Dynamics Updates
Court of Appeal Clarifies UPC rules on decisions by default
Suinno Mobile & AI Technologies Licensing Oy v Microsoft Corporation UPC_CoA_363/2025
Decision of 12 July 2025 ORD_32844/2025[1]
The UPC Court of Appeal has corrected a lower court’s misunderstanding of the requirements for a decision by default, and has ended Suinno’s litigation against Microsoft.
Background
Suinno asserted EP2671173 against Microsoft at the Paris Central Division of the UPC. The case has already generated a number of decisions. Microsoft objected that Suinno’s UPC representative did not possess the requisite independence, being also Suinno’s managing director and main shareholder. This resulted in the Court of Appeal clarifying the circumstances in which an employee cannot act before the UPC in respect of their employer.[2]
In addition, Microsoft sought security for costs against Suinno. This was ordered in the amount of €300,000,[3] but was not paid by Suinno.
Decision by default
Microsoft therefore sought a decision by default under Rule 355, which specifies that a decision by default may be given against a party which fails to take a step within the set time limit, where this is provided by the Rules of Procedure – in this case Rule 158(5) provides for a decision by default if the ordered security is not paid.
The Paris Central Division declined to grant a decision by default, referring to Rule 355(2), which requires that the facts put forward by the applicant must justify the remedy sought. In other words, the Court should satisfy itself that the non-defaulting party is entitled to the relief that it requests. While on its terms Rule 355(2) relates to the claimant, the Paris Central Division considered that this was applicable equally to the situation where it is the defendant seeking a decision by default. The Court considered that evidentiary findings acquired in the proceedings at the time of the default did not allow for a sufficiently confident assessment of the merits of the claims put forward by the non-defaulting party.
The Paris Central Division declined to grant Microsoft leave to appeal its order, and so Microsoft filed an application for discretionary review at the Court of Appeal under Rule 220.3.
Appeal
The Court of Appeal stated that the appeal was admissible and well-founded. The Court of Appeal considered that the Paris Central Division had erred in its interpretation of Rule 355(2), and stated that the rule does indeed, as its wording suggests, only apply where it is the claimant seeking the decision by default. By contrast, a decision by default can be issued against a defaulting claimant without examination of the merits. This understanding derives not only from the wording of the rule, but also from a consideration of the underlying rationale.
If the defendant defaults, the Court is still obliged to examine whether the claimant is entitled to the remedies that it seeks. If however it is the claimant who defaults, the Court can reject the claimant’s case without examining the substantive case.
Outcome
Therefore the Court of Appeal granted the decision by default against Suinno and dismissed the infringement action. This would appear to conclude this eventful litigation.
[1] https://www.unifiedpatentcourt.org/en/node/136361
[2] https://eip.com/us/latest/article/independence_of_representatives
[3]https://www.unifiedpatentcourt.org/en/node/1150 ; Suinno’s appeal was rejected https://www.unifiedpatentcourt.org/en/node/1177
Patent Dispute Resolved: JGL's Hoist Not Infringing
Jeff Gosling Limited (“JGL”) sued Autochair Limited in the IPEC for a declaration of non-infringement concerning its “Apex Assist” hoist and Autochair’s patent, which covers a particular set-up of a hoist for lifting wheelchairs and similar items into and out of vehicles. Despite Autochair arguing that there was infringement under normal construction, means essential and under the doctrine of equivalence, and the Judge agreeing that both experts were open to criticism, the conclusion was that JGL’s hoist was not an infringing product.
The patented hoist involves a lifting arm with a “projecting upper arm end section” which can be varied by height and length by “stepless adjustments”. This is shown in the patent as three “adjustments”, each of which is stepless. JGL’s hoist also has three adjustments, but “Adjustment 3”, which varies the length of the upper end section along with “Adjustment 1”, is not stepless. It is instead adjusted using screws that fit into set holes. The Judge found that therefore on a normal construction, the patent is not infringed as it requires all stepless adjustments.
Autochair’s next argument was that fitters of JGL’s hoist could (and suggested up to 30% would) secure Adjustment 3 outside of the set holes, instead tightening the screws against the extension to secure it by pressure alone creating a stepless extension, and that JGL should have known that, therefore the supply of the hoists would be indirect infringement by supplying means relating to an essential element of the invention. However, the 30% number put forward by Autochair’s expert was a general estimate of the number of fitters who would not follow the manufacturer’s instructions fully, not specifically those who would ignore the safety warnings about securing Adjustment 3 differently. Further, the Judge found that it would be obvious to JGL and any reasonable person that you should use the holes and that not to do so may be dangerous and void the warranty. He therefore found that indirect infringement was not made out.
