Irides: Weekly global patent litigation update

This edition features updates from: Japan and the Unified Patent Court (UPC).

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world.
 

JAPAN

IP High Court dismisses appeal for a provisional injunction based on unfair competition. 

The IP High Court (IPHC) has dismissed an appeal filed by Samsung Bioepis against the Tokyo District Court’s decision dismissing an application for a Preliminary Injunction (PI) against Regeneron on 16 December 2024.

Samsung Bioepis sought a provisional disposition order to stop Regeneron from notifying the Ministry of Health, Labour and Welfare (MHLW) and the Pharmaceuticals and Medical Devices Agency (PMDA) that Samsung Bioepis’ biosimilar product, Aflibercept BS Intravitreal Injection Solution 40mg/mL (SB15), potentially infringed Regeneron’s patents (Patent No. 6855480 and Patent No. 7233754). It was argued that this notification constituted unfair competition by disseminating false facts that damaged Samsung Bioepis’ business reputation and credibility under Art. 2(1)(xxi) of the Unfair Competition Prevention Act (UPCA).

The IPHC reasoned that the approval for the manufacture and sale of pharmaceuticals is administrative in nature, necessary to ensure quality, efficacy and safety, and is therefore distinct in nature from transactions occurring in the competitive marketplace. Generic medicinal products, including biosimilars, are reviewed to confirm whether there is any patent infringement and originators may be asked to provide relevant information. This process constitutes an information gathering exercise to assist the MHLW and PMDA in appropriately making a determination by virtue of their authority, taking into account both information provided and all relevant circumstances. Further, the information provided by the patent holder is not generally made public and therefore cannot spread to the market and risk diminishing reputation or economic value. The IPHC therefore concluded that the provision of information of a potential infringement by the patent owner to the MHLW and PMDA is not considered an act of making or disseminating false statements that harms the business credibility of a business competitor, and thus Regeneron’s statements made in its notification were not regarded as acts of unfair competition under Art. 2(1)(xxi) of the UPCA.
 

UPC

Court of Appeal Clarifies Claim Construction: Undisclosed Experimental Data Irrelevant.
[UPC_CoA_579/2025]

In STEROS GPA Innovative S.L. (STEROS) had obtained provisional measures against OTEC Präzisionsfinish GmbH (OTEC) from the UPC Court of Appeal Clarifies Claim Construction: Undisclosed Experimental Data Irrelevant. In UPC_CoA_579/2025, STEROS GPA Innovative S.L. (STEROS) had obtained provisional measures against OTEC Präzisionsfinish GmbH (OTEC) from the Hamburg Local Division, Court of First Instance (CFI), alleging infringement of EP 4 249 647. The patent relates to an electrolytic medium used in electropolishing. Claim 1 required the electrolytic medium to be comprised, inter alia, of both a conductive solution (with an electrical conductivity greater than 10 micro S/cm) and a non-conductive fluid. STEROS had argued that OTEC’s product satisfied the requirement for a non-conductive fluid through the use of an emulsion which itself separated into phases, one of which is non-conductive. The CFI held that OTEC’s product was likely to infringe claim 1, interpreting the claim to require separate conductivity assessments of emulsion phases.

On appeal, OTEC challenged this interpretation, arguing that conductivity should be assessed for the emulsion as a whole. The Court applied the decision in UPC_CoA_335/2023, NanoString v 10x Genomics, 26 February 2024 that 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”, and ruled in favour of OTEC.

Where an emulsion was identified as the non-conductive fluid of Claim 1, it was the overall conductivity of the emulsion that had to be assessed. It further held that the limit of “non-conductive” should be considered by reference to the numerical value provided in claim 1 in relation to the conductive solution (i.e. 10 micro S/cm). STEROS had, relying on experimental data not disclosed in the patent, argued against applying this limit. However, the Court reaffirmed the principle that experimental data not disclosed in the patent specification is generally irrelevant to claim interpretation. Since, on an overall assessment of the conductivity of OTEC’s emulsion it did not fall below the limit of 10 micro S/cm the Court held that it was not a non-conductive fluid within the proper construction of Claim 1.

The Court therefore found no infringement and set aside the provisional measures. STEROS was ordered to bear the costs of both instances. 
 

UPC

Paris Central Division Rejects Joinder Application Under r. 340.1 and Maintains Separate Proceedings for Both Infringement and Revocation in both Paris and Munich.
[UPC_CFI_104/2025 & UPC_CFI_364/2025]

Belparts Group N.V. (Belparts) sought, under r.340.1 RoP, to consolidate infringement and revocation actions pending before the Munich Local Division (LD) and Paris Central Division (CD) relating to the same patent. A claim between Belparts and IMI Hydronic International SA and IMI Hydronic Engineering AB for infringement of the patent, with a counterclaim for revocation, is pending before the LD. A claim between Belparts and IMI Hydronic Engineering Deutschland GmbH for revocation of the patent, with a counterclaim for infringement is pending before the CD. Prior to the request for joinder, the LD had consulted the parties on bifurcation of its infringement and validity proceedings. The parties voted against bifurcation.

The request aimed to have the Paris counterclaim for infringement heard jointly with the Munich infringement action and, conditionally, to refer the Munich revocation counterclaim to Paris for joint hearing with the revocation action already pending there. All parties agreed to the request.

