Summary of the Two UPC Cases

Paris Central Division of the Unified Patent Court

20 October 2025

00 : 05 – 33 : 00

Validity of a patent for a prosthetic heart valve (third-generation divisional application) in a revocation action, coupled with a counterclaim for infringement and determination of appropriate injunctive relief.

• Patent relates to a prosthetic heart valve
• Defendant Edwards filed 17 auxiliary requests and counterclaimed for infringement
• Patent as granted was revoked on grounds of intermediate generalization
• Auxiliary Request No. 2 survived and was found infringed by Meril’s Octacor and Octapro systems

• Front-loaded procedural system requiring all arguments and evidence in initial written pleadings
• Article 63 of UPCA regarding injunctive relief
• Article 64 of UPCA requiring proportionality consideration for other remedies
• Enforcement Directive 2004/48 and TRIPS Article 28 on legitimate interests of third parties

• General injunction granted against Meril’s infringing products, except for XL-size valves
• XL-size valve carve-out granted because it is the only available treatment for aortic annuli larger than 30mm
• Non-compliance penalty : €20,000 per infringement
• Recall and destruction of other valves within three weeks
• Costs split 50-50 for révocation ; Meril bears all infringement costs

• Landmark on proportionality in injunctions :Establishes that courts can tailor injunctive relief based on public health interests, but only where the infringing product is the sole treatment option or represents a notable clinical improvement
• Demonstrates the UPC’s flexibility to carve out injunctions temporally and substantively in health-critical contexts
• Clarifies procedural rules on late-filed arguments and the scope of Rule 9 ROP applications in pleading practice

Mannheim Local Division (first instance) and UPC Court of Appeal

14 October 2025 (Court of Appeal decision)

00 : 33 to the end

• Fujifilm filed an infringement action against Kodak before the Mannheim Local Division
• Mannheim Local Division ruled in favor of Fujifilm in April 2025, granting injunction with penalty but refusing penalties for other measures (information, destruction, recall, removal)
• Kodak continued selling infringing products despite injunction
• Judge rapporteur ordered Kodak to pay €100,000 for non-compliance and set further penalties
• Both parties appealed the enforcement order

• Rule 354.3 ROP: provides that penalty orders may be issued separately in later orders
• Rule 118.8 ROP : enforcement notice procedures
• Estoppel principle does not apply to procedural rules
• French astreinte system (penalty system) as reference

• €100,000 penalty overturned:Court cannot impose penalties without prior penalty order in initial decision
• Penalties can be issued in later orders:Courts may associate penalties with prior orders through subsequent decisions, regardless of whether penalties were previously requested and rejected
• Future penalties upheld:Court can set penalties for future non-compliance even if not included in original order
• Evidence measures: Courts may order any evidentiary measure (e.g., bailiff confirmation) without specific legal basis

• Establishes UPC penalty system framework:Clarifies that penalties can be structured as lump sums or per specified time period/item/act, preferably the latter
• Flexibility in enforcement:Courts retain discretion to issue penalty orders separately and may deviate from calculated penalty amounts based on circumstances
• Procedural clarity:Penalties are never automatic and claimant must request court enforcement, and burden of proof for compliance lies with defendant
• Adopts French/Belgian astreintemodel: UPC penalty system mirrors established continental practice, familiar to French and Belgian practitioners