UPC_CoA_891/2025 – Centripetal v Palo Alto Networks

Expert Commentary

Order for inspection Facts 1. Centripetal asked for an ex parte order for inspection and preserving evidence. The Local Division Mannheim refused on the ground of insufficient probability of infringement. 2. Centripetal appealed. On 28 May 2025, the Court of Appeal set aside the LD decision holding that Centripetal met the standard of presenting reasonably available evidence of infringement. 3. The LD Mannheim consequently granted an ex parte order. 4. Palo Alto’s agent present at the premises where the saisie took place had no access to Palo Alto’s system. Palo Alto refused to give access. 5. The LD Mannheim (first the JR and thereafter the whole panel in review proceedings) refused to impose penalties. 6. Palo Alto lodged an application for review of the saisie order. 7. The LD Mannheim revoked the saisie order. 8. Centripetal appealed and asked for an amended order. 9. In the meantime, the Opposition Division revoked the patent in opposition proceedings lodged by a third party (appeal pending). The Court of Appeal 1. The Court of Appeal referred to R. 222.2 RoP which deals with new requests on appeal. The Court has discretion to allow such new requests (or not), taking into account: a. whether the request could have been made earlier; b. the relevance of the new request for the appeal; c. the position of the other party. 2. The Court of Appeal found that the request was not a more limited request as argued by Centripetal, but a different one, namely targeting documents irrespective of their location and possibly also a broader category. 3. No justification was given by Centripetal as to why this request could not have been made earlier. 4. Appeal rejected. Comment 1. As I have said before, the UPC is front-loaded and therefore requires extensive preparation before starting litigation, as corrections cannot be made along the way. 2. The same is true on appeal. As opposed to several national systems where one can correct omissions or mistakes on appeal or make changes to one’s claims, this case proves that in the UPC that is (in principle) not possible. 3. In these circumstances, the appellant should have argued that the amendments to the request are due to facts which it could not reasonably have known at the time when it filed the request in first instance. But on the facts of this case, I do not think that this would have convinced the Court of Appeal. 4. A better strategy may have been to file a new request in a Local Division citing different facts and circumstances. However, since the patent was in the meantime already revoked by the OD, this would not have led to a better result! 5. That being said, a Local Division could also refuse such a second request if it is obvious that the reason that the first order did not lead to a positive result was clearly because of insufficient preparation of the first request. The test should in my opinion be somewhat less strict though than the test applicable before the Court of Appeal.

Full Decision Text

1 ORDER of the Court of Appeal of the Unified Patent Court concerning an application for preserving evidence and inspecting premises issued on 4 February 2026 KEYWORDS Appeal; application for preserving evidence and inspecting premises; admissibility; amended requests APPELLANT (APPLICANT IN THE PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE) Centripetal Limited, Galway, Ireland (hereinafter “Centripetal”) represented by attorney-at-law Dr. Ralph Nack and other representatives of Noerr PartG mbB and MFG Patentanwälte PartG mbB RESPONDENT (DEFENDANT IN THE PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE) Palo Alto Networks, Inc., Santa Clara, California, USA (hereinafter “Palo Alto”) represented by attorney-at-law Dr. Henrik Lehment and other representatives of Hogan Lovells International LLP PATENT AT ISSUE EP 3 821 580 PANEL AND DECIDING JUDGES Klaus Grabinski, President of the Court of Appeal Peter Blok, legally qualified judge and judge-rapporteur Emanuela Germano, legally qualified judge Eric Augarde, technically qualified judge Torsten Duhme, technically qualified judge LANGUAGE OF THE PROCEEDINGS Appeal n°: UPC CoA 891/2025 2 English IMPUGNED ORDER OF THE COURT OF FIRST INSTANCE □ Order of the Court of the Mannheim Local Division, dated 2 October 2025, reference number CFI 636/2025. HEARING DATE 12 JANUARY 2026 SUMMARY OF FACTS AND REQUESTS OF THE PARTIES 1. Centripetal is part of the Centripetal group, a developer of network security hardware and software. 2. Centripetal is the registered proprietor of European patent 3 821 580 relating to methods and systems for efficient network protection (“the patent”). The patent was filed on 8 July 2019, claiming priority from application US 2018/16030374 dated 9 July 2018. The mention of the grant of the patent was published on 29 May 2024. 3. Palo Alto is a US company. Palo Alto sells hardware and software as well as intelligent systems in the field of network security technology, including a solution comprising a Next Generation Firewall (“NGFW”), an analysis system called Advanced Threat Protection (“ATP”) and the App-ID Cloud Engine (“ACE”) (collectively: “Palo Alto’s Network Security Solution”). 4. Since 2021, Centripetal and its parent company Centripetal Inc. have asserted claims for patent infringement against Palo Alto before German courts. In June 2021, it brought four infringement actions before the Düsseldorf Regional Court. It withdrew these actions in early January 2022. In March 2022, Centripetal lodged infringement actions with the Munich Regional Court on the basis of three patents. All three patents were revoked by the Opposition Division of the European Patent Office (“EPO”) and the German Federal Patent Court. The first instance decisions have been confirmed by the EPO’s Boards of Appeals and the German Federal Court of Justice. 