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Kather Augenstein Achieves Gold Rankings in IAM Patent 1000 Germany 2026 for Infringement and UPC Excellence

We are delighted to announce that Kather Augenstein has again been recognised with a Gold ranking for  Infringement in the prestigious IAM Patent 1000 – The World’s Leading Patent Professionals guide. The annual ranking highlights the world’s leading patent firms and practitioners who ensure exceptional expertise, strategic excellence, and outstanding client service in patent law.

IAM Patent 1000 particularly recognises Kather Augenstein’s expertise to handle highly technical and strategically complex patent disputes on an international scale. The guide highlights the firm’s sophisticated case management, effective coordination of parallel proceedings, and innovative litigation strategies, strengths that have proven especially valuable before the Unified Patent Court (UPC).

We are also proud that our partners and counsel have again received individual recognition in the IAM Patent 1000 rankings, reflecting the depth and strength of our patent litigation team.

In addition to the Gold ranking for Infringement, we are especially pleased that Kather Augenstein has again achieved Gold status in the Unified Patent Court (UPC) category, placing our firm among an exclusive group of law firms recognised with the highest distinction in this field. 

These distinctions reflect the dedication, expertise and collaborative spirit of our entire team. We thank our clients for their continued trust and look forward to supporting them in strategically significant and technically complex patent disputes across Europe and beyond.

Please find further information about the IAM Patent 1000 Ranking 2026 here.

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Admissibility of asserting a limited version of a patent claim in proceedings for provisional measures before the Unified Patent Court

The Court of Appeal of the Unified Patent Court (“UPC”) ruled in an order dated March 27, 2026 (UPC_CoA_898/2025 – ONWARD v Niche) on the question of whether a non-granted version of a patent’s claims may also be asserted—possibly as an alternative—in proceedings on applications for provisional measures.

I. Facts

The applicant and appellant (hereinafter “Applicant”) is the owner of the contested patent EP 3 421 081 relating to a system for neuromodulation. The respondent and appellee (hereinafter “Respondent”) offers and sells, among other things in Germany, a system for stimulating the spinal cord as well as associated electrode pads. The Applicant asserted direct, or alternatively indirect, infringement by the stimulation systems as well as indirect infringement by the electrode pads.

In the first instance, the Applicant had filed a total of eight auxiliary claims based on a limited version of the contested patent. The Munich Local Division rejected the application due to doubts regarding the novelty of claim 1 in its granted version (Munich Local Division, Order of Oct. 17, 2025, UPC_CFI_693/2025). The Munich Local Division also rejected the auxiliary requests. In the opinion of the Munich Local Division, ordering provisional measures based on an amended version of the claims was generally out of the question. The summary proceedings were not intended to order provisional measures, even though the granted version was clearly deficient. Pursuant to Article 62 of the Agreement on a Unified Patent Court (“UPCA”), the court must be satisfied of the validity of the patent in its granted version. The “patent in question” under Rule 211(2) of the Rules of Procedure of the UPC (“RoP”) does not refer to an amended patent. If the patent owner considers (alternative) claims based on an amended claim version to be necessary, this already implies that the granted patent is likely invalid. The Munich Local Division did not rule on the issue of patent infringement due to lack of relevance to the decision.

In its appeal, the Applicant asserted the main claim based on granted claim 1 of the patent in dispute, and in the alternative, a combination of claim 1 with subclaim 9 and features of subclaim 7. Following a negative introduction by the Court of Appeal during the oral proceedings, the Applicant submitted the alternative claim unconditionally as a new main claim.

II. Decision of the Court of Appeal

The motion based on the limited claim wording was found to be admissible but unfounded.

1. Auxiliary motions in proceedings for provisional measures

The Court of Appeal first explains that the principle of party disposition applicable under Art. 76(1) EPGÜ also permits a possible joinder of claims within the context of filing a motion. If a corresponding auxiliary claim is introduced only after the filing of the application, Rule 263.1 RoP applies. If the main claim is unsuccessful, the admissibility of the auxiliary claim is determined in accordance with Rule 263.2 RoP.

In the context of Rule 263.2 RoP, particular consideration must be given to the summary nature of the expedited proceedings. Admission must therefore be compatible, in particular, with the speed of the proceedings, the shorter deadlines, the limited scope for taking evidence, and the nature of the proceedings as a provisional measure. As a rule, only a single auxiliary request or a small number thereof may be considered appropriate. Furthermore, it constitutes a new request in the appeal proceedings if the wording of a request filed at first instance is amended (for example, on the grounds of a more accurate translation of the patent claims drafted in another language).

If a new auxiliary request is filed only in the appeal proceedings, its admissibility is at the discretion of the court pursuant to Art. 73(4) UPCA, R. 222.2 RoP. Here, too, the summary nature of the expedited proceedings must be taken into account, as well as the fact that the respondent may be deprived of a level of review. Therefore, as a general rule, restraint should be exercised in admitting such claims.

Regardless of whether an unconditional transition from the main claim to the auxiliary claim constitutes an unconditional restriction under R. 263.3 RoP, an amendment to the complaint under R. 263.1 RoP, or a partial withdrawal under R. 265 RoP, this is admissible in any case. In this respect, a parallel pending main action based on the same facts between the same parties does not give rise to a legitimate interest on the part of the respondent in a decision on the original main claim, since the decision of the Court of Appeal has no binding effect on the main action. In particular, the Local Division is not bound by the Court of Appeal’s interpretation or prognosis regarding the legal position.

2. Assertion of a limited version of the claim

The Court of Appeal ruled that the assertion of a non-granted version of the claims in proceedings for provisional measures is not excluded from the outset.

