Irides: Weekly global patent litigation update

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

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

UPC

Central Division opines on competence to consider requests for novel declarations
[Sandoz v Novo Nordisk UPC_CFI_2221/2026]

In Sandoz v Novo Nordisk (UPC_CFI_2221/2026), the Milan Central Division has handed down an order on the scope of the UPC’s competence. Sandoz brought revocation proceedings against Novo’s unitary patent UP 3 689 365 (EP 365) seeking revocation, costs and three additional requests for relief: Requests 5, 6 and 7. Novo brought a preliminary objection under r. 19 RoP challenging the Court’s competence to entertain those three additional requests.

Request 5 sought a declaration that a composition comprising semaglutide for treating or preventing type 2 diabetes, administered subcutaneously once weekly at 1.0 mg, was obvious at the priority date. Request 6 was for a declaration that claims of Unitary Patents or relevant European patents in the EP 365 family broad enough to cover the claims of UP 365 would be invalid for lack of inventive step. Request 7 sought an order preventing Novo from withdrawing its approval of the patent text at the EPO pending a final validity decision in the ongoing parallel opposition action. Sandoz argued that the requests were intended to prevent the future possibility of the patentee playing the “divisional game”, the practice of withdrawing patents that are the subject of invalidity proceedings before a final (in)validity decision can be rendered.

The order only engages with the abstract question of whether the Court has competence to determine the requests. The ultimate merits, scope and appropriate relief were reserved to the main proceedings. The Court did note that a reservation by the applicant of the right to file divisionals did not amount to “unequivocal evidence that Novo Nordisk is presently preparing to implement the alleged ‘divisional game’” and that the material before it was insufficient “to establish, at this stage of the proceedings, misconduct in the present case”.

The UPC held that it had jurisdiction to ensure the effectiveness of the judicial protection entrusted to it. Request 5 fell outside that jurisdiction because it sought an abstract declaration concerning the obviousness of a composition at the priority date.

A contrasting conclusion was reached on Requests 6 and 7. The Court interpreted Request 6 as seeking relief against materially equivalent claims pursued through divisionals and held that it had competence to consider such a request. The Court held that the UPC had jurisdiction where necessary to “secure the effectiveness of UPC proceedings” and citing the principles established in Omnia v Sidel (UPC_CFI_799/2026; UPC_CoA_90/26) concluded that “judicial protection need not invariably be tied to the formal date of grant”. As such, the Court held that it was possible in principle for it to rule on infringement or validity issues concerning a patent application before formal grant and that this did “not amount to an undue interference with the EPO’s functions”. In practice, the Court identified an indirect means of achieving this objective. Where a patent is withdrawn during infringement or revocation proceedings and related divisional applications remain pending, the Court considered that continuing to hear the case could be justified if the evidence ultimately established an abusive divisional strategy. In this respect, the Court noted that r. 360 RoP did not oblige the Court to dispose of an action when the patent in question is withdrawn.

The Court stressed that this approach did not entail “any direct adjudication upon the validity of patents yet to be granted”. Rather, the significance of such a determination would only arise in the context of an action for enforcement or revocation of a subsequent divisional patent. Moreover, even in that case, the consequences of such a determination would not operate automatically and the Court hearing the later proceedings concerning the divisional patent would still have to determine whether a divisional had in fact been used to circumvent the earlier validity determination.

Importantly, the Court also emphasised that competence was not the same as admissibility. Citing Omnia v Sidel again, the Court said that whether Request 6, covering a possible plurality of granted and ungranted European and Unitary Patents, was admissible was “not a question of competence of the Central Division (section Milan) but of the admissibility of the requests, which must be dealt with in the main proceedings”.

Request 7 was also held to be within the Central Division’s competence as a possible protective measure preserving the effectiveness of its revocation jurisdiction, but whether such an order should actually issue, taking into account questions of urgency, proportionality and risk of harm, was expressly reserved.