5. On 19 February 2025, Centripetal lodged an application for preserving evidence and inspecting premises against Palo Alto with the Mannheim Local Division of this Court. 6. By order of 3 March 2025, the Mannheim Local Division rejected Centripetal’s application and ordered Centripetal to pay the costs of the proceedings, without Palo Alto having been heard. It found inter alia that Centripetal had failed to demonstrate that there was a sufficient degree of probability that the asserted combination of claims was being infringed. 7. Centripetal lodged an appeal against the order of 3 March 2025. By order of 28 May 2025, the Court of Appeal set aside the order of 3 March 2025, without Palo Alto having been heard. The Court of Appeal held that Centripetal’s application met the standard of presenting reasonably available evidence to support the claim that the patent has been infringed. The Court of Appeal referred the case back to the Court of First Instance for decision. 3 8. By order of 3 June 2025, the Mannheim Local Division granted Centripetal’s application for measures for the preservation of evidence and inspection in part, without Palo Alto having beenheard. By order of 9 July 2025, the order of 3 June 2025 was amended for formal reasons relating to the service of documents. The order of 3 June 2025 as amended by the order of 9 July 2025 will hereinafter be referred to as “the Saisie Order”. The operative part of the Saisie Order, to the extent relevant on appeal, reads as follows: The Court orders without prior notice to Defendant: 1. The preservation of evidence relating to Palo Alto’s Network Security Solution that are relevant to answering the question of whether that system implements the features of claim 16 and 1 of the patent at issue, comprising Next Generation Firewalls, Advanced Threat Prevention and the App-ID Cloud Engine (together: Form of Infringement), is conducted by a) inspection of Defendant’s German branch office located at Rosenheimer Straße 143c, 81671 Munich, Germany, to the extent necessary to monitor a setup of Palo Alto’s system, and to preserve digital evidence and documentation pursuant to b), c) and d) hereinafter; b) setting up and monitoring in real-time, by the expert, at Palo Alto’s German branch office located at Rosenheimer Straße 143c, 81671 Munich, Germany, Palo Alto’s Network Security Solution, including in particular a NGFW hardware device with App-ID functionality, e.g. of the PA-1400, PA-5450 or PA-400 NGFW- series, that is connected to and operates with Palo Alto’s ATP servers and has full access to the ATP software, to the extent necessary to provide the detailed description referred to in e); the setting up and monitoring described supra may only be executed after defendant had been informed by the applicant about its right to seek assistance of a legal representative of his choice to attend said inspection and allow him a maximum of two hours to ensure the presence of such representative; in the meantime defendant may not alter, change, compromise or destroy any parts of said Network Solution. c) preserving by making and taking custody of a copy of digital evidence, e.g. server data, configuration files, logs, algorithms, and operational data, to the extent necessary to support the detailed description referred to in e); d) preserving by making and taking custody of a copy of technical documentation, internal development records and manuals relating to the design, configuration and deployment of Palo Alto’s Network Security Solution to the extent necessary to support the detailed description referred to in e); e) providing, by the expert, a detailed description of the features of Palo Alto’s Network Security Solution that are relevant to answering the question of whether that system implements the features of the combination of claim 16 and 1 of the patent at issue; within a period of one month after the execution of the measures under 1. a) to d); Applicant is obliged to bear the costs of preparing the Expert Report. 2. The Court appoints Professor Dr. Christoph Krauß as the Court Expert for carrying out the measures under 1. The Court Expert is allowed to appoint up to two persons to assist him in carrying out the measures under 1. The locally responsible bailiffs at Defendant’s premise under 1. a) are appointed as auxiliary persons to 4 support the Court Expert and his assistant(s). 3. In addition to the Court Expert and his assistant(s) under 2., the following of Applicant’s UPC representatives are permitted to be present during the execution of the measures under 1. a) to d): Dr Ralph Nack and Dr Niclas Gajeck (lawyers), Noerr PartG mbB, Brienner Str. 28, 80333 Munich as well as Dr Frank Meyer-Wildhagen and Dr Martin Meggle-Freund, (European Patent Attorneys), MFG Patentanwälte PartG mbB, Amalienstraße 62, 80799 Munich. These UPC representatives are obliged to keep confidential from Applicant and its employees any facts concerning the business operations of Defendant which come to their knowledge during the execution of the entire order. Representative-bodies, employees or other of Applicant’s staff may not be present during the execution of the measures referred to under 1. 