UPC-CoA-176/2026; UPC-CoA-177/2026 – Neflix v DivX

Expert Commentary

Suspensive effect Facts 1. DivX sued Netflix for infringement of Unitary Patent 4 213 033. 2. The Opposition Division (“OD”) had delivered an opinion on 3 July 2026 for a hearing on 1 and 2 October 2026. 3. On 15 September 2026, the LD Munich granted the injunction and dismissed the counterclaim for revocation. 4. DivX had indicated that it would enforce this decision. 5. Neflix requested the Court of Appeal for suspensive effect of the decision during appeal. 6. Netflix stated that the LD has violated Art. 76 sub 1 and 2 UPCA because it had based its infringement finding on a fact which had not been argued by the claimant. 7. Netflix further stated that the LD had made an evident mistake with respect to the claim interpretation. Netflix only became aware of this interpretation during the oral argument and could not respond anymore in the counterclaim for revocation. 8. Therefore, it argued that the Court of Appeal should order suspensive effect as the OD (after the decision of the LD) had revoked the patent. This can only be different if the decision of the OD is so flawed that it is probable that the Board will not follow that decision. However, the LD had not stated this with respect to the preliminary opinion of the OD. 9. Furthermore, Netflix stated that the Court of Appeal should ask questions to the ECJ. The Court of Appeal 1. The provision, Art. 74 sub 1 UPCA, is that, in principle, an appeal has no suspensive effect. The only exception to this would be if the interests of the party requesting suspension outweighed those of the claimant. This may be the case if the decision is clearly wrong, if non-suspension means that the appeal is pointless, or if fundamental procedural rules are violated and it cannot be excluded that without such violation a different result would have been reached. 2. The Court does not agree with the arguments of Netflix. With respect to Art. 76 sub 1 UPCA the Court states: “21. For the purpose of determining the content and scope of claims under Article 76(1) of the Agreement on a Unified Patent Court (UPC Agreement), it is not merely the wording of the claim for relief that is decisive, but also the factual circumstances presented in its support. The subject matter of the dispute—by which the Court is bound pursuant to Article 76(1) of the UPC Agreement—is defined by the plaintiff’s (or applicant’s) claim and the underlying factual circumstances (cf. UPC Court of Appeal, 14 February 2025, UPC-CoA-383/2024, para. 158, *Abbott/Sibio*). These factual circumstances encompass all facts that, when viewed reasonably from the perspective of the parties, belong to the complex of facts submitted by the plaintiff to support the action. In the context of a patent infringement action, the decisive factor is the set of factual circumstances presented by the plaintiff from which an alleged patent infringement arises. Consequently, what is generally critical is the specific factual configuration of an accused product or process which, according to the plaintiff’s submissions, results in that product or process meeting the features of the patent claim.” 3. There is also no surprise decision with regard to Art. 76 sub 2 UPCA. 4. The Court of Appeal rejects the argument of Netflix that the LD has simply prohibited all other versions of the web browser function based on the Cadmium Player alone, on the basis that, as far as the patent is concerned, these different versions are essentially the same. The Court of Appeal states that against the allegation of the patentee, Netflix should have provided a more detailed explanation as to why such allegation was wrong. This general allegation by the patentee is not, as Netflix states, a “fishing expedition”. 5. The Court considers that there is no evident mistake in the claim interpretation by the LD. 6. The LD’s decision to order Netflix to provide information without ordering confidentiality is also not an evident mistake, as during the proceedings, Netflix should not only have stated that this information was confidential, but also should have stated why this information was confidential. 7. The fact that the LD did not stay the case after the negative opinion of the OD is also not a serious mistake. 8. Granting an injunction with respect to a patent that is revoked by the OD is not contrary to Art. 47 of the EU Charter. It follows from the case law of the Court of Justice that Art. 47 does not require precedence to be given to a decision of the OD. Comment 1. Is it proportionate not to give suspensive effect to a first instance decision, when immediately after that decision the granting authority concludes that its examination department should not have granted the patent on which that first instance decision is based? This is a question you can ask yourself. 2. However, it is important for your practice to realize that, according to this decision, the answer is generally that this is not disproportionate, even when the first instance court has not motivated why the OD’s decision is clearly wrong and there is a clear possibility that on appeal that decision will not be maintained, but apparently simply disagrees with the decision. 3. Whether we like it or not, proportionality is part of our EU law with respect to IP rights. Would it not be time to ask the Court of Justice to clarify what this means, as it did with respect to costs and liability for enforcing judgments which later proved to be incorrect? Disclaimer: My firm acted as co-counsel for Netflix. However, I have not been involved in the case and only became aware of this when I read the decision.

Key Holdings

• Under Article 74(1) UPCA, an appeal in principle has no suspensive effect unless the interests of the appellant outweigh those of the claimant, such as where the first instance decision is clearly wrong, rendered the appeal pointless, or violated fundamental procedural rules that could have changed the outcome.
• Pursuant to Article 76(1) UPCA, the subject matter of the dispute is defined not merely by the wording of the claim for relief, but by the plaintiff's claim and the underlying complex of factual circumstances presented in its support.
• Granting an injunction with respect to a patent revoked by the EPO Opposition Division after the first instance decision does not breach Article 47 of the EU Charter, as EU law does not require precedence to be given to an Opposition Division decision.
• A request for confidentiality over ordered information requires the party to affirmatively articulate why the information is confidential, failing which the court commits no evident mistake in refusing a confidentiality order.

Tags

• Suspensive effect
• Injunction
• Article 74 UPCA
• Article 76 UPCA
• Opposition Division
• Article 47 EU Charter
• Confidentiality