In this respect, the Court of Appeal disagreed with the view of the Munich Local Division that the “patent in question” in Rule 211.2 of the RoP refers to the granted version of the claims. Citing various provisions of the UPCA and the RoP, the Court of Appeal explained that “in question” is rather used in reference to the specifically asserted patent, i.e., the patent at issue. In doing so, the legislature was aware of the distinction from the granted version (see R. 30.1(a) RoP). In this respect, there is no basis for interpreting “the patent in question” in R. 211.2 RoP differently.

Nor would the summary nature of the proceedings for provisional measures preclude this per se. The shorter time limits and the possibility of ex parte proceedings exist regardless of the specific wording of the claims at issue. Furthermore, the respondent’s ability to defend itself is not automatically restricted, as only the specific claim asserted is relevant, not an unmanageable number of combinations.

Admissibility is ultimately a matter of the individual case. Any potential curtailment of the respondent’s legal protection is taken into account in this regard within the framework of the balancing test under R. 211.3 RoP and/or within the framework of necessity.

In any case, the assertion of a limited version does not justify the conclusion that the patent is defective in its granted form. Rather, it can be assumed that the applicant considers the limited version to be infringed and, with a high degree of probability, legally valid; thus, it represents the safest way to successfully enforce the patent in summary proceedings. Furthermore, a prior EPO limitation procedure lasting several months cannot be required, as this would conflict with the urgency of proceedings for interim measures. In any case, regardless of whether a patent is asserted in its granted version or in a limited version, the court must itself obtain sufficient certainty regarding the validity of the patent pursuant to R. 211.2 RoP.

3. No infringement of the patented invention

However, the Court of Appeal was unable to reach a sufficient conviction that the patent in dispute had been infringed.

The asserted claim version required, for a direct infringement, that the challenged embodiments exhibit programming in accordance with the claims in their as-delivered state. It was found, however, that the challenged embodiments were distributed only without programming. It could not be assumed that any programming in accordance with the claims performed by the purchasers (so-called extended workbench) would be attributable to the Respondent. For this to be the case, the programming would have to result automatically or inevitably. However, in the absence of corresponding instructions or guidance in the user manuals, this could not be discerned.

An indirect infringement failed due to the absence of the subjective elements of the offense. In this respect, the objective circumstances did not allow for the conclusion that the purchasers intended to use the product in a corresponding manner. Nor had any specific case of actual subsequent patent use been presented.

III. Conclusion

The Court of Appeal’s ruling clarifies a highly practical issue and is particularly welcome for patent holders. At the same time, it should be noted that the admissibility of alternative motions in proceedings concerning provisional measures is determined on a case-by-case basis, in which the court considers all relevant circumstances and the admission ultimately remains at the court’s discretion.

It is therefore advisable to file any auxiliary claims early in the proceedings so that both parties have the opportunity to comment on the matter. It makes sense to include “in particular” motions already in the initial application. However, it must be noted that, as a rule, only one or a few auxiliary claims are likely to be considered an appropriate number. In addition, it is often only after the respondent’s objection that it becomes clear what limitations might be necessary to distinguish the invention from the prior art or to overcome an inadmissible extension. In such a case, an amendment to the application or a shift from the main claim to an auxiliary claim would be an option.

If a reply to the objection is permitted, a subsidiary claim should be filed no later than with this pleading so that the opposing party can, in any event, defend itself in writing before an oral hearing—if one is scheduled.

It is also evident once again that an early review of the legal status of one’s own patents is advisable. This is all the more true in the already time-sensitive proceedings for provisional measures. After service of the respondent’s objection, there are typically only a few weeks remaining to draft the reply to the objection and to consider any possible limitations.

Christoph Heringlake

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First Reference by the UPC Court of Appeal to the CJEU – Dyson v Dreame

By order dated March 6, 2026, the Court of Appeal of the Unified Patent Court (UPC) referred questions for a preliminary ruling to the Court of Justice of the European Union (CJEU) for the first time in Dyson v Dreame. The referral concerns key issues regarding the UPC’s international jurisdiction (“long-arm jurisdiction”) as well as the classification of an EU representative as a potential “intermediary” within the meaning of the Enforcement Directive.

Background: Preliminary injunction by the Hamburg Local Division (Link)

The appeal proceedings originate from a preliminary injunction issued by the Hamburg Local Division on 14 August 2025 in the dispute between the patent proprietor Dyson Technology Ltd. and several companies of the Dreame Group. The case concerns EP 3 119 235, which protects curling-barrel technology used in handheld hair styling devices. Dyson alleged that various hair styling devices distributed by Dreame infringe this patented technology.

The defendants included Dreame International (Hong Kong) Ltd., the manufacturer and operator of several European product websites, the German distribution partner Teqphone GmbH, the Swedish subsidiary Dreame Technology AB, and the Germany-based Eurep GmbH, which acts as Dreame’s authorized EU representative under EU product safety regulations.

The Local Division largely granted Dyson’s application by way of a preliminary injunction. It prohibited the manufacture, offering, placing on the market, importation and storage of the contested products, as well as the provision of services by Eurep within the UPC territory. The injunction was also partially extended to the Spanish part of the European patent.

In doing so, the Local Division affirmed the UPC’s broad international jurisdiction, including over defendants based outside the EU. It relied on Article 71b(2) in conjunction with Articles 7(2) and 8(1) of the Brussels I recast regulation, taking the view that the alleged infringing acts produce effects within the UPC territory. The decision thus follows the case law of the CJEU in BSH Hausgeräte GmbH v Electrolux AB, in which the Court clarified that courts of a Member State may, under certain conditions, also rule on infringements of national parts of a European patent outside their own territory. This issue has been discussed in more detail in a previous article on the CJEU’s judgment in BSH Hausgeräte GmbH v Electrolux, see here. 