Finally, Autochair argued that JGL’s hoist infringed the patent by the doctrine of equivalence. Essentially, they argued that the 10mm increment adjustment of JGL’s hoist achieved the same result as the stepless hoist described by the patent in the same way. However, the Judge found that part of the “result” of the inventive concept of the patent was “maximum manoeuvrability”, which was not achieved by JGL’s hoist, although it did potentially have better safety. Autochair’s equivalence argument therefore also failed.
An interesting point to note is the Judge’s comments on the two experts. JGL’s expert, Mr Shaw, was an engineer in the automotive industry and lectures in mechanical engineering. The Judge stated that Autochair’s criticisms that he had insufficient experience in the narrow field of hoists had weight. However, Autochair’s expert, while being much more specifically grounded in mobility aids, was criticized as being insufficiently independent, having worked for 20 years for a related company under the director of Autochair (who was also a witness). Despite these criticisms, the Judge did say that both experts provided useful evidence.
The decision is here.
UPC Court of Appeal Clarifies Limits on Security for Costs in Emboline v. AorticLab
In a significant ruling before the Unified Patent Court (UPC)[1], the Court of Appeal has clarified that a claimant in an infringement action cannot request security for costs from a defendant who files a counterclaim for revocation. The decision, issued on 20 June 2025 in Emboline, Inc. v. AorticLab srl, reinforces the principle of procedural fairness and access to justice within the UPC framework.
Background
The case arose from an infringement action brought by U.S.-based Emboline, Inc. (“Emboline”) against Italian medical device company AorticLab srl (“AorticLab”), concerning European Patent EP 2 129 425. In response, AorticLab filed a counterclaim for revocation of the patent. Emboline then sought an order requiring AorticLab to provide security for legal costs under Article 69(4) of the Unified Patent Court Agreement (UPCA).
The Munich local division made a security for costs order against AorticLab on the basis of Article 69 (4), which allows a defendant to request security for legal costs against a claimant. The Munich local division considered that in this case, Emboline is a claimant for the infringement action and a defendant of the revocation action. Therefore, Emboline was allowed to make a request for security against AorticLab in accordance with Article 69(4). However, it granted leave to appeal, and AorticLab appealed the order to the UPC Court of Appeal.
The Court’s Reasoning
The Court of Appeal considered the reasoning given by the Munich Local Division and allowed AroticLab’s appeal. The Court of Appeal gave explanations for dismissing Emboline’s request, offering a detailed interpretation of the UPCA and the Rules of Procedure (“RoP”) in its judgment:
Conclusion
The UPC Court of Appeal’s decision in Emboline v. AorticLab sets a clear precedent with several important consequences. By firmly rejecting the claimant’s attempt to impose security for costs on a defendant asserting a counterclaim for revocation, the Court has drawn a clear line around the protective scope of Article 69(4) UPCA. This decision has already begun to shape UPC case law as seen in Headwater Research LLC v. Motorola & Flextronics[2], where the Munich Local Division explicitly cited Emboline v. AorticLab to reaffirm that the rationale behind Article 69(4) UPCA is to protect defendants from the financial risks of litigation. As such, Emboline v. AorticLab is now firmly established as a foundational authority on the limits of security for costs under the UPCA.
[1] https://www.unifiedpatentcourt.org/en/node/125962
[2] https://www.unifiedpatentcourt.org/en/node/126192
UPC refuses extension of deadline for review of seizure order after refusal of service
Sichuan Yuanxing Rubber Co., Ltd. and China Council for the Promotion of International Trade, Automotive Sub Council
Order of 14 July 2025 (ORD_26742/2025 [1])
This article follows up on the UPC decision we previously reported here [2].
This Decision from the Local Division of the Unified Patent Court in Milan relates to EP3519207. Pirelli Tyre S.P.A. (“Pirelli”), was previously granted an order for evidential seizure of motorcycle tyres against Sichuan Yuanxing Rubber Co., Ltd. (“Sichuan”) and China Council for the Promotion of International Trade, Automotive Sub Council (“CCPIT”), to be served and carried out at the “International Motorcycle Exhibition” (“EICMA”) in Milan between 5 and 10 November 2024 (ORD_59754/2024 [3]). Pirelli subsequently brought proceedings on the merits against Sichuan and CCPIT, filing its statement of claim on 5 December 2024.
Sichuan requested a time extension after missing the deadline to seek a review of the order for seizure, pursuant to Rule 197.3 RoP, arguing that the order ORD_59754/2024 was not duly served.
The Court did not grant Sichuan’s request, indicating that according to Italian law, Sichuan’s refusal to accept the documents relating to the order amounted to valid service.