Accordingly, the preliminary objection succeeded on Request 5. It was dismissed in respect of Requests 6 and 7; albeit that the competence was (1) limited to ensuring the effectiveness of the judicial protection entrusted to it, by relying on r. 360 RoP and determining that a patent lack(ed) inventive step, notwithstanding its withdrawal; and (2) that the Central Division has an autonomous jurisdiction to grant provisional and protective measures to restrain a party from withdrawing its approval of the text of the patent under Art. 113(2) EPC to preserve the effectiveness of pending revocation proceedings. That dismissal was without prejudice to the later determination of their admissibility, merits and scope. Leave to appeal was granted.
 

Brazil

Commercial Court of Rio de Janeiro grants preliminary injunction against Disney over Huawei’s HEVC patent. 
[Huawei v The Walt Disney]

The 6th Commercial Court of Rio de Janeiro has granted Huawei provisional relief against Disney in infringement proceedings concerning a non-essential patent relating to High Efficiency Video Coding (HEVC) technology. The Court ordered Disney, within 24 hours, to cease importing, marketing, offering or selling through Disney+ video files compressed using the patented H.265/HEVC technology. Non-compliance is subject to a single penalty of BRL 5 million (approximately USD 1 million), which the Court considered necessary to provide an effective deterrent.

The Court relied on an expert report which concluded that the relevant patent claims were novel and inventive and that Disney’s use of H.265/HEVC infringed the patent. It rejected Disney’s request for further expert assessment, finding the existing report sufficiently reasoned and criticising Disney’s successive applications for delaying the proceedings.

The Court also accepted the expert’s conclusion that no FRAND commitment applied. It added that, even if FRAND were relevant, Disney could not credibly allege a breach without offering or paying an amount it considered reasonable for its use of the patented technology. The parties were given 15 days to file closing submissions before the case returns for judgment.
 

UPC

Court of Appeal rules there is no right to appeal decisions on re-establishment of rights. 
[Rematec v Europe Forestry UPC-CoA-88/2026 et al.]

On 13 October 2026, the Court of Appeal (CoA) dismissed Rematec GmbH & Co KG’s application for leave to appeal against a Mannheim Local Division (LD) order concerning two unsuccessful applications for cost decisions. Following decisions on the merits in both LD and CoA infringement/revocation proceedings against Europe Forestry, Rematec had missed the deadlines for applications for both cost decisions. Rematec sought a retroactive extension of the missed time limits or, alternatively, re-establishment of rights in respect of the missed time limits. Rematec's requests were rejected by the LD, and Rematec appealed on the re-establishment of rights point.

The CoA held that application for leave to appeal pursuant to r. 157 RoP (appeal against cost decisions) in conjunction with r. 221 RoP (application for leave to appeal against cost decisions) is inadmissible insofar as it concerns a rejection of the application for re-establishment of rights. It explained that, according to r. 320.7 RoP (re-establishment of rights), there is no right to appeal from an order rejecting an application for re-establishment of rights or from an order granting re-establishment of rights. It follows that a corresponding application for leave to appeal according to r. 157 RoP in conjunction with r. 221 RoP is inadmissible. Rematec's appeal was therefore dismissed. 
 

UPC

Court of Appeal confirms limits on late auxiliary requests in infringement proceedings.
[Barco N.V v Yealink Network Technology UPC-CoA-145/2026]

The CoA has dismissed Barco N.V.’s appeal against an order of the Brussels LD refusing to admit an auxiliary request into ongoing infringement proceedings against Yealink Network Technology. This order provides useful guidance on three points: the limited scope for appellate review of Court of First Instance orders on applications to amend the patent or the case; the distinction between defending a counterclaim for revocation and expanding an infringement action; and the importance of coordinating UPC and EPO strategies from an early stage.

In this appeal, Barco sought to reverse the Brussels LD’s order refusing an application to introduce Auxiliary Request (AR6) into the proceedings at a late stage. The patent was also the subject of parallel EPO opposition proceedings, in which Barco initially filed 267 auxiliary requests. By contrast, Barco filed only five auxiliary requests in response to the UPC counterclaim for revocation, none of which corresponded to those 267 initially filed at the EPO. During the EPO opposition proceedings, the Opposition Division held that the claims in the majority of the requests lacked inventive step. However, the Opposition Division found that a new request submitted on the day (“AR6”, which was a combination of claims 1, 8 and 9 as granted) satisfied the requirements of sufficiency, added matter and novelty. A decision on the inventive step of AR6 was reserved for a subsequent hearing. In light of these developments at the EPO, Barco applied to the Brussels LD under r. 30.2 and r. 263 RoP to introduce AR6 into the proceedings, arguing that introducing it before the UPC would help align the proceedings and potentially avoid a new infringement action. The Brussels LD denied this request.

