HAMBURG LOCAL DIVISION Law and Practice Contributed by: Lukas Wosnitza, Michael Schneider, Sönke Scheltz and Désirée Heintz, Eisenführ Speiser
(a) the application for provisional measures is dismissed, Article 62 (2) UPCA, Rule 209 (2) RoP. • JingAO Solar Co Ltd v Chint/Astronergy, UPC_CFI_429/2024: (a) the application to dismiss the procedural order of the judge-rapporteur on security and the application to order the claimant to provide adequate security are rejected, Rules 158 and 333 RoP. • Dolby International AB v (Seiko) Epson, UPC_ CFI_77/2025: (a) objection according to Rules 19.1 (a) and 20.1 RoP is rejected. 3.2 Leading Cases Fives ECL, SAS v REEL GmbH (UPC_ CFI_274/2023; ACT_559935/2023, 17 November 2023; UPC_CoA_30/2024, 16 January 2025) On 17 November 2023 (UPC_CFI_274/2023; ACT_559935/2023), the LD HH dismissed a claim by the claimant Fives seeking the separate determination of damages by the UPC after a court of a contracting member state had estab - lished the existence of an infringement of a Euro - pean patent and an obligation in principle for the infringer to pay damages. The court ruled that the UPC lacked jurisdiction in this matter, pri - marily because such a claim type is not included in the court’s catalogue of competences. Fives appealed the decision. The Court of Appeal in Luxembourg ruled – under Presiding Judge Rian Kalden and Judges Ingeborg Simon - sson and Patricia Rombach – that the court’s competence (or jurisdiction) includes a separate action for determination of damages. The court has jurisdiction to decide on acts of infringe - ment committed before the entry into force of the UPCA on 1 June 2023, as long as the Euro -
pean patent invoked has not yet lapsed at that date (case ID: UPC_CoA_30/2024). AGFA NV v Guccio Gucci S.p.A. et al (UPC_ CFI_278/2023, 30 April 2025) The court dismissed the infringement action as well as the counterclaim for revocation. In doing so, the court clarified the following aspects, which are also of importance for other cases: • Article 32 (1) (e) and 65 (1) UPCA allow attack of the patent in its entirety by means of a counterclaim, even though single claims are not a part of the infringement requests; • the definition of claimed features based on the principle that a patent may be used as its “own lexicon” is limited to those parts of the description that are related to the feature in question; • specifications in the description that are not consistent with the granted claims cannot serve as a basis for a broad interpretation of a claim; and • a counterclaimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered nov - elty-destroying or convincing starting points for the assessment of lack of inventive step in the oral hearing for the first time. 3.3 Pending Cases Fives ECL, SAS v REEL GmbH (UPC_ CFI_274/2023; ACT_559935/2023, 17 November 2023; UPC_CoA_30/2024, 16 January 2025) The Court of Appeal referred the case back to the LD HH after ruling that a separate action for determination of damages is admissible and that the court has jurisdiction in this matter. The LD HH must now decide on the amount of dam - ages. This case is of particular interest because it is likely to be the UPC’s first decision on the
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