to facilitate water evacuation
• During patent examination, RPN had limited claims to exclude single-element arrangements to overcome novelty objections

• Examination history estoppel
• UPC harmonized approach to equivalence (per Mannheim decision)
• Function-based equivalence test requiring: same function, same results, credible function, and function essential to invention

• No equivalent infringement found
• No literal infringement (single element explicitly excluded during examination)
• No equivalent infringement because the alleged function (improved water evacuation) was not actually described in the patent, the patent only addressed setup and aesthetic issues

• Clarifies that examination history cannot be overcome and that alleged functions must be credible and deducible from the patent specification itself
• Sets important precedent that UPC applies harmonized equivalence test when parties don’t agree on a national test

Düsseldorf Local Division

30 October 2025

10 : 19 – 16 : 33

Whether court should grant ex parte order to inspect and preserve evidence of allegedly infringing device exhibited at trade fair without hearing the defendant

• Van Dun owns patent on counter-current screening device
• Competitor Inverkorg planned to exhibit allegedly infringing device at Cologne trade fair
• Warning letter sent before trade fair; defendant filed protective letters but made only general denials
• Van Dun sought authorization to inspect device and preserve evidence through detailed description or physical seizure
• Trade fair provided limited timeframe for action

• Rule 192 and 199 of RoP (Preservation of Evidence and Inspection)
• Ex parte proceedings standards requiring demonstration of credibility of infringement and urgency/risk of evidence destruction

• Ex parte order granted based on:
  • Credible evidence of potential infringement demonstrated through photographs and technical analysis
  • Protective letters did not contain specific denials of infringement
  • Urgency demonstrated: product not easily available through normal distribution channels ; risk that product would not be brought to trade fair or would be removed
  • Protective letters did not preclude ex parte proceeding as they lacked substantive objections

• Demonstrates German local divisions take liberal approach to granting ex parte preservation orders
• Shows that risk of evidence unavailability (not just destruction) and practical difficulties in accessing products can justify ex parte proceedings
• Lower threshold than preliminary injunction

Paris Local Division

30 October 2025

16 : 37 – 27 : 32

• Whether UPC has jurisdiction to assess whether licensing offer is FRAND (Fair, Reasonable and Non-Discriminatory)
• Whether Paris Local Division has territorial competence when defendant not domiciled in Franc

• Sun Patent owns standard essential patent (SEP) for telecom technology
• Vivo manufactures mobile phones, purchased through French website
• Infringement action filed in April 2025
• SunPatent requested court to : (a) recognize infringement, (b) rule licensing offer was FRAND or adjust terms, (c) order injunction if no FRAND agreement reached
• Vivo filed preliminary objection claiming lack of jurisdiction on both material and territorial grounds
• Dutch invalidity proceedings initiated before UPC (September 2025)

• Article 32 UPCA (scope of UPC jurisdiction)
• Article 33.1 UPCA (territorial competence of local divisions)
• ECJ case law : Huawei v. ZTE– injunctions against SEP use constitute abuse of dominant position unless FRAND terms offered
• Rule 19.1 ROP (material and territorial jurisdiction objections)

• UPC has both material and territorial jurisdiction:
  • Material Jurisdiction: Main claim is infringement action (Article 32 UPCA). FRAND assessment is incidental to infringement claim, not separate claim. Applicant anticipated defendant’s FRAND defense. UPC can rule on FRAND matters when incidental to listed action in Article 32. No standalone jurisdiction to assess FRAND outside infringement context.
  • Territorial Jurisdiction: Paris Local Division competent under Article 33.1(a) because infringement occurred in France (website offer, delivery on French territory). Defendant’s domicile (Article 33.1(b)) is not required if infringement location established.

• Important clarification that: (1) UPC can assess FRAND terms only when incidental to infringement or other Article 32 actions
• Cannot use UPC for standalone FRAND assessment
• Territorial competence based on infringement location (not defendant domicile) for e-commerce transactions
• Anticipatory pleading of FRAND defense is proper litigation strategy

Brussels Local Division

12 November 2025

27 : 40 to the end

Whether ex parte order for preserving evidence was properly granted and whether execution-phase issues can be reviewed; scope of permissible evidence gathering

• Genentech filed preservation order application 6 May 2025
• Organon initiated Dutch national invalidity proceedings 18 May 2025
• Order granted 30 May ; executed June 2025 via bailiff and patent attorney at two Organon premises
• Organon filed review request July 2025 seeking order revocation and document destruction
• Patent allegedly infringed by biosimilar drug not yet marketing-authorized
• Organon claimed : (a) order should be contradictory not ex parte ; (b) order too broad; (c) order wouldn’t have been granted in inter partes proceedings ; (d) evidence gathered not relevant ; (e) legal impropriety regarding counsel access

• Rule 192.3 ROP (applicant duty to disclose material facts influencing ex parte decision)
• Rule 197.3 ROP (review of preservation orders)
• Article 60 UPCA (« about to be infringed » standard)
• Double assessment framework: (1) Was ex parte decision correct at issuance ? (2) Should order be confirmed, modified, or revoked ?
• Temporal limitation : assess based on order issuance date, not execution date

• Order properly granted and review request dismissed:
  • Ex Parte Nature : Urgency not prerequisite but one element. Risk of evidence unavailability (not just destruction) sufficient to warrant ex parte order. Marketing authorization application for biosimilar drug constitutes « about to be infringed » under Article 60, even if not yet authorized. Regulatory environment (strong preservation obligations) does not eliminate risk—defendant could relocate evidence between premises.
  • « About to be Infringed » Standard :Standalone threshold (distinct from urgency/threatened infringement) proven by plausibility. Lower standard than infringement action or preliminary injunction. Marketing authorization application alone sufficient.
  • Scope of Order: Order not limited to specific claim features just because applicant had evidence for some features. No restriction once reasonably available evidence of infringement demonstrated. Proportionality not required to narrow scope.
  • Execution Issues : Legal representation not prerequisite to execution. Order’s prohibition on execution delays justified to prevent evidence concealment. Execution-phase complaints cannot be reviewed under Rule 197.3; must be addressed through separate proceedings or merits assessment.
  • Patent Validity : Not relevant in review proceedings (irrelevant whether patent obviously invalid).

Landmark decision establishing :

• « About to be infringed » has lower threshold than infringement or preliminary injunction
• Risk of evidence unavailability alone can justify ex parte orders
• Double assessment framework clarifies review scope and temporal boundaries
• Execution-phase challenges must follow separate procedures, not Rule 197.3 review
• Applicant has broad scope for evidence gathering once threshold met
• First major decision on preservation order review procedures under UPC