UPC_CFI_196/2025; UPC_CFI_665/2025 – Maxell v Samsung

Expert Commentary

Result interim conference The JR 1. Value of the proceedings: claim € 2 million, counterclaim (after suggestion by the JR) € 3 million. 2. Parties confirmed that their confidentiality requests are based on R. 262.2 RoP and not based on R. 262A RoP: the claimant’s access or use of the information is not restricted. 3. Parties agreed that it is not necessary to draft the request for injunction in “the German way” (with repetition of the claims). 4. The claimant confirmed that if claim 1 of the patent is invalid, the Court should not consider the dependent claims but turn immediately to the auxiliary requests. 5. The defendants accept to limit their validity attacks to five or six, and the claimant to limit their auxiliary requests (34) to about 10. 6. Parties would try to agree on costs. 7. The JR sets schedule for the oral hearing. Comment 1. The international (Swedish) judge is the JR and his influence is immediately clear: he questions if injunction should be formulated the German way with repetition of the whole text of the claims, or in the far more simple “UPC way” such as “not to infringe Unitary Patent no. (…), more specifically by offering etc. product X. 2. Apart from the fact that the JR did the necessary housekeeping in cutting down the number of invalidity attacks and of auxiliary requests etc., he wants the parties to settle on costs. Such settlements are apparently also not known in German practice but in the UPC it slowly starts to become a habit, because the judge try to get parties to agree on costs. 3. I was surprised that parties stated that they only wanted the application of R. 262.2 RoP with respect to their confidentiality requests. I think that this is unwise because it means that there is no confidentiality regime during the litigation, and even if parties have agreed that certain information remains confidential, that does not mean that information in the pleadings and evidence (exhibits) filed in the proceedings and discussed during the oral hearing are confidential, which would automatically mean that R. 262.2 RoP (confidentiality to the public) is not applicable. So parties should always (also) ask for R. 262A RoP confidentiality. If they do not want to limit access for the other party then they simply do not ask for it. So in my opinion if you want application of R. 262.2 RoP you should always (also) ask for confidentiality under R. 262A RoP. 4. The claimant states that if claim 1 (the independent claim) is invalid, the Court should immediately go to the first auxiliary request and not bother about the dependent claims. In general, invalidity of the independent claim for obviousness will also lead to lack of inventive step of the dependent claims, but that is not always the case because the dependent claims may have inventive merit on their own. However, if the independent claim falls, because of lack of novelty, it is very well possible that this is not the case for the dependent claims (certainly in a case of so called “accidental non-novelty”).

