Irides: Weekly global patent litigation update

This is our final Irides Weekly Update for 2025. The Bristows team wishes our readers a very happy festive break, and a prosperous and fulfilling 2026.

This edition features updates from: The United Kingdom (UK), the United States of America (USA), Italy and the Unified Patent Court (UPC).

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

UK - STOP PRESS

Court of Appeal overturns the revocation of Abbott's patent.

On 18 December 2025, the Court of Appeal gave its decision in a dispute between Abbott and Dexcom. Whilst Abbott and Dexcom have settled their dispute, Abbott was seeking to overturn the revocation of its patent EP (UK) 3 730 044 entitled “Compact on-body physiological monitoring device”.

The Court, assisted by the UKIPO, found that the first instance Judge’s conclusion on obviousness could not stand, it being inconsistent with the Judge’s interpretation of the claim of the patent, and there being no evidence to support a finding of obviousness on that interpretation. The appeal was allowed and the order for revocation has consequently been set aside. 
 

UK - STOP PRESS

High Court rejects Nokia jurisdiction challenge and grants interim licence.

On 18 December 2025, Mr Justice Mellor handed down his judgment in Acer, Hisense and ASUS v Nokia. The judgment dealt first with Nokia's challenge to the English Court's jurisdiction to hear the claimants' claim for a declaration of the RAND terms for Nokia's video codec portfolio and, second, with the claimants' applications for interim licence declarations against Nokia.

Nokia's jurisdiction challenge failed. One of Nokia's arguments had been that an alternative forum existed, by reason of its offer to arbitrate. However, the 

Court rejected this line of argument since, if it were otherwise, an offer to arbitrate would always prevent the English Court from assuming jurisdiction. 

In considering whether to grant the interim licence declarations, Mr Justice Mellor found that Nokia had breached its ITU-T commitment by adopting a "position of conditional willingness" - Nokia's offer of a RAND licence with terms adjustable via arbitration was held to be contrary to its obligation to the ITU-T, since it was not capable of acceptance. Accordingly, the interim licence declarations sought were granted by the Court. 

Finally, Mr Justice Mellor acknowledged the need for de-escalation between the UK Courts and the German courts and certain divisions of the UPC given the recent spate of Anti-Suit Injunctions and interim licence case law. The Judge suggested that this could be achieved on the UK side by being careful only to grant interim declarations that have a useful purpose in the UK. However, the Judge commented that a risk of conflict would remain unless or until the German courts and/or UPC recognise a contractual licence defence to a Standard Essential Patent infringement claim.
 

USA - STOP PRESS

District Court Judge grants BMW a Temporary Restraining Order.  

Further to the ongoing proceedings between the parties in the Munich I Regional Court (MRC), BMW has been granted a Temporary Restraining Order (TRO) against Onesta by Judge Albright of the US District Court for the Western District of Texas. The TRO prevents Onesta from pursuing or enforcing any injunctions from a foreign court that would: (i) interfere with the ability of the US Court to adjudicate BMW's claim, or (ii) limit BMW's actions in relation to its products in the US on the basis of Onesta's US patents.

In October 2025, non-practicing entity, Onesta brought an action against BMW in the MRC alleging infringement of one European Patent and two US patents. Bringing these proceedings was seen as significant, since it was the first time that the CJEU's decision on long-arm jurisdiction in BSH v Electrolux had been used to assert US patents in a European Court.

On 15 December 2025, BMW filed a declaratory judgment complaint against Onesta with the Waco Division of the US District Court for the Western District of Texas. The action sought declarations of misuse, noninfringement and invalidity of the US patents asserted in the MRC and alleged that Onesta had engaged in "extraterritorial forum shopping in apparent hopes of litigating the issue of infringement of U.S. patents in a court without the procedural, jurisdictional, and constitutional guarantees that can only be properly vindicated in a U.S. tribunal".