Furthermore, the Local Division classified Eurep GmbH, based in Germany, as an “authorized representative” under EU product safety and market surveillance regulations (Regulations (EU) 2023/988 and 2019/1020) and considered it an indispensable link in the distribution chain. As a result, it could be treated both as the relevant defendant for jurisdictional purposes and as an intermediary against whom injunctive relief may be granted pursuant to Article 63(1), second sentence, UPCA.

The first-instance decision thus illustrates how the UPC, through anchor defendants and intermediaries, may enable cross-border enforcement of injunctive relief even in complex international distribution structures.

The Court of Appeal: Extension of the injunction and referral to the CJEU

The Court of Appeal upheld the substance of the Hamburg decision but went significantly further in terms of scope. With respect to the UPC territory, it dismissed Dreame’s appeal and extended the preliminary injunction to additional products in Dyson’s favor.

At the same time, the Court of Appeal separated the proceedings. The parts of the appeal relating to injunctive relief effective in Spain and the claims against Eurep were stayed pursuant to Article 38(2) UPCA and Rule 266.5 of the Rules of Procedure, pending a decision by the CJEU. On all other issues, the Court of Appeal ruled by separate order issued on the same day (see  here: Link).

Four Questions Referred for a Preliminary Ruling

The Court of Appeal referred four questions to the CJEU regarding the interpretation of EU law.

The first question concerns Article 8(1) in conjunction with Article 71b(2) of the Brussels Ibis Regulation. The CJEU is asked to clarify whether a situation involving a manufacturer based outside the EU and an intermediary based in a UPC member state is capable of giving rise to a risk of “irreconcilable judgments” and thereby justifying jurisdiction under Article 8(1). (Original text: Must Article 8(1) in conjunction with Article 71b(2) of Regulation 1215/2012 be interpreted as meaning that a situation where, in proceedings before a common court within the meaning of Article 71a(2) of Regulation 1215/2012, a first company that is established in a third State is alleged to have committed an infringement of a national part of a European patent which is in force in an EU Member State that is not party to the instrument establishing the common court, and a second company that is established in an EU Member State that is party to the instrument establishing the common court is alleged to be an intermediary whose services are used by the first company to infringe in the EU Member State that is not party to the instrument establishing the common court, is capable of leading to “irreconcilable judgments” resulting from separate proceedings as referred to in Article 8(1) Regulation 1215/2012?).

If Article 8(1) does not apply, the Court further asks whether jurisdiction for provisional measures against a third-country manufacturer may arise directly from Article 71b(2), second sentence, of the Brussels Ibis Regulation. This question is particularly relevant in cases where identical products are offered via nearly identical websites in both UPC Member states and non-UPC Member states.

(Original text: Must Article 71b(2), second sentence, of Regulation 1215/2012 be interpreted as meaning that a common court has jurisdiction in relation to an action for provisional measures against a company established in a third State that is alleged to have infringed a European patent in force in an EU Member State that is not party to the instrument establishing the common court, and in some or all EU Member States that are party to the instrument establishing the common court by offering the same products in all those EU Member States through websites that are identical apart from the language?).

The third question asks whether it is relevant for the determination of jurisdiction that the third-country manufacturer uses the services of a representative established in the EU?

(Original text: Is the fact that the company uses the services of a company that is established in an EU Member State that is party to the instrument establishing the common court in order to infringe a relevant circumstance in answering this second question?).

Fourth Question: “Authorized Representative” as an Intermediary?

The fourth question concerns the intersection between EU product safety law and harmonised EU intellectual property enforcement. The CJEU is asked to clarify whether Article 9(1)(a) of the Enforcement Directive 2004/48/EC, or any other provision of EU law, precludes a line of case law under which a patent injunction may be issued against an “authorized representative” acting  on behalf of a manufacturer established outside the EU, where that representative performs the tasks required under Regulations (EU) 2023/988 and 2019/1020. (Original text: Does Article 9(1)(a) of Directive 2004/48 or any other provision of Union law preclude case-law of a national or common court under which an interlocutory injunction aimed at preventing or prohibiting infringement of a patent by a third party by placing products on the market to which 10 Regulation 2023/988 and 2019/1020 apply may be granted against an authorised representative that performs the tasks laid down in these Regulations on behalf of the third party?).

The Hamburg Local Division had already taken a clear position on this issue. In light of the EU-law obligation to designate an economic operator established within the EU for certain product categories, it considered the authorised representative an integral part of the distribution system and therefore a potential intermediary.

The Court of Appeal builds on this reasoning but notes that the CJEU’s existing case law on the concept of an intermediary—for example, in UPC Telekabel Wien v Constantin Film (C- 314/12) or Tommy Hilfiger v Delta Center (C-494/15) —primarily concerns service providers whose services are used to facilitate infringements, such as marketplace operators or access providers. Whether this approach also extends to actors whose primary function is regulatory compliance, without direct control over the distribution, is the subject of the referral.

Outlook: Stay of Proceedings and CJEU ruling

With this referral, the clarification of key legal questions is now transferred to the level of EU law. The Court of Appeal has largely upheld the preliminary injunction for the UPC territory and partially extended it, but has stayed the proceedings concerning the territorial scope of the injunction and the claims directed against the EU authorized representative pending the CJEU’s decision.

