Tilman Pfrang, LL.M. | 13th November 2025
This month’s UPC decisions span critical developments in claim construction, inventive step, remedies, director liability, and jurisdictional authority. Notably, the Central Division Paris distances itself from the EPO’s problem-solution approach, while the Court of Appeal clarifies the UPC’s institutional legitimacy and solidifies pan-European enforcement tools under Art. 64 UPCA.
Central Division Paris (UPC_CFI_189/2024 & UPC_CFI_434/2024, Decision of 20 October 2025) – Holistic Inventive Step and Tailored Injunction in Valve Litigation
In Meril v. Edwards, the Paris Central Division ruled on EP 4 151 181 B1 (heart valves), notably rejecting the EPO’s feature-by-feature problem-solution approach in favour of a holistic inventive-step examination. The Court emphasised that the invention must be considered as a whole and criticised hindsight-biased formulations of the objective technical problem. The Court also upheld 17 auxiliary requests as admissible, confirming that complexity and multiple attacks justify their number. On added matter, the Court found an intermediate generalisation (removal of “heart” from “heart valve”) to violate Art. 76(1) EPC. Importantly, the injunction granted under Art. 63 UPCA was narrowed: XL-sized valves were exempted to preserve treatment options for certain patients, recognising a legitimate public-health interest. The Court rejected routing such exemptions through the patentee’s “Medical Request Portal”, holding that access must remain independent of competitor consent.
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Local Division Düsseldorf (UPC_CFI_115/2024 & UPC_CFI_377/2024, Decision of 15 October 2025) – “Same Invention” and Material Selection in Line with EPO
In Hartmann Packaging v. Omni-Pac, the Düsseldorf Local Division addressed priority entitlement under Art. 87 EPC and inventive step in material selection. It reaffirmed that a valid priority claim requires direct and unambiguous disclosure of the claimed subject-matter, consistent with Art. 123(2) EPC standards. On inventive step, the Court held that selecting a material from a limited, known group of options – here, pulp compositions for moulded packaging – did not involve an inventive step.
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Court of Appeal (UPC_CoA_288/2025, UPC_CoA_290/2025 & UPC_CoA_291/2025, Decision of 6 October 2025) – Milan Validly Replaces London; Rule 19.1 RoP Is Exhaustive
In Roku v. Dolby and Sun Patent Trust, Roku had challenged the UPC’s international jurisdiction and the legality of Milan replacing London as branch of the Central Division. The Court held that Milan’s designation by the Administrative Committee was valid under Art. 87.2 UPCA by analogy. The UPC’s framework was confirmed to be fully compatible with EU law, including Arts. 19 TEU and 267 TFEU. Additionally, the CoA confirmed that appeal fees apply per appeal, even for substantively identical cases.
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Court of Appeal (UPC_CoA_534/2024 & UPC_CoA_683/2024, Decision of 3 October 2025) – “Offering”, Director Liability, and Art. 64 UPCA Remedies
In Philips v. Belkin, the CoA clarified the scope of “offering” under Art. 25 UPCA, confirming it has an autonomous economic meaning: even non-binding product presentations (e.g., via local-language websites) may amount to infringing offers. The Court upheld injunctions and damages against Belkin’s corporate entities but reversed the injunctions against managing directors, stressing that director liability requires intentional or knowing misconduct – mere management is insufficient. Importantly, the CoA reinstated recall, removal, and destruction as default remedies under Art. 64 UPCA, subject only to disproportionality defences. Requests for electronic disclosure must be timely; new forms of relief raised only on appeal will be inadmissible.
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