On the same day, BMW also filed a motion for an ex parte TRO and an Anti-Suit Injunction (ASI). The ASI sought to prohibit Onesta from: (i) pursuing any adjudication of US patents in Munich; (ii) seeking or enforcing an Anti-Anti-Suit Injunction (AASI) against BMW in Munich; and (iii) seeking or enforcing a preliminary injunction against BMW based on US patents asserted in Munich. BMW also sought an indemnity as to its costs associated with the continuation of the actions in Munich relating to the US patents. The ex parte TRO was sought in order to preserve the status quo while the Court considered issuing the ASI.

The next day (16 December 2025), the Court granted the TRO. The Court considered that there was a substantial risk of irreparable harm to BMW and the US Court's jurisdiction if Onesta were to attempt to enforce or pursue an AASI against BMW in the MRC and there was a substantial likelihood that Onesta would pursue such an AASI. In contrast, the Court found that the harm to Onesta of maintaining the status quo was negligible.

Onesta has until 23 December to file any opposition to the TRO and the ASI, with any further reply to be filed by BMW by 29 December 2025. (While the order states these dates are 2026, these dates are assumed to be this year.) The TRO will expire on 30 December 2025 unless extended by the Court. 
 

ITALY - STOP PRESS

The Court of Venice rules on UPC jurisdiction during the seven-year transitional period. 
[Case No. 10432/2024]

The Specialised Business Section of the Court of Venice (a first instance Italian national court) has ruled on the jurisdiction over European patents as between national courts and the UPC during the seven-year transitional period. Art. 83(1) of the UPC Agreement is generally understood to provide for concurrent jurisdiction over European patents between the UPC and national courts during the transitional period unless an opt-out has been filed. However, the Court of Venice has held that in circumstances where an opt-out has not been filed, the provisions of Art. 32 of the UPC Agreement mean that the UPC has exclusive jurisdiction over cases relating to European patents. 
 

UPC

Munich Local Division revokes Sanofi's Cabazitaxel Patent for lack of inventive step.
[UPC_CFI_146/2024]

Sanofi’s cabazitaxel second medical use patent (European Patent No. 2 493 466) has been the subject of much litigation to date. The Patent claims cabazitaxel, in combination with prednisone or prednisolone, for treating castration-resistant metastatic prostate cancer in patients previously treated with docetaxel. Cabazitaxel is sold by Sanofi as its second-line prostate cancer treatment, Jevtana®. 

National patents had already been invalidated in the UK and France in actions dating as far back as 2018. On the other hand, the patent withstood a validity challenge at the EPO, with the Board of Appeal earlier this summer dismissing the appeals against the Opposition Division decision upholding validity. Against that background, Sanofi brought UPC infringement proceedings against Stada, Dr Reddy’s and Zentiva (an action against Accord was settled before the oral hearing) alleging infringement in Germany, Denmark, Sweden, France, and Italy. The defendants counterclaimed for revocation.

The Munich Local Division (LD) consolidated the revocation actions. With various invalidity grounds at issue, the crux of the challenge was whether the patent was obvious over prior art describing the Phase III TROPIC trial for 

cabazitaxel in the claimed indication, as against the backdrop of earlier trials and pre-clinical data.  

On 12 December 2025, the LD held the patent invalid. The panel applied the UPC Court of Appeal’s recent guidance on inventive step of second medical use claims (per the 25 November 2025 decision in Amgen v Sanofi, reported earlier here), i.e.: 

1. Framing the ‘objective problem’ of the invention, which is to be done by reference to the underlying technical teaching of the patent rather than isolated differences over the prior art, and should avoid hindsight or pointers to the claimed solution;
2. the selection of one or more realistic starting points in the prior art; and
3. whether the claimed solution would be obvious in light of the objective problem, specifically whether the skilled person would be motivated to implement it as the “next step” (i.e. would, not only could).

The key focus for inventive step was whether the skilled person would have pursued the claimed treatment with a reasonable expectation of success.