The CJEU will thus have its first opportunity to address both the UPC’s international jurisdiction over third-country manufacturers and the possible classification of an EU authorized representative designated under product safety law as an intermediary under the Enforcement Directive. In doing so, the referral engages directly with the Court’s existing broad case law on the concept of an intermediary. Significantly, the Court of Appeal frames the question not in terms of whether such a classification is permissible under EU law, but rather whether Article 9(1)(a) of the Enforcement Directive would “preclude” it.

Until the CJEU delivers its judgment, these questions remain open and are likely to shape future UPC practice on cross-border injunctions. Once the CJEU has ruled, the case will return to the Court of Appeal, which will reassess the preliminary injunction in light of the Court’s guidance. Given that preliminary rulings typically take one to two years, a significant delay in the proceedings is to be expected.

Nicole Schopp

 

 

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Three Awards for Kather Augenstein at the Managing IP Awards EMEA 2026

A special evening in London for KATHER AUGENSTEIN: At this year’s Managing IP Awards EMEA 2026, we were honoured with three awards – a recognition that feels especially meaningful as we celebrate our 10th anniversary this year. Representing the firm on stage, Miriam Kiefer accepted the awards on behalf of the entire team.

We are delighted to have received the following distinctions:

Recognition for Our UPC Work

The award for Germany UPC Firm of the Year recognises our strong presence before the Unified Patent Court. Since the launch of the UPC system, we have been involved in numerous national and international proceedings and are now considered one of the most active firms in this field. The recognition reflects both our strategic focus and the collaborative work of a team dedicated to handling complex disputes with precision and commitment.

Europe Impact Case of the Year: Fujifilm v Kodak

The award for Europe Impact Case of the Year highlights one of the most significant disputes currently shaping the European patent landscape: Fujifilm v Kodak. This recognition underscores our experience in managing complex, technology-driven and commercially significant patent litigation.

Individual Recognition for Miriam Kiefer

A particular highlight of the evening was seeing Miriam Kiefer recognised as Germany Patent Practitioner of the Year.

With her strategic clarity, technical expertise and leading role within the UPC landscape, she continues to shape both our practice and many of the proceedings we are involved in. Particularly noteworthy: she was the only woman shortlisted in this category.

Thank You to Our Team

These three awards represent the work of a team that approaches complex matters with precision, dedication and a clear focus on delivering the best possible outcomes for our clients.

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Confidentiality in SEP Litigation – The Court of Appeal Introduces Licensing Bars as a Way Forward

In a recent order (docket no. UPC_CoA_631/205 a.o.) issued in proceedings concerning standard-essential patents (SEP), the Court of Appeal (CoA) of the Unified Patent Court (UPC) introduced a new approach addressing confidentiality in proceedings involving highly sensitive information – namely license agreements with third parties.

The CoA also used the decision to confirm the principles of establishing confidentiality clubs. The decision concerns access to license agreements and, in particular, the possibility of restricting the necessary participation of a natural person from each party.

I. Facts

In June 2024, the patentee filed two SEP infringement actions. In patent litigation concerning SEP, patentees typically refer to license agreements concluded with third parties. The respective license agreements generally include strict confidentiality clauses that prevent the patentee from introducing the license agreement into court proceedings without further measures.

The Claimant, therefore, asked for a confidentiality regime for certain license agreements according to which the Defendant itself was not to gain access to the agreements (“external eyes only” (EEO). The Defendant did not agree to this, with the result that the CoA ultimately had to decide the issue. The dispute, hence, concerned the scope of access to confidential documents, in particular whether at least one natural person of each party should be granted access to the confidential material.

The question was not whether confidentiality measures were appropriate, but to what extent a party’s access to confidential information can be restricted.

II. Principles for establishing a Confidentiality Club

In its order, the Court of Appeal reaffirmed that, as a matter of principle, at least one natural person from each party must be granted access to the confidential information. The UPC, therefore, cannot grant an EEO confidentiality order unless the parties have agreed to it. This principle is expressly set out in R. 262A.6 RoP. Accordingly, the number of persons to whom access is restricted shall be no greater than necessary in order to ensure compliance with the right of the parties to an effective remedy and to a fair trial, however, it shall include, at least, one natural person from each party.

At the same time, the Court acknowledged the particularly sensitive nature of licence agreements in SEP disputes. The information at stake typically comprises information on royalties, terms of the specific agreements and other highly competitive data. Moreover, the information not only concerns the patentee as licensor; disclosure may also cause potential harm to licensees as third parties. The Court therefore accepted that access may be subject to strict conditions in order to safeguard confidentiality.

To this end, the Court opened the possibility of imposing a so-called licensing bar on the natural person who is granted access to the confidential information. According to the Court, the licensing bar may mitigate the potential harm of the third parties by requiring the natural person to refrain from involvement in patent licensing negotiations with the respective contractual partners of the protected licence agreements for a certain period of time. This measure serves to prevent the employee from using the information in these negotiations, whether intentionally or not.

III. Findings of the Court

In its decision, the Court of Appeal applied these legal findings and found that the Local Division Milan correctly established a confidentiality club including a natural person from each party in its confidentiality order. However, with regard to certain license agreements, the Court imposed a licensing bar on those persons for a period of five years from the date of the order.

IV. Confirmation in further decision of the same day

The principles set out in the above-mentioned decision were simultaneously set out in a second decision of the same day (docket no. UPC_CoA_755/2025 a.o.). The Court also found here, that a natural person of each party must, as a rule, be granted access to confidential information in order to safeguard its procedural rights.

At the same time, the Court found that additional protective measures, including the imposition of a licensing bar, may be appropriate where information on particularly sensitive license agreements are concerned. In that case, three persons from the Defendant were included in the confidentiality club and were each made subject to a licensing bar of two years, although the Defendant had argued that those individuals were the only employees currently available to conduct licensing negotiations.

