UPC_CFI_1938/2026 – iCat v Dentsply

Expert Commentary

Preliminary objections Facts 1. Dentsply was sued by iCat for infringement of EP 1 808 129. 2. Dentsply filed a preliminary objection (R. 19 RoP). 3. Dentsply claimed that the UPC cannot provide the full breadth of the relief sought, referring to the limitation period under Article 72 UPCA: the claimant claims damages from 4 June 2017, whereas the five-year limitation period would mean that damages could be claimed only from 11 June 2021. The JR The preliminary objection is inadmissible as the limitation of the temporal scope of certain remedies is not mentioned as a ground for objection in R. 19 RoP. Comment 1. A very curious action by the defendant, as it apparently does not understand the difference between jurisdiction, competence and the limitations of Article 72 UPCA. 2. During the main proceedings the defendant will learn that Article 72 UPCA only applies to monetary damages. It does not mean that you cannot get information with respect to the period before 11 June 2021 or that products delivered before that time cannot be recalled (all assuming that that would be proportionate and possible under the law governing the infringing acts before the entry of the UPC). 3. Article 72 certainly does not mean that infringements which started more than five years before an infringement case was filed can continue, as I read recently in an advice. Furthermore, if, before the entry of the UPC, the limitation period under the applicable national law had already extinguished the claim, then such a claim does not 'revive' because of the UPCA.