Sichuan’s request
On 3 June 2025, Sichuan filed an application pursuant to Rules 9 and 300 of the RoP, requesting an extension of time in order to be able to file a request for review of Order No. 59754/2024, pursuant to Rule 197.3 of the RoP. Sichuan argued that at the time of execution of the order, service had not been effected in accordance with the procedures stated in the order: in particular, Sichuan stated they did not receive a copy of the application, its annexes and the order, either at EICMA or subsequently.
The Court stated that Sichuan's request must be classified as a request for relief under Rule 320 RoP even though it was formally submitted by the applicant as based on Rules 9 and 300 of the Rules of Procedure, since Sichuan claimed that they were unable to comply with the 30-day time limit provided for in the combined provisions of Rules 212.3 and 197.3 RoP for reasons beyond their control.
The Court mentioned the recent decision of the Court of Appeal ORD_69091/2024, relating to remedying failure to meet a time period through re-establishment pursuant to Rule 320 RoP, which allows the Court to authorise the extension of time limits under certain conditions and, in any event, within pre-set time limits. The Court explained that the decision of treating Sichuan’s request as a request under Rule 320 RoP rather than under Rules 9 and 300 RoP, was reached to protect objective reasons of legal certainty, as to avoid unreasonably exposing the other party to a reopening of the time limits at a later date than their normal expiry: the existence of a specific rule in the Rules of Proceedings should take precedence over a more lenient general rule.
Decision
The Court stated that the enforcement of decisions and orders issued by the UPCA is governed by the law of the Contracting Member State where enforcement is sought, pursuant to Article 82.3 UPCA and Rule 354.1 RoP. As stated in the order for seizure dated 5 November 2024, the enforcement of ORD_59754/2024 was to take place at the EICMA Fair, in Rho, Milan, and therefore subject to Italian law.
Based on the report of service drawn up by the bailiff, Sichuan had been informed of the documents on 6 November 2024 but refused to accept them. The provision of Article 138 of the Italian Code of Civil Procedure was therefore taken to apply in the event of an attempt to serve a document: “if the addressee refuses to accept the copy, the bailiff shall record this in the report, and the service shall be deemed to have been effected in person”.
The Court did not grant Sichuan’s request for re-establishments of rights, further stating the stating that, under Rule 320.7 RoP, this decision cannot be appealed.
Related cases
At the same time as obtaining ORD_59754/2024 [3], Pirelli sought a preliminary injunction against Tianjin Kingtyre Group Co., Ltd. and Kingtyre Deutschland Gmbh (“Kingtyre”) for the alleged infringement of EP2519412 by Kingtyre at the same exhibition (ORD_59764/2024 [4]). The Local Division of the Unified Patent Court in Milan issued a seizure order to be served on Kingtyre at EICMA between 5 and 10 November 2024.
On 5 December 2024, Pirelli brought proceedings on the merits before the Milan Local Division on the matter relating to EP2519412. Pending the outcome of the proceedings on the merits, Pirelli and Kingtyre Deutschland GmbH entered into a settlement agreement, effective as of 25 February 2025, aimed at amicably settling the dispute.
By order of 15 July, 2025, ORD_24978/2025 [5], the Court acknowledged the settlement agreement concluded on 25 February 2025 between Pirelli and Kingtyre Deutschland Gmbh and suspended the litigation between Pirelli Tianjin Kingtyre Group Co., Ltd.. The settlement agreement was published in redacted form together with this decision, but the Court ordered the unredacted version of the settlement remain confidential. The Court also ordered the reimbursement of 30% of the total court fees to Pirelli, departing from the usual 60% (Rule 370.9(c) RoP) on the ground that there were two defendants.
[1] https://www.unified-patent-court.org/en/node/136370
[3] https://www.unified-patent-court.org/en/node/1293
UPC grants ‘in absentia’ permanent injunction on agricultural tool
Maschio Gaspardo S.p.A. v Spiridonakis Bros GP (UPC_CFI_513/2024 relating to EP1998604)
Order of 25 June 2025 (ORD_17812/2025 [1])
This Decision from the Central Division of the Unified Patent Court in Milan relates to EP1998604 (EP ‘604). The Applicant, Maschio Gaspardo S.p.A. (“MG”), requested a permanent injunction by Article 63(1) UPCA against Spiridonakis Bros GP (“Spiridonakis”), to prevent the sale and distribution of Spiridonakis’ ‘Bellota tool’.
Spiridonakis did not file an infringement defence, and the Court granted the requested permanent injunction, ordering Spiridonakis to refrain from any further acts of infringement, to provide MG with any information regarding the origin and the distribution channels of the infringing products, and to bear the legal costs of the proceedings and other expenses incurred by MG.