Full Decision Text

Local Division Munich CFI 196/2025 CFI 665/2025 Rectified1 Order of the Court of First Instance of the Unified Patent Court Local Division Munich issued on 5 May 2026 (R. 105.5 RoP, R. 353 RoP) CLAIMANT / DEFENDANT: Maxell, Ltd. 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, 618-8525 Japan Represented by Benjamin Beck DEFENDANTS / CLAIMANTS: 1) Samsung Electronics Co., Ltd. 129 Samsung-Ro, Maetan-3dong, Yeongtong- gu, Suwon-si, Gyeonggi-do, 16677 Republic of Korea Represented by Christian Lederer 2) Samsung Electronics GmbH Frankfurter Straße 2, 65760 Eschborn, Germany Represented by Christian Lederer 3) Samsung Electronics France, S.A.S. 6 rue Fructidor, 93484 Saint-Ouen, France Represented by Christian Lederer 4) Samsung Electronics Benelux B.V. Evert van de Beekstraat 310, Schiphol, 1118 CX, Netherlands Represented by Christian Lederer 5) Samsung Electronics Italia SpA. Via Mike Bongiorno 9, 20124 Milan, Italy Represented by Christian Lederer 1 The incorrect information at the end of paragraph I. in the order issued earlier today is hereby deleted. CFI 196/2025 CFI 665/2025 2 PATENT AT ISSUE: European patent EP 2 403 266 PANEL/DIVISION: Panel 1a of the Local Division Munich DECIDING JUDGE: This order is issued by legally qualified judge Stefan Johansson, acting as judge-rapporteur LANGUAGE OF THE PROCEEDINGS: English SUBJECT-MATTER: Infringement action & Counterclaim for revocation POINTS AT ISSUE: Summary of the interim conference ----------------------------------------------- SUMMARY OF THE INTERIM CONFERENCE The interim conference took place on 30 April 2026 by video conference. The Claimant was represented by Mr. Christoph Crützen (Mayer Brown LLP), Mr. Alexander Balan (Mayer Brown LLP), Dr. Svenja Schenk (Mayer Brown LLP) and Dr. Thomas Hell (Bosch Jehle Patentanwaltsgesellschaft mbH). The Defendants were represented by Mr. Christian Lederer (PENTARC), Mr. Jan Phillip Rektorschek (PENTARC), Mr. Tobias Baus (PENTARC), Ms. Julia Fischer (PENTARC), Mr. Martin Kuschel (PAUSTIAN) and Mr. Christoph Hewel (PAUSTIAN). LQJ Stefan Johansson (JR) and TQJ Hergen Kapels were present on behalf of the Court. The following points were discussed. The value of the proceedings It was agreed that the value of the infringement action should be set at EUR 2.000.000. The JR suggested that the value of the counterclaim should be set to EUR 3.000.000 (instead of EUR 2.000.000), which was accepted by the parties. CFI 196/2025 CFI 665/2025 3 Exhibits The parties agreed to submit an updated complete lists of their respective exhibits within one week, i.e. by 7 May 2026. Confidentiality The Defendants confirmed that their confidentiality request of 5 March 2026 (and their confidentiality request of 5 August 2025) based on R. 262.2 RoP should not be understood as an implied request for an order pursuant R. 262A RoP, i.e. an order restricting the Claimant’s access or use of the information. The requests only relate to third parties’ access to the register. Parties’ requests in the main proceedings The Claimant confirmed that even though the main request for an injunction is drafted “the German way” (with repetition of the claims), they leave it for the Court to decide whether the injunction should be drafted this way (e.g. if an injunction is issued based on one of the auxiliary requests), or if it is sufficient to refer to the relevant claims without repeating the whole claims. The Defendants confirmed that both alternatives are sufficiently clear to them. The Claimant confirmed that in case the Court would find that e.g. claim 1 of the Patent is invalid, the Court should go directly to the auxiliary requests (AR’s) and not assess whether the Patent could be maintained based on e.g. claim 4 or 7. The Defendants were given the possibility to further comment on the legal basis for its request VI. in the infringement action, i.e. that they should be given the possibility to avert enforcement of the decision (in particular in relation to injunctive relief, recall and destruction) by providing a specified security, without regard to any security provided by the Claimant (cf. e.g. Art. 9.1(a) of Directive 2004/48/EC and Art. 62.1 UPCA on the one hand, and Art. 11 of Directive 2004/48/EC and Art. 63 UPCA on the other). The Defendants referred to their written submissions. The Claimant confirmed that “provisionally enforce” in its request X. (in the Reply) should be read/understood as “immediately enforce”. Court expert The parties confirmed that any references to a court expert in the pleadings shall not be understood as a formal request to appoint such an expert, i.e. a request that needs to be dismissed in case the Court does not see a need to appoint a court expert. The court expert is only mentioned as an option, in case the Court would see the need for a court expert. The JR confirmed that he has no intention to appoint a court expert in these proceedings. Alleged late filings, the number of invalidity attacks, auxiliary requests, etc. The large number of invalidity attacks and auxiliary requests (AR’s), including an application pursuant R. 30.2 RoP, were discussed. It was agreed that the parties shall limit their attacks/AR’s as follows: - The Defendants shall by 12 May 2026 submit a document where their attacks on the validity of the Patent as granted are limited to not more than five or six of the already CFI 196/2025 CFI 665/2025 4 submitted attacks. The Defendants shall also specify the parts of their submissions relevant thereto. - The Claimant shall by 26 May 2026 submit a document where they limit their AR’s to about ten of the 34 already submitted AR’s. The Claimant shall also specify the parts of their submissions relevant thereto and indicate to which attack/s each AR is a response. - The Defendants shall by 9 June 2026 submit a document where they limit their attacks on the validity of the (remaining) AR’s to one or two per AR (if more are necessary for a specific AR, they shall explain why). The Defendants shall also specify the parts of their submissions relevant thereto. The JR informed the parties that the objections on the admissibility of Exhibit MB INFR 22 and additional arguments based on GMS/Spotify/YouTube/Google Cast, as well as the FRAND defence relating thereto, will be decided by the panel if it becomes relevant for the outcome of the decision. Thus, when preparing for the oral hearing, the parties should be aware that these arguments and exhibits may be held admissible. Legal costs, etc. It was agreed that the parties shall endeavour to reach an agreement on costs and that they will inform the Court about the content of any such agreement, or, in the alternative, submit their provisional estimates of the costs that they intend to claim. The JR finds it appropriate to set the date for these submissions to 13 July 2026. The oral hearing The following preliminary course and time schedule for the oral hearing on 23 July 2026 was agreed: - introduction by the Court (30 – 45 minutes) - claim construction (up to 60 minutes [rebuttal included] for the Claimant and – equally – for the Defendants) - validity (up to 90 minutes [rebuttal included] for the Claimant and – equally – for the Defendants) - infringement (up to 30 minutes [rebuttal included] for the Claimant and – equally – for the Defendants) Presentations, etc. The parties were informed that PowerPoints presentations can be used during the oral hearing, but the content of any such presentations must be limited to the content of the exchanged written pleadings and exhibits. Any PowerPoints presentations should be submitted to the Court and the other party by e-mail by 20 July 2026. Settlement The parties undertook to immediately inform the Court in case they would reach a settlement. CFI 196/2025 CFI 665/2025 5 ORDER: I. The value the infringement action is set at EUR 2.000.000. The value of the counterclaim for revocation is set at EUR 3.000.000. Additional payment shall be arranged by the Defendants by 15 May 2026 (cf. Rule 371.4 RoP) II. The parties are requested to act in accordance with the agreements reached under the interim conference, as specified above. Issued in Munich on 5 May 2026 NAME AND SIGNATURE Stefan Johansson Judge-rapporteur

Key Holdings

• Judges actively manage proceedings, including limiting validity attacks and auxiliary requests.
• UPC judges encourage parties to settle on costs, a practice less common in some national systems.
• Confidentiality requests should ideally include R. 262A RoP in addition to R. 262.2 RoP for comprehensive protection.
• The format of injunction requests in the UPC may differ from national practices, favoring a simpler 'UPC way'.
• Claimant's strategy regarding dependent claims upon invalidity of an independent claim requires careful consideration of novelty vs. inventive step.

Tags

• Interim Conference
• Procedure
• Confidentiality
• Costs
• Claim Construction
• Patent Validity
• Auxiliary Requests

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