V. Conclusion

The decisions of the CoA specify and expand the protection of licence agreements as highly confidential information in SEP proceedings before the UPC. The Court maintains the fundamental requirement that a natural person of each party must have access to confidential information. At the same time, it explicitly recognises the possibility of imposing a licensing bar as an additional safeguard.

For companies engaged in SEP licensing, these decisions have immediate practical relevance. They must take into account that participation in a confidentiality club may entail restrictions on future licensing activities. Companies should therefore carefully consider which employees they nominate for the confidentiality club. In SEP licensing practice, the relevant knowledge for negotiations typically resides with specific employees responsible for licensing. It is precisely these individuals who are often involved in such legal disputes. However, if they are subject to a licensing bar, they may be prevented from negotiating with certain licensees in the future.

An alternative approach may be to appoint a third person (potentially an external expert) to the confidentiality club. The CoA previously confirmed that this is a possibility.

The Court’s approach therefore requires companies to weigh litigation needs against future commercial strategy. The composition of the confidentiality club is no longer a purely procedural matter but may have lasting business implications.

Dr Katharina Brandt

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WTR 1000 Trademark Review 2026 recognises Sören Dahm and Dr Benjamin Pesch

World Trademark Review has published the WTR 1000 2026, and we are pleased to announce that our Partner Sören Dahm  and Counsel Dr Benjamin Pesch have again been named in this year’s edition.

The recognition reflects their long-standing experience in contentious trademark litigation, as well as their proven ability to advise clients on complex, cross-border trademark matters.

The WTR 1000 is the authoritative guide to the world’s top trademark professionals across key jurisdictions, highlighting firms and individuals distinguished by outstanding expertise and client service.

We would like to thank our clients for their continued trust and cooperation.

Click here to access the full report.

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News from Luxembourg: Court of Appeal confirms and details its previous case law on interpretation, inventive step and proportionality

UPC (Court of Appeal), decision of 25 November 2025 – UPC_CoA_457/2024, UPC_CoA_458/2024, UPC_CoA_464/2024, UPC_CoA_530/2024, UPC_CoA_532/2024, UPC_CoA_533/2024, UPC_CoA_21/2025, UPC_CoA_27/2025 – Edwards Lifesciences v. Meril

In the Edwards Lifesciences v. Meril case, the Court of Appeal of the Unified Patent Court published its decision on 25 November 2025. In doing so, it not only confirmed its previous case law on the interpretation of patents, but also detailed its case law on the examination of inventive step and the proportionality of the injunctive relief and other measures.

Facts of the case

Edwards Lifesciences Corporation, the parent company of the Edwards Lifesciences Group, which is active in the development and distribution of artificial heart valves and accessories, among other things, filed a lawsuit with the LD Munich on 1 June 2023 for infringement of European patent EP 3 646 825 (“patent in suit”) relating to a system consisting of an artificial heart valve and an insertion catheter against Meril Life Sciences Pvt Ltd., a medical device manufacturer, and its European distribution company Meril GmbH. On 4 August 2023, the Italian distribution company Meril Italy S.R.L. filed a nullity action against the patent in suit before the CD Paris. On 2 November 2023, Meril Life Sciences Pvt Ltd. and Meril GmbH filed a counterclaim for revocation. In its response to the counterclaim on 9 January 2024, Edwards also submitted a request for amendment of the patent. Edwards filed a corresponding request for amendment (which had already been preceded by an initial request, on which a decision was still pending) on 22 January 2024, but this was rejected on 27 February 2024. The appeal was not allowed, and the discretionary review by the Court of Appeal did not lead to a different result. On 28 March 2024, the LD Munich referred the counterclaim for annulment to the CD Paris. In written submissions dated 11 April 2024 and 12 April 2024, Edwards requested a further amendment to the patent in both the nullity proceedings and the counterclaim proceedings, reducing the number of claims made.

On 19 July 2024, the CD Paris partially dismissed the nullity action and the counterclaim for revocation and upheld the patent in suit on the basis of the second auxiliary request.

In the infringement proceedings, the LD Munich found Meril Life Sciences Pvt Ltd. and Meril GmbH guilty of infringing the patent in suit by distributing the contested embodiments. The XL variant of the attacked embodiment was exempt from recall and destruction insofar as it was already scheduled for the treatment of patients until 15 November 2024. The LD considered the injunction claim to be proportionate only because the XL variant could be distributed in individual cases if a patient required it, provided that a physician had uploaded the relevant patient data to Edwards’ “Medical Device Portal” and an examination by Edwards’ physicians had shown that no Edwards product was suitable for the specific patient.

Both parties lodged appeals against the decisions concerning the action for annulment and the counterclaim for revocation, as well as against the decision concerning the infringement of the patent in suit. In addition, the parties lodged appeals against individual decisions, which will not be discussed in further detail here.

Decision of the Court of Appeal

The Court of Appeal essentially confirms the decisions of the LD Munich and the CD Paris. 

Instead of going into the details of the specific case, the following description focuses on the generalizable findings of the Court of Appeal in connection with the interpretation, inventive step and (dis)proportionality of the injunction and other measures.

1. Interpretation of the patent in suit

In its interpretation, the Court of Appeal confirms in abbreviated form the principles of interpretation it had already set out in the case of “NanoString v 10x Genomics” (UPC (Court of Appeal), decision of 26 February 2024 – UPC_CoA_335/2023) (German translation):

“The patent claim is not only the starting point but the decisive basis for determining the protective scope of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.”