In relation to the scope of appellate review, the CoA confirmed that applications under r. 30.2 and r. 263 are subject to the UPC’s front-loaded procedure, including considerations of whether the applicant had acted with reasonable diligence and whether the amendment would unreasonably hinder the other party. The Court held that, since the first instance court had discretion in assessing those issues, appellate review was limited. The appellant therefore had to show that the LD had exceeded the bounds of its discretion and could not reasonably have reached its decision. The Court held that Barco had failed to do so.

On the difference between amending the scope of an infringement action and amending a defence to a counterclaim for revocation, the Court found that AR6 could not properly be treated as a defence to the counterclaim for revocation. In the original infringement action, Barco had only asserted claims 1, 6, 11, 12 and 13, and the counterclaim for revocation similarly focussed only on these claims. Claims 8 and 9 had not been challenged and would survive regardless of whether AR6 was admitted into the proceedings. Since claim 1 of AR6 was effectively claim 9 of the patent, the request instead appeared to extend the infringement action to previously unasserted subject matter. The Court held that r. 30.2 could not be used for that purpose.

On the issue of coordinating EPO and UPC proceedings, the Court stressed that this was an important consideration. Barco had not explained why claims 8 and 9 were omitted from its original infringement case or why AR6 could not have been filed earlier. The Court said that differences between EPO and UPC procedures made careful alignment more, rather than less, important. Admitting AR6 at that stage would also have required Yealink to address the validity and infringement of previously unasserted subject matter shortly before the UPC hearings. The appeal was therefore dismissed.
 

UPC

Paris Local Division finds Align’s clear-aligner patent valid and infringed.
[Align Technology v Angelalign Technology UPC_CFI_684/2025 et al.]

On 16 October 2026, the Paris LD held that Align’s patent relating to orthodontic clear aligners was valid and infringed by Angelalign. The Court granted an injunction covering 17 UPC Member States, together with recall, removal, destruction, information and damages. However, it dismissed Align’s arguments relating to allegedly infringing acts in the UK, holding that Align had failed to substantiate the applicable UK law and, in any event, had not established that the relevant defendants had committed infringing acts in the UK.

Align’s patent concerns orthodontic appliances that use a ridge-shaped protrusion to generate lingual root torque. Align alleged infringement by Angelalign’s systems which incorporate a Torque Ridge feature. Infringement turned on the construction of the term “buccal side of the cavity” and, in particular, whether the term referred only to cavities of appliance receiving posterior teeth or more broadly to any outward-facing side of a cavity. Angelalign argued that “buccal side” was limited to posterior teeth, which would have excluded its Torque Ridge feature on anterior teeth. The Court disagreed, holding that when the claims are interpreted in light of the description and drawings, “buccal” is used as a synonym for “facial” and is not confined to posterior teeth.

On validity, the Court rejected added matter attacks based on the introduction of the terms “single” and “continuous” in relation to the claimed “ridge-shaped protrusion”. It found that these amendments neither provided the skilled person with new technical information, nor amounted to an inadmissible intermediate generalisation. The Court also dismissed a series of inventive step arguments, emphasising that the relevant question is whether the skilled person would, not merely could, have combined the prior art in the manner alleged by Angelalign.

Although Align succeeded in the UPC territories, its UK infringement claims were dismissed. Relying on the CoA’s decision in Hurom v NUC, the Court held that Align had failed in its Statement of Claim to substantiate the relevant UK law applicable to the alleged acts of infringement. Its subsequent submissions on UK law were thus found to be both late-filed and, in any event, insufficient because they largely relied on UPCA provisions. The Court further held that Align had not established that the relevant defendants had committed infringing acts in the UK. 
 

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

Episode 99: Düsseldorf LD clarifies limits of r.171(2) RoP