The crucial point was the fact that the trial had been ongoing for 3 years without incident, and was nearing the end with six months left to run. This meant that Sanofi’s reliance on other discontinued authorised Phase III trials involving taxane did not support inventive step because the key point was not the authorisation of the Phase III trial.

Sanofi’s arguments emphasizing the unpredictability of oncology trials, toxicity concerns, and the absence of Phase II data in prostate cancer were thus rejected. The panel noted that while success was uncertain, the threshold for inventive step is lower: a reasonable expectation suffices. 

The LD acknowledged the EPO decisions, and how they differed from the national decisions, but noted that national and EPO decisions are merely persuasive, and not binding on the UPC. 

All infringement actions were dismissed, and Sanofi was ordered to bear the costs of both the revocation counterclaims and infringement proceedings. The decision underscores the UPC’s willingness to diverge from EPO findings and confirms that disclosure of an advanced clinical trial can render a second medical use claim obvious.
 

UPC 

Munich LD orders security for costs against Taiwanese claimant in ASUS v OPPO.
UPC_CFI_525/2025] 

On 12 December 2025, the Munich LD ordered ASUS Technology Licensing Inc. (ASUS) to provide security for costs in the amount of EUR 200,000 following an application by the defendants, including Guangdong OPPO Mobile Telecommunications Corp. Ltd (OPPO), under r. 158.1 RoP. 

Background 

OPPO sought security for costs on the basis that ASUS’ registered office was in Taiwan, which lies outside the UPC Contracting Member States. OPPO argued that Taiwan is not a contracting state to the Hague Judgments Convention and that no bilateral agreement exists governing the recognition and enforcement of foreign judgments. As a result, enforcement of a UPC costs order would depend on principles of reciprocity and a case-by-case review by Taiwanese courts, creating a substantial enforcement risk.

ASUS opposed the application on two grounds: (i) it argued that any costs award could be offset against FRAND licence fees owed by OPPO, which ASUS contended would exceed any recoverable costs; and (ii) ASUS submitted expert evidence on Taiwanese law asserting that enforcement of foreign judgments in Taiwan was not unduly burdensome and that Taiwan effectively complied with Hague Judgments Convention principles, despite not being a formal contracting state. 

ASUS’s financial standing was not disputed. The central issue was whether enforcement of a UPC costs order in Taiwan would be unduly burdensome.

The Court’s decision

The Court accepted that enforcement of foreign judgments in Taiwan is, in principle, possible but noted that recognition by a Taiwanese court is a prerequisite to enforcement. It found that enforcement is subject to material uncertainty, given the absence of domestic law or international agreements guaranteeing recognition. The Court also noted that enforcement timeframes could vary significantly, from around six months to as long as six years. In those circumstances, the Court concluded that enforcing a UPC costs decision in Taiwan would be at least unduly burdensome, justifying an order for security. 

Amount of security

In determining quantum, the Court noted that OPPO had not provided any estimate of its expected costs for the action. In the absence of such evidence, it ordered security of 50% of the maximum recoverable costs, based on the value of the dispute and the applicable ceiling.

OPPO also sought security in respect of a prospective counterclaim for revocation. As no counterclaim had yet been filed, the Court rejected that request, while noting that a further application could be made once a counterclaim is brought. 
 

UPC 

Düsseldorf Local Division rules on product claim interpretation (In light of a corresponding process) and breadth of injunctions. 
[UPC_CFI_712/2025]

On 5 December 2025, the Düsseldorf LD granted an application for provisional measures against Menarini in a dispute over Roche’s patent for an implantable sensor used in continuous glucose monitoring. The Court found a high likelihood of infringement of claims 1 and 16 and ordered a broad injunction covering manufacture, marketing, and distribution in Germany, France, and Italy, alongside seizure and disclosure obligations. It rejected arguments on urgency and validity, emphasising the need for effective enforcement given the short remaining patent term and competitive market dynamics.