In addition, the decision contains further principles of interpretation with regard to the interpretation of the relevant features of the teaching of the patent in suit, which are already known from German case law. For example, the Court of Appeal states that terms in the claim must be interpreted in the context of the patent from the perspective of a person skilled in the art, i.e., according to the German diction, the patent in suit forms its own lexicon. In connection with the embodiments of the patent in suit, it states that the claim must not be limited to a specific embodiment by way of interpretation. On the other hand, it can generally be assumed that a device or method described in the patent specification as an embodiment is also covered by the patent claims. Something else can only be assumed if the patent as a whole clearly conveys to the skilled person that the disclosed embodiment is not claimed, e.g. if it merely illustrates a technical specification that is not dealt with.

2. Inventive step

In connection with the examination of inventive step, the Court of Appeal specifies its case law, which formed the basis for the decision in the case of “NanoString v 10x Genomics” (UPC (Court of Appeal), decision of 26 February 2024 – UPC_CoA_335/2023) and how it is now reflected in paragraphs 4 et seq., in particular 7 et seq. (German translation):

“7. The approach taken by the Unified Patent Court when establishing inventive step, which can already be derived from the Order of the Court of Appeal in the Nanostring v 10X Genomics case (UPC_CoA_335/2023, Order of 26 February 2024), is as follows.

8. It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with their common general knowledge, as at the application or priority date (also referred to as the effective date) of the patent. This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the specification and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the person skilled in the art, on the basis of the application, understands is (are) achieved with the claimed invention.

9. In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution. The claimed solution is obvious when at the effective date the person skilled in the art, starting from a realistic starting point in the state of the art in the relevant field of technology and wishing to solve the objective problem, would (and not only “could”) have arrived at the claimed solution.

10. The relevant field of technology is the specific field relevant to the objective problem to be solved as well as any field in which the same or similar problem arises and of which the person skilled in the art in the art of the specific field must be expected to be aware.

11. A starting point is realistic if the teaching thereof would have been of interest to a person skilled in the art who, at the effective date, wishes to solve the objective problem. This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention. There can be more than one realistic starting point, and the claimed invention must be inventive starting from each of them.

12. The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation (in German: “Anlass”) that, starting from a realistic starting point, directs them to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be considered not inventive/obvious when the person skilled in the art would take the next step, prompted by the pointer or as a matter of routine, and arrive at the claimed invention.

13. For an inventive step to be present, it is not necessary to show improvement of the technical teaching as defined by the patent claims over the prior art. Inventive step may also be found if the patent claims disclose a non-obvious alternative to solutions known in the prior art.”

Based on these principles, the Court of Appeal finds in the present case that the teaching of the patent in suit is inventive in relation to the presented prior art. In some cases, the documents explicitly taught away from the solution according to the invention, in some cases they did not disclose at least one of the relevant features of the patent in suit, and in some cases it was not apparent that the person skilled in the art had any reason to further develop the teaching of the respective pitot art or to combine the teachings of the prior art. In doing so, the Court of Appeal also, among other things, disregards a preliminary opinion of the Opposition Division of the EPO on the lack of inventive step of a patent from the same patent family as the patent in suit, based on a document that was also the subject of the present proceedings.

3. Proportionality of the injunction and further measures

Finally, the Court of Appeal confirms the infringement of the patent in suit by the attacked embodiments. However, it sees a need for correction in the orders.

With regard to both the measures under Article 64 UPCA and the injunction under Article 63 UPCA, the Court of Appeal finds that these were not at the discretion of the court. In the event of an infringement, the measures were generally to be imposed, as already held in “Belkin v. Philips” (UPC (Court of Appeal), decision of 3 October 2025 – UPC_CoA_534/2024, UPC_CoA_683/2024, UPC_CoA_19/2025 – Belkin v. Philips). The same applied to the injunction under Article 63 UPCA. An exception to this rule applied only in exceptional cases where the measures or the injunction proved to be disproportionate.

With regard to the measures under Article 64 UPCA, this followed from Article 10 Enforcement Directive, according to which uniform, high protection is to be ensured throughout the EU. The ordering of measures therefore had to be the rule (see also UPC (Court of Appeal), decision of 3 October 2025 – UPC_CoA_534/2024, UPC_CoA_683/2024, UPC_CoA_19/2025 – Belkin v Philips). In the context of the proportionality test, the circumstances of the individual case were decisive, whereby the seriousness of the infringement and the measures, the willingness of the infringer to bring the form of infringement into a patent-free state, and third-party interests had to be taken into account.

With regard to the injunction under Article 63 UPCA, the same applied under Article 11 Enforcement Directive. In accordance with Articles 17(2) and 47 of the Charter of Fundamental Rights of the European Union, the Enforcement Regulation provided for various means of ensuring a high level of protection. The patentee had to be able to enforce its rights effectively, and the patent user had to obtain a license before use. An injunction was therefore only ruled out if the order was disproportionate, cf. Article 3 Enforcement Directive. Here, too, the interests of the parties and third parties must be taken into account.

On this basis, the Court of Appeal finds that, in the field of medical devices, disproportionality was to be considered if the attacked embodiment is the only available treatment option or represents an improvement on existing treatments, leading to a noticeable improvement in patient care. 

As a result, the Court of Appeal agrees with the findings of the LD Munich that the XL variant of the attacked embodiment had to be exempt from the injunction, but nevertheless sieht a need for correction with regard to the order. The Court of Appeal is of the opinion that the availability of the product should not depend on Edwards’ willingness to maintain the portal or on the assessment of Edwards’ physicians. Rather, it should be sufficient for a physician to inform a patient that he or she intends to use the variant and that this is the only way to treat the patient.

