UPC_CFI_830/2024 – UPM v International N&H

Expert Commentary

Refund of court fees in a revocation action Facts 1. Revocation action with respect to EP 3 540 068. 2. The written procedure was closed on 30 January 2026. 3. On 13 February 2026, the case was stayed until the decision of the Board of Appeal of the EPO. 4. The Board of Appeal revoked the patent with a reasoned decision issued on 27 February 2026. 5. The claimant requested disposing the case by a R. 360 RoP order as the proceedings have become devoid of purpose and asked for reimbursement of its legal costs by the patentee in the amount of € 96,000. 6. The defendant agreed. The Court Grants the request. Comment If the timing of a revocation action is such that the Opposition Division has revoked the patent and a decision of the Board of Appeal can still be expected during the oral phase of the proceedings, it makes sense to stay the proceedings as a decision about the validity can be expected within an acceptable time (also in UPC terms), in this case 16 months. Of course, the case will take longer if the Board of Appeal reverses the decision of the Opposition Division, but in my opinion this is a consequence that should be accepted in the interest of judicial efficiency. The UPCA, in its preamble, endeavors to have an oral hearing within a year and a decision within 6 weeks after the oral hearing. However, there may be situations in which one has to accept, because of efficiency reasons for instance, that that timeframe cannot be met.

Full Decision Text

1 Order of the Court of First Instance of the Unified Patent Court Central Division (Section Munich) issued on 22 June 2026 CLAIMANT UPM-Kymmene Oyj Alvar Allon katu 1 - FI-00101 - Helsinki - FI represented by Clemens Tobias Steins of Hoffmann Eitle PartmbB. DEFENDANT International N&H Denmark ApS Parallelvej 16 - 2800 - Kongens Lingby – DK represented by Matthew Naylor of Mewburn Ellis LLP. PATENT AT ISSUE European Patent number 3 540 068 PANEL PRESIDING JUDGE: ANDRÁS KUPECZ LEGALLY QUALIFIED JUDGE AND JUDGE-RAPPORTEUR: MÉLANIE BESSAUD TECHNICALLY QUALIFIED JUDGE: ANNA HEDBERG LANGUAGE OF THE PROCEEDINGS: English. Action n°: UPC 830/2024 Revocation action 2 SUBJECT-MATTER OF THE PROCEEDINGS Revocation action. No need to adjudicate (R. 360 and 363 RoP). Costs decision (R. 150 RoP) FACTS AND PROCEEDINGS On 23 December 2024, UPM-Kymmene ('Claimant') brought a revocation action in the Central Division (section Munich) (´CD Munich´) against Virdia and International N&H Denmark in relation to EP 3 540 068 (´the Patent´). The revocation action has been assigned numbers ACT 67486/2024 (UPC CFI 830/2024). On 11 March 2025, the judge-rapporteur (‘JR’) decided that International N&H Denmark ('Defendant') be the sole Defendant in this case and that the originally named first Defendant Virdia no longer be a party to the proceedings (ORD 8010/2025 in action number ACT 67486/2024, App 7823/2025). The written procedure has been closed on 30 January 2026 and the oral phase has been opened on the same date. On 13 February 2026, an order was issued to stay the proceedings until the EPO Board of Appeal's decision had become final. On 10 June 2026, the Claimant informed the Court that on 27 February 2026, the Board of Appeal has issued its reasoned decision revoking Patent number 3 540 068, and that this decision had become final and binding. The Claimant stated that the present proceedings should be resumed and disposed of by way of a Rule 360 RoP order as they have become devoid of purpose, since the asserted patent no longer exists. The Claimant requested that the Defendant bears the costs of the proceedings since he has achieved its objective with the revocation action. He requested to be awarded reimbursement of a total amount of EUR 96,000.00 comprising: • EUR 20,000.00 in court fees for the revocation action • EUR 76,000.00 in legal expenses. On 16 June 2026, the Defendant accepted that the proceedings should be resumed and the action disposed of pursuant to Rule 360 RoP. The Defendant also agreed to reimburse the Claimant’s costs up to a total amount of EUR 96,000.00. GROUNDS FOR THE ORDER As the patent was revoked in its entirety by the Board of Appeal of the European Patent Office in a final decision on 27 February 2026, the present proceedings shall be resumed pursuant Rule 296.2 RoP. As regard to the revocation of the patent by the Board of Appeal of the European Patent Office after the action was filed, the present revocation action has become devoid of purpose. The action shall then be disposed of in accordance with Rule 360 RoP. 3 Both parties agree that there is no longer any need to adjudicate on it, therefore they have no more any legal interest in a decision regarding the revocation of the patent. Regarding Article 69.1 of the UPC Agreement, the Defendant, as the unsuccessful party, is ordered to reimburse a total amount of EUR 96,000.00 to the Claimant (Court fees : EUR 20,000.00 and recoverable costs : EUR 76.000.00). ORDER I. The proceedings (Revocation action, UPC CFI 830/2024) are resumed at the date of the present order; II. The revocation action is disposed of; III. International N&H Denmark ApS shall reimburse a total amount of EUR 96,000.00 to UPM-Kymmene Oyj; Delivered on 22 June 2026 NAMES AND SIGNATURES András Kupecz Presiding judge Mélanie Bessaud Legally qualified judge and judge-rappor- teur Anna Hedberg Technically qualified judge On behalf of the registry Information about appeal An appeal against the present Order may be lodged at the Court of Appeal, by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of its notification (Art. 73(1) UPCA, R. 220.1(a), 224.1(a), R. 360, R. 363.2 RoP).

Key Holdings

• Proceedings can be stayed pending a decision from the EPO Board of Appeal, especially if a validity decision is expected within a reasonable timeframe.
• A case may be disposed of by a Rule 360 RoP order if proceedings become devoid of purpose, such as when a patent is revoked by the EPO.
• Reimbursement of legal costs can be requested by the claimant when proceedings are disposed of due to becoming devoid of purpose.
• Judicial efficiency may sometimes necessitate accepting longer timeframes than the UPCA's aspirational goals for oral hearings and decisions.

Tags

• Revocation
• Court Fees
• Stay of Proceedings
• Judicial Efficiency
• EPO