The decision clarifies two key legal points. First, an independent process claim (and the corresponding process description) can only influence the interpretation of an independent product claim if the patent specification explicitly states that the process imparts characteristics to the claimed product. The respondents argued that the manufacturing steps described in the patent should limit the scope of the product claim, pointing to process claim 18 and passages describing cutting and structuring methods. The Court rejected this, stressing that claim 1 is a product claim and its scope cannot be narrowed by manufacturing details unless the specification makes clear that those steps define essential properties of the claimed product. The judgment noted that the patent merely described simplified manufacturing as an advantage, not as a mandatory feature, and that the ability to produce the claimed structure without complex lithography sufficed to achieve the inventive concept. This interpretation aligns with Art. 69 EPC and the Protocol, ensuring legal certainty and preventing retroactive importation of process limitations. 

Second, the Court confirmed the breadth of UPC injunctions. Menarini argued that an order prohibiting manufacture was disproportionate because the contested product was made by Sinocare in China and not within a UPC member state. The Court disagreed, holding that injunctions under Art. 62 UPCA may cover future acts of manufacture regardless of where prior production occurred. The rationale was to prevent infringers from relocating production or initiating manufacturing within contracting member states after the injunction. The Court emphasised that effective enforcement requires covering other acts, including making, and that such relief does not unfairly burden the respondents since they have no entitlement to manufacture in the relevant states.
 

UPC 

Düsseldorf LD denies recall and removal orders for indirect infringement. 
[UPC_CFI_316/2024 UPC_CFI 547/2024]

On 10 December 2025, the Düsseldorf LD delivered its decision on infringement and validity in the proceedings between M-A-S Maschinen against Altech Makina.

The claimant, M-A-S Maschinen, had brought infringement proceedings in relation to its European Patent which claimed a rotating hollow body filter system with a disc‑shaped filter for filtering impurities from a plastic melt. The claimant alleged direct infringement in relation to the defendant's acts relating to the whole filter system and indirect infringement in relation to the defendant's acts relating to the disc-shaped filters for use in the system. Remedies including an injunction, destruction, recall, and removal of infringing products and damages were sought by the claimant.

The Court found direct infringement and also held that the defendant's offer and supply of filters constituted indirect patent infringement insofar as the filters were intended for the defendant's system.

Insofar as the filters were intended for the claimant’s systems, the Court considered whether exhaustion had occurred under Art. 29 UPCA. The Court held that lawful purchasers of the claimant’s systems were entitled to use it for its intended purpose, which included maintenance and restoration. Such maintenance required that the filter be replaced every 2 - 4 weeks. This replacement was therefore held to be a normal and permissible maintenance measure, and the technical effects of the invention were not considered to be reflected precisely in the replacement part. Therefore, the claimant’s patent rights were held to have been exhausted in this context.

While the remedies sought by the claimant were granted in respect of direct infringement, the Court declined to order recall, permanent removal from distribution channels and destruction of the disc-shaped filters found to indirectly infringe the claimant’s patent under Art. 64(1) UPCA. Such decision was made on the basis that there were other possible uses for the defendant's filters, such as distribution in patent-free countries (see also the decisions in Panasonic v OPPO (UPC_CFI_140/2023) and Ortovox v Mammut (UPC_CFI_16/2024)).

While the claimant had sought provisional damages under r. 199 RoP, the Court declined to make such an award on the basis that the claimant’s submission did not show the claim was a plausible estimate based on specific facts.

The defendant had counterclaimed for revocation of the patent, alleging that the patent lacked an inventive step over a number of prior art references. In rejecting the defendant's arguments, the Court held that it was not sufficient to merely name the documents on which it based its attack; rather, it should have explained the disclosure of the relevant documents and explained specifically why and how the skilled person would have combined the documents and arrived at the claimed solution without engaging in inventive activity.

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

Episode 17: Court of Appeal Upholds First Instance Decision Ruling on Inadmissible Broadening

Episode 18: Paris Central Division Rejects Joinder Application Under r. 340.1 and Maintains Separate Proceedings for Both Infringement and Revocation

View all episodes here