Conclusion

The principles of interpretation cited again by the Court of Appeal are derived from Article 1 of the Protocol on the Interpretation of Article 69 EPC. The Enlarged Board of Appeal of the EPO recently summarized the principles of patent interpretation in a similar manner in the case of “Heated Aerosol Generating Article” (EPA (GBK), decision of 18 June 2025 – G 1/24). These principles are also recognized in German case law (see, for example, BGH GRUR 2015, 875 – Rotorelemente). The Court of Appeal clarifies that these principles of interpretation apply both to infringement and to validity.

With regard to the principles for determining the existence or non-existence of inventive step, the Court of Appeal also confirms its previous case law here, but abstracts it in form of a examination scheme.

The Court of Appeal is correct in stating that the different approaches to determining inventive step should lead to the same result. In fact, there are far fewer differences between the problem-solution approach and the approach taken by the Federal Court of Justice than is sometimes assumed (cf. Deichfuß, GRUR 2024, 94). The Court of Appeal now presents its own approach in abstract form. It would have been desirable to have a brief explanation of why the Court of Appeal does not adopt the EPO’s approach. The Court of Appeal does not appear to define the objective problem or objective on the basis of the closest prior art. However, the Court of Appeal does refer to aspects and terminology that can be found in both German case law and that of the EPO. Thus, according to the Court of Appeal, it is not important whether the person skilled in the art could have arrived at the solution according to the invention, but whether he would have arrived at it. Similarly, both the German case law and that of the EPO are familiar with the concept of the starting point, although the EPO refers to the “most promising” starting point and not merely a “realistic” one, as does the Court of Appeal. It remains to be seen how the UPC will apply and flesh out this examination scheme in the future in order to better classify the approach.

Finally, with regard to the question of the proportionality of the injunction and further measures, infringers will take note of the decision in Belkin v. Philips and the present decision. As a result of the finding that, in the event of an infringement, an injunction and further measures are generally to be imposed, the assumption of an “automatic injunction”, as known from German case law, is not far-fetched. It can therefore be assumed that considerations of proportionality will hardly lead to a different result at the UPC in the future. In the field of medical devices, however, the Court of Appeal has clarified that disproportionate measures may be considered in exceptional cases if the form of infringement is the only available treatment option or represents an improvement in existing treatments, leading to a noticeable improvement in patient care. 

Dr Benjamin Pesch

Latest News.

JUVE Patent UPC Rankings 2026: Kather Augenstein recognised again among Top Five Patent Litigation Firms with Top Tier 5-Stars

The JUVE Patent UPC Rankings 2026 have just been released today, and we are delighted to be recognised again as one of the Top Five Patent Litigation Law Firms, receiving a prestigious 5-star rating. This incredible achievement is a testament to our unwavering dedication, expertise, and meticulous precision we bring to our work every day.

We are truly grateful to our clients for placing theri trust in us and our work. JUVE Patent has recognised KATHER AUGENSTEIN for its “sustained excellence at the UPC,” noting our firm’s “major case successes, broad technical expertise, a highly skilled team, strong caseload management, and ongoing growth and market recognition.”

We are especially proud that our partners have been individually recognised for their outstanding contributions: Dr Christof Augenstein and Miriam Kiefer LL.M. have again been named Leading Individuals – UPC Litigator 2026 in Germany, while Christopher Weber is praised for being “highly responsive” with “good technical understanding” underscoring his “expertise and effectiveness in UPC litigation”. Their leadership before the Unified Patent Court, together with the skill, dedication, and strategic vision of our entire team, continues to strengthen our position in the European patent litigation landscape and demonstrates our proven ability to manage complex, high-stakes cases across diverse technical sectors.

All this would not have been possible without our 𝐢𝐧𝐜𝐫𝐞𝐝𝐢𝐛𝐥𝐞 𝐭𝐞𝐚𝐦 whose hard work and dedication have been key to this success: Dr Christof Augenstein, Miriam Kiefer LL.M., Christopher Weber, Sören Dahm, Dr Peter Kather, Dr Benjamin Pesch, Carsten Plaga, Dr Benedikt Walesch LL.M., Dr Katharina Brandt, Sophie Prudent LL.M., Robert Knaps, Dr Melissa Lutz, Nicole Schopp, Christoph Heringlake, Arne-Steffen Kamps, Svenja Ullmann, Donna Magdalena Gulla, Kerstin Klare, Saskia Helten, Almir Haurdic, Rebecca Siegert, Claudia Schwansee, Claire Edmonds, Daniela Kortmann, Kathrin Kiefer.

We are passionate about maintaining our commitment to excellence in patent litigation and are excited to see what the future holds.

Read the full Rankings 2026 here.

 

 

Latest News.

Decision dated 3 October 2025 – On the liability of the managing director for patent infringements and the concept of “offering” (Art. 63 UPCA and Art. 25(a) UPCA, Court of Appeal

(Art. 63 UPCA and Art. 25(a) UPCA, Court of Appeal, decision dated 3 October 2025, UPC_CoA_534/2024, UPC_CoA_19/2025, UPC_CoA_683/2024)

In a recent decision, the Appeal Court of the Unified Patent Court dealt, among other things, with liability of a managing director and clarified the term “offering” within the meaning of Art. 25(a) UPCA.

Facts

The subject matter of the proceedings was three jointly heard appeals against a decision of the Local Division Munich, with the Claimant and Defendants each appealing against the judgment in the infringement proceedings and the Defendants additionally appealing against the dismissal of the counterclaim for revocation. The Local Division Munich had upheld the infringement claim and ruled against the Defendant, but fell short of the Claimant’s request that the Defendant’s managing directors also be held liable alongside the companies themselves. The counterclaim for revocation was dismissed.