Full Decision Text

Unified Patent Court Court of First Instance Local Division Mannheim UPC_CFI_1938/2026 Order of the Court of First Instance of the Unified Patent Court Local Division Mannheim issued on 26 August 2026 **PATENT AT ISSUE** European Patent no EP 1 808 129 B1. **DIVISION** Local Division Mannheim. **DECIDING JUDGES** This order has been rendered by the legally qualified judge Thomas Adocker (as judge-rapporteur). **LANGUAGE OF THE PROCEEDINGS** English. **SUBJECT-MATTER OF THE PROCEEDINGS** Preliminary objection – R. 19 RoP **CLAIMANT:** iCAT CORPORATION, represented by its Managing Director Masaya Saigan, 3F Mitsuya 3rd bldg.., 3-19-15, Nishinakajima, Yodogawa-ku, Osaka 532-0011, Japan UPC Representative: Nora Keßler, BluePort Legal Partnerschaft von Rechtsanwälten mbB, Goethestraße 13, D-60313 Frankfurt/Main Electronic address: kessler@blueportlegal.com, palzer@blueportlegal.com Supported by: Patentanwälte Olbricht Buchhold Keulertz Partnerschaft mbB, Neue Mainzer Straße 75, D-60311 Frankfurt/Main **DEFENDANTS:** 1. DENTSPLY SIRONA Inc., represented by its representatives, 13320 Ballantyne Corporate Place, Charlotte, North Carolina 28277-3607, USA 2. Dentsply Sirona Deutschland GmbH, represented by its Managing Director Xavier Carro, Fabrikstraße 31, D-64625 Bensheim UPC Representative for both defendants: Peter Thorniley, Venner Shipley LLC, TIDE Bankside, 8 Emerson Street, London SE1 9DU, United Kingdom Electronic address: pthorniley@vennershipley.co.uk **REQUESTS OF THE PARTIES** The Defendants filed on 24 July 2026 a preliminary objection based on R. 19 RoP. While the Defendants do not object to the Court's jurisdiction or competence to hear the main underlying basis of the claim, they claim that it would be clear that the UPC Agreement precludes the Court from providing the full breadth of the relief sought in the Statement of Claim due to a limit on the Court's jurisdiction in time. Specifically, the Claimant would not have addressed the period of limitation set out in Article 72 UPCA. No attempt would have been made to reconcile the claimed start date of 4 June 2017 for the calculation of damages with the provisions of Article 72 UPCA. The Statement of Claim would have been submitted to the court in line with the formal requirements on 11 June 2026, and not on 1 June 2026, as originally filed. From Art 72 UPCA, it would follow that financial compensation cannot be sought for acts more than five years prior to that date, i.e. prior to 11 June 2021. There would also be no doubt that the Claimant was aware of the Defendants' activities prior to 11 June 2021. The Defendants further state that they seek at this stage that the Preliminary objection is noted by the court but that its substance is dealt with when and if appropriate in the main proceedings in line with R. 20.2 RoP. In the main proceedings, the Defendants request that any decision or order for which it is relevant take account of the earliest applicable date of 11 June 2021 rather than 4 June 2017 as sought by the Claimant. 3. The Claimant states that the preliminary objection would be inadmissible and, in any event, unfounded. The Claimant therefore requests that the preliminary objection shall be dismissed. The Claimant argues that the preliminary objection does not concern the jurisdiction or competence of the Court. The Defendants would expressly accept that the Court has jurisdiction and competence to determine the action and would merely contend that Art. 72 UPCA limits the temporal scope of certain remedies. The Defendants would also acknowledge that this question becomes relevant only upon a finding of liability and request that it be dealt with, if at all, in the main proceedings under R. 20.2 RoP. The objection thus would concern the applicable substantive law and the scope of the relief sought, rather than jurisdiction or competence, and would therefore be inadmissible under R. 19.1 RoP. Furthermore, the Claimant states that the Defendants' request for an across-the-board cut-off of 11 June 2021 would be unfounded. A distinction must be drawn between the intertemporal applicability of substantive law, the temporal scope of the information to be rendered, and the period ultimately relevant to the determination of damages. The information to be rendered should not be subjected to an ex ante temporal limitation based on rules that may ultimately affect the recoverability of damages, and the relevant periods for damages are to be determined in the subsequent proceedings under Rules 125 et seqq. RoP, once the necessary information is available. The Claimant refers to the decision of the LD Mannheim of 11 March 2025, Hurom v. NUC Electronics and WARMCOOK, UPC CFI 159/2024, paras. 103 and 107 et seq, and to the decision of the Nordic-Baltic Regional Division, decision of 31 July 2025, TEXPORT Handelsgesellschaft v. Sioen, UPC CFI 9/2024, paras. 84 et seq. and 95. Eventually, the Claimant states that the Defendants would have also failed to establish why the correction of formal deficiencies on 11 June 2026 should displace 1 June 2026 as the date on which the action was brought. UPC case law concerning the corresponding wording of Art. 33(4) UPCA would treat an action as having been brought by the objective act of lodging it (Central Division Munich, Order of 24 August 2023, Amgen v. Sanofi-Aventis, UPC CFI 1/2023, para. 4.35). **GROUNDS FOR THE ORDER** The preliminary objection is inadmissible. R. 19.1 RoP states: Within one month of service of the Statement of claim, the defendant may lodge a Preliminary objection concerning: (a) the jurisdiction and competence of the Court, including any objection that an opt-out pursuant to Rule 5 applies to the patent that is the subject of the proceedings; (b) the competence of the division indicated by the claimant [Rule 13.1(i)]; (c) the language of the Statement of claim [Rule 14]. 4. The preliminary objection merely contends that Art. 72 UPCA would limit the temporal scope of certain remedies. The preliminary objection does not refer at all to any of the points (a) to (c) above. Therefore, the requirements as set in R. 19.1 RoP are not fulfilled, which leads to the inadmissibility of the preliminary objection. **ORDER** The preliminary objection of 24 July 2026 is dismissed. Mannheim, 26 August 2026 ADOCKER judge-rapporteur

Key Holdings

• Limitations on remedies, such as the five-year limitation period under Article 72 UPCA, are not grounds for preliminary objections under R. 19 RoP.
• Article 72 UPCA applies only to monetary damages and does not prevent obtaining information or recalling products from before the five-year period, if proportionate.
• Article 72 UPCA does not mean that infringements which started more than five years ago can continue, nor does it revive claims already extinguished under national law.

Tags

• Preliminary Objection
• Jurisdiction
• Limitation Period
• Damages
• Remedies
• Infringement