Decision ‘in absentia’
MG filed an action for patent infringement against Spiridonakis on 5 September 2024 with the Central Divisionin Milan. The alleged infringement relates to the sale and distribution of an agricultural tool by the Defendant under the name of ‘Bellota tool’. The ‘Bellota tool’ allegedly infringed EP1998604, validated in France, Turkey, Italy, Germany, Romania, Czech Republic and Bulgaria.
MG requested a decision by default under R. 355(1) RoP, based on Spiridonakis failing to file written submissions within the relevant time limit and failing to appear at the oral hearing. MG requested grant of a permanent injunction by Article 63(1) UPC in the contracting member states where EP ‘604 is valid.
The Court stated that a default decision against a Defendant is subject to:
The Court stated that it was apparent from the service notification that the statement of claim was validly served on Spiridonakis on January 2, 2025.
The Court also stated that Rule 355.2 imposes de minimis factual allegations for a decision to be issued in absentia, namely those set out in Rules 12 and 13 RoP. That is, reasonably providing the Court with the patent documentation, as well as all documents and evidence related to infringement and damages, if requested.
Furthermore, the Court found that bringing the action before the Central Division was justified since:
Validity
The Court did not find it was necessary to take a stand on patent invalidity, since this is not an issue that is raised by the Court ex officio, even in the case of a decision by default. According to the case law of the European Court of Justice (Case C-44/21), granted European patents enjoy a presumption of validity from the date of publication of their grant (cf. LD Munich, UPC_CFI_508/2023, 9 January 2025, air up v Guangzhou Aiyun).
Accordingly, EP ‘604 was presumed to be valid by the Court.
Infringement
EP ‘604 relates to a ‘reversible tool for agricultural subsoilers’. This is a tool that can be mounted on agricultural machinery to penetrate and break up compacted soil layers below the surface.
MG conducted two online purchases (on 19 July 2024 and 6 August 2024) through Spiridonakis’ website for delivery of the allegedly infringing ‘Bellota tool’ in Bulgaria. These products were labelled in the shipment receipts as “Spare parts nail riper nail Maschio” and “Spare parts for agricultural machinery”, according to automatic translations to English.
MG’s CTO inspected the accused products and submitted (together with photographic evidence) that they were almost identical in shape, dimensions, and features to the patented embodiment. A panel of judges of the Milan Central Division travelled to Cremona to visually assess the structure and operation of the original product sold by MG and the allegedly infringing product sold by Spiridonakis.
Moreover, it was noted by MG that the ‘Bellota tool’ on the website of Spiridonakis.com was marketed as a “Point Riper Maschio Bellota” tool, thereby evoking the name of the patent owner, Maschio Gaspardo, with the purpose of confusing the customer about the origin of the product. It was also submitted that the ‘Bellota tool’ also showed the product code R17622960, which is the distinguishing code of MG’s product.
MG stated that Spiridonakis is offering and placing on the market products having all the features of at least claims 1, 2, 3, 5, 6, 9, and 10 of patent EP ‘604, at least in Bulgaria, where EP ‘604 is valid. The Court decided that the statement of claim was sufficiently detailed and supported by consistent evidence, in line with the requirements of Rule 355.2.
The Court decided that that the infringing offer, sale and distribution of the ‘Bellota tool’ in Bulgaria was proven. While the Court primarily saw this as an act of primary infringement (Art. 25 UPCA), in the alternative the Court held that the requirements for indirect infringement (Art. 26 UPCA) with regard to double territoriality were met, since the attacked embodiment could be supplied at least in Bulgaria, where EP ‘604 is valid, and the ‘Bellota tool’ is shipped.
Order to Communicate Information
It was further submitted that that the allegedly infringing product bears the trademark of the company Bellota, suggesting that Spiridonakis’ allegedly infringing product is manufactured by the company Bellota. MG stated that they have a legitimate interest in understanding where the production takes place and who might be the infringing company, therefore justifying requesting the Court to order Spiridonakis to communicate, by Article 67(1) UPCA, information concerning the origin and distribution channels of the infringing products.
Decision
The Court found that the request from MG of ordering Spiridonakis to bear the legal costs of € 25,000 was well-founded under RoP 152, considering that the costs requested (€ 15,000 euro for the preparation of the case and € 10,000 euro for the oral hearing) were well below the minimum level of recoverable costs set out by the Presidium for an infringement action and appeared to be in line with the activity done by the legal representatives.
Accordingly, the Court granted the permanent injunction and ordered Spiridonakis refrain from any acts of infringement within UPC member states, and the payment of € 25,000 for legal costs and to refund the court fees paid by MG.
The Court also ordered Spiridonakis to communicate to MG information regarding the origin and the distribution channels of the infringing products, the quantities produced, delivered, ordered, the price related to the sales and the identity of any person involved in the production of the ‘Bellota tool’.