In its appeal, the Claimant and owner of the patent in suit therefore requested that the first-instance judgment be amended to hold the Defendant’s managing directors liable for the patent infringements. The Defendant’s two appeals sought to have the judgment in the infringement proceedings set aside and the counterclaim for revocation dismissed. For the first time in the appeal proceedings, the Defendant asserted a lack of inventive step with regard to a citation already introduced in the first instance.

Decision of the Court of Appeal

The Court of Appeal upheld the infringement with regard to the liability of the managing directors. It also confirmed the dismissal of the counterclaim for recovation. The Court of Appeal allowed the objection of lack of inventive step, as the citation itself had already been the subject of the first instance decision; however, this had no effect on the legal situation.

 

1. Offering within the meaning of Art. 25(a) EPCU

The Court of Appeal states that the term “offer” must be interpreted autonomously. It should also cover actions carried out in the run-up to contracts that could result in the patent holder losing business. An offer is therefore to be understood primarily in economic terms. A binding contractual offer, as is regularly required from a legal point of view, is not decisive. This broad interpretation means that even an “invitatio ad offerendum” that does not include a price constitutes offering in the meaning of Art. 25 lit. a) UPCA. The CoA thus clarifies that even the communication of (incomplete) framework conditions with an associated invitation to submit an offer is sufficient to constitute an offer within the meaning of Art. 25 lit. a) UPCA.

The term “offering” also covers cases where the patent-infringing product cannot be purchased directly from the defendant itself, but the defendant refers to an offer from a third party. It is irrelevant whether the third party actually distributes the patent-infringing product. The third party does not have to be ready to deliver.

2. Managing director liability

With regard to the question of managing director liability, the Court of Appeal first establishes some general principles. An infringer within the meaning of Art. 63(1) UPCA is also someone who does not carry out the acts themselves, but to whom the acts of the principal perpetrator are attributable because they are an instigator, accomplice or accessory. This interpretation is in line with the purpose of the provision, namely the effective enforcement of patent law. Art. 63 UPCA therefore also allows for a final order against those who commissioned or instigated the act of use. The autonomous interpretation also implies the liability of the accomplice. According to the Court of Appeal, an accomplice is someone who supports the acts of use by a third party even though they were aware of the patent infringement. Awareness of the unlawfulness is required for knowledge.

According to the above principles, a managing director can also be held liable for patent infringements. However, it should be noted that the mere position of managing director does not make him an accomplice or co-perpetrator. The managing director’s obligation to pay compensation based on his general management, control and organisational duties is therefore ruled out. In the opinion of the Court of Appeal, liability can only be considered if the managing director’s objectionable action goes beyond the typical duties of a managing director, for example in the case of the purposeful use of the company to commit a patent infringement. In addition, the managing director must be aware of the infringement. This requires not only that the managing director be aware of the circumstances giving rise to the patent infringement, but also that he be aware of its illegality. If he seeks legal advice on the question of patent infringement, he can generally rely on this advice until a declaratory decision is made in the first instance.

Company law does not preclude recourse against the managing director, as the purpose of the limitation of liability is to limit the personal liability of the shareholders, not to minimise the responsibility of the managing director.

Conclusion

The Court of Appeal interprets the term “offering” in a similarly broad manner. This means that it does not only refer to direct sales as such. The patent holder should be comprehensively protected. This approach is well known in German case law. According to the case law of the Federal Court of Justice, preparatory acts that enable or promote the conclusion of a subsequent transaction also constitute acts of use.

In contrast, the decision of the Court of Appeal regarding managing director liability differs from German case law. Unlike in German case law, the exercise of measures that are typically decided at the business level is not sufficient. Liability under Art. 63 UPCA requires that (1) the managing director is aware of the circumstances of the patent infringement and (2) is aware of the unlawfulness of the act. A notice from the patent holder, such as a request for authorisation or a warning letter, is not sufficient to establish awareness of the unlawfulness if the managing director has sought legal advice. This decision provides clarity for managing directors on how to behave when they become aware of a possible patent infringement. They can avoid liability by obtaining a legal/patent attorney’s opinion, which is not usually possible under stricter national case law.

Dr Melissa Lutz

Latest news.

Kather Augenstein again awarded the highest rating of 5 stars in JUVE Patent Ranking Germany 2025

We are delighted Kather Augenstein has been awarded again the highest rating of 5 stars in the recently published JUVE Patent Ranking Germany 2025.

This recognition reinforces our standing as one of Germany’s leading boutique law firms in patent litigation. JUVE Patent highlights our strong performance before the Unified Patent Court (UPC), noting:

“Kather Augenstein’s strong performance at the UPC comes as no surprise. The firm has been strategically preparing for the new court for years, which has paid immediate dividends as it quickly became one of the most active firms in UPC cases.”

We are delighted that our team’s work has been recognised across the following ranking categories:

Litigation: Lawyers – Germany 2025

Lawyers in Patent Litigation – Germany 2025 (Leading Individuals)

These awards reflect our ongoing commitment to excellence in patent litigation and our deep technical expertise across a range of industries, including mobile communications, automotive, pharmaceuticals, biotechnology and chemicals.

A heartfelt thank you to our clients for their continued trust, to our entire team for their dedication and exceptional work, and to JUVE Patent for this recognition.

We look forward to continuing to shape and progress important patent litigation in Germany, throughout Europe and before the Unified Patent Court (UPC).

Visit the JUVE Patent Germany 2025 page here.