The Court analysed the request under r. 340.1 RoP and Art. 33 UPCA, which allows a joinder in the interest of justice and to avoid inconsistent decisions. The Court found that granting the request would still result in multiple oral hearings and decisions concerning the same patent where the infringement and revocation issues are not heard and decided simultaneously. The Court noted that this is because of the “(procedural) choices the parties made”. The Court concluded that the proposed consolidation did not meet the criteria for proper administration of justice and rejected the request. Proceedings will continue as scheduled in their respective divisions. 
 

UPC

Court of Appeal Affirms No Automatic Suspensive Effect for Information Orders.
[UPC_COA_897/2025] 

On 6 November 2025, the Court of Appeal handed down a decision rejecting an application by Black Sheep Retail Products BV (Black Sheep) for suspensive effect of the first-instance decision requiring it to disclose information to HL Display AB (HL) to assist in calculating damages. The first instance judgment was previously reported here.

Background

In the infringement proceedings before The Hague Local Division, HL succeeded on validity and infringement of EP 2 432 351. The Court ordered Black Sheep to (amongst other things) provide details to HL of production quantities, prices, profits, origins and distribution channels of the infringing products, and related advertising.

The Appeal

Black Sheep appealed the first instance decision and sought for suspensive effect of the disclosure aspect of the Order, arguing that compliance would involve disclosure of confidential commercial information which could not later be “uncommunicated” if the appeal succeeded. It also contended that without suspensive effect, it would have no recourse should it succeed in the appeal, as any financial compensation would be inadequate.

The Court of Appeal’s decision

The Court confirmed that per Art. 74 UPCA appeals have no automatic suspensive effect. A stay may be granted only in exceptional circumstances, such as where an order is manifestly wrong or where, without a stay, the appeal would be rendered pointless. The Court found that the disclosure order was justified to enable calculation of damages and to prevent further infringement. Black Sheep failed to establish any exceptional circumstances, accordingly the application was dismissed.

The Court emphasised that parties who foresee that disclosure may require production of confidential information should raise the issue during first-instance proceedings so that appropriate safeguards can be built into the Order. It noted that Black Sheep did not raise such request in the first-instance proceedings. 
 

UPC

Court of Appeal Upholds First Instance Decision Ruling on Inadmissible Broadening.
[UPC_CoA_762/2024 & UPC_CoA_773/2024]

On 5 November 2025, the Court of Appeal rejected an appeal by Seoul Viosys Co Ltd (Viosys) against the decision of the Düsseldorf Local Division (LD) revoking its EP 3 223 320 patent for inadmissible broadening. Note that in a separate appeal between the same parties concerning similar issues related to a Viosys patent from the same family, the Court of Appeal overturned the first-instance decision and also revoked that patent for added matter.  That appeal is covered here.

Background

Viosys, together with Seoul Semiconductor Co Ltd, brought infringement proceedings against Expert e-Commerce GmbH and Expert Klein GmbH (together Expert), alleging that certain smartphone LEDs manufactured by Emporia Telecom GmbH + Co KG and distributed by Expert infringed the patent. The alleged infringement concerned an LED chip installed in the phone’s camera unit. Expert counterclaimed for revocation, arguing that the patent (a divisional of EP 2 757 598 A2) contained subject-matter extending beyond its Korean-language PCT application. The LD agreed, finding claim 1 invalid because it covered LEDs with one mesa (a raised semiconductor region), whereas the Korean PCT application disclosed only embodiments with multiple mesas.

The Appeal

Viosys argued that the Korean PCT application did, in fact, disclose a single-mesa embodiment, relying on specific figures and passages in the specification. It further contended that a skilled person would understand from the drawings and description that claim 1 encompassed a single-mesa design. Viosys maintained that the LD had misinterpreted both the technical teaching and the English translation of the Korean PCT, and submitted a revised translation asserting that errors in the earlier version had led to a misunderstanding of the disclosure. Expert maintained that the patent was invalid. It relied on the principle that the number of mesas must correspond to the number of electrodes, and that the Korean PCT application consistently referred to “a plurality of mesas” and “reflective electrodes” in the plural, ruling out a single-mesa embodiment.

The Court of Appeal’s decision

The Court upheld the LD’s decision and confirmed the strict approach to added subject-matter under Art. 123(2) and 138(1)(c) EPC. It agreed that there is a one-to-one relationship between mesas and electrodes. Although claim 1 of the patent as granted referred to “a mesa”, the use of the singular did not confine the claim to a single mesa but rather meant “at least one”. The Court found that the Korean PCT application did not disclose an embodiment with only one mesa - properly read, the specification and figures showed multiple mesas corresponding to multiple electrodes. The skilled person, reading the application as a whole, would therefore find no “clear and unambiguous disclosure” of a single-mesa embodiment.

The Court also emphasised that when an international application is filed in a non-EPO language, the translation submitted by the applicant on entry into the European phase forms the basis for examination and is presumed accurate. Both the EPO and third parties are entitled, prima facie, to rely on that translation. The translation requirement is not a mere formality, and applicants must exercise diligence to ensure its correctness.
 

New episodes: You Me and the UPC: Case by case

Episode 7: UPC grants permanent long arm injunction

Episode 8: Occlutech obtains preliminary injunction against Lepu

View all episodes here.