4. Defendant is ordered to a) allow the Court Expert, his assistant(s) and Applicant’s UPC representatives listed under 3. to enter Defendant’s premises referred to under 1. a); b) allow and assist the Court Expert to monitor the real-time operation of the Form of Infringement, especially to disclose, where necessary, passwords, certificates, and decryption keys; c) provide digital evidence at the discretion of the expert as deemed necessary by him to carry out the task described herein; d) to allow the Court Expert to make the copies of the relevant documents and data; 5. The Court Expert and his assistant(s) are obliged to maintain confidentiality towards third parties. If the Court Expert uses an external testing laboratory as part of the preparation of the Expert Report, he must take appropriate measures to comply with his confidentiality obligation. Defendant is requested to comment on possible interests in confidentiality after the Expert Report has been presented. Applicant’s UPC representatives referred to under 3. are given the opportunity to comment on Defendant’s statement. Thereafter, the Court decides whether and to what extent the Expert Report and the preserved evidence should be brought to the attention of Applicant personally and whether the confidentiality obligation for Applicant's UPC representatives referred to under 3. should be lifted. 6. The Expert Report and all other results of the preservation of evidence may only be used in main proceedings against Defendant and affiliated companies. 7. This order shall become effective only after the Applicant provided a security of EUR 100,000 either by deposit or by a bank guarantee issued by a bank licensed in the European Union, within three weeks from the date of service of this order. […] 5 9. On 11 July 2025, the Saisie Order was executed. At the time of execution, only one salesperson was present at the location where the measures were to be executed (an office at Rosenheimer Straße 143c, Munich, Germany). This person did not have access to the parts of Palo Alto’s system that Centripetal wished to monitor. Palo Alto refused to set up access rights solely for the purpose of the inspection. 10. On 15 July 2025, Centripetal lodged an application for penalty payments with the Mannheim Local Division, arguing that Palo Alto had failed to comply with the Saisie Order. By order of 25 July 2025, the judge-rapporteur of the Mannheim Local Division rejected the application. Centripetal’s request for review was dismissed by the panel of the Mannheim Local Division by order of 2 October 2025. 11. On 7 August 2025, Palo Alto lodged a request for review of the Saisie Order under R. 197.3 RoP with the Mannheim Local Division. Upon that request, the Mannheim Local Division, by order of 2 October 2025 (“the impugned order), in summary: 1. revoked the Saisie Order, except for the confidentiality measures ordered; 2. dismissed the application for the preservation of evidence and the inspection of premises; and 3. ordered that Centripetal bear the costs of the proceedings. 12. Centripetal lodged an appeal against the impugned order, requesting that the Court of Appeal set it aside and “maintain [the Saisie Order] to the extent outlined in Exhibit A1”. Exhibit A1 to which the request refers contains an amended version of the operative part of the Saisie Order. The following marked-up version presents the most relevant amendments: 6 7 8 In the event that the Court of Appeal considers that maintaining the Saisie Order requires the participation of Palo Alto Networks (Germany) GmbH, it requests that this entity be added as an additional party on Palo Alto’s side in the proceedings. 13. A third party has filed an opposition against the grant of the patent with the Opposition Division of the EPO. On 27 November 2025, the Opposition Division decided to revoke the patent in its entirety. REASONS FOR THE ORDER 14. Centripetal’s request to maintain the Saisie Order to the extent outlined in Exhibit A1 is inadmissible for the following reasons. 15. Under R. 222.2 RoP, requests which have not been submitted by a party during proceedings before the Court of First Instance may be disregarded by the Court of Appeal. When exercising discretion, the Court shall in particular take into account: a. whether a party seeking to lodge new submissions is able to justify that the new submission could not reasonably have been made during proceedings before the Court of First Instance; b. the relevance of the new submissions for the decision on the appeal; c. the position of the other party regarding the lodging of the new submissions. 16. Applying this standard, the request to maintain the Saisie Order to the extent outlined in Exhibit A1 must be disregarded. Centripetal’s contention that it requests that the Saisie Order be maintained in a limited form is incorrect. Although Centripetal has withdrawn some requests, the form in which Centripetal seeks to have the Saisie Order “maintained” in other respects broadens the scope of the order. The Saisie Order concerned the preservation of evidence at an office located at Rosenheimer Straße 143c in Munich. In the amended form, however, the scope of the order includes documents that are not available at the location of this office. Centripetal seeks the production of documents 9 irrespective of their location. In addition, the detailed descriptions that Palo Alto would be required to provide under requests 1 a) aa) and bb) of the amended request cover a broader – or at least a less clearly defined – category of documents than the technical documentation, internal development records and manuals referred to in the original application. According to Centripetal, these detailed descriptions include any document that provides information on the relevant features of Palo Alto’s Network Security Solution. 17. Centripetal failed to provide any justification for not submitting the amended request during the first- instance proceedings. As noted by Palo Alto, Centripetal had ample opportunity to submit it at an earlier stage. In addition, the amendment raises several questions, such as whether the preservation of evidence can be ordered without specifying the location where the measures are to be executed and how precisely the relevant evidence must be defined in the application. Submitting the amended request for the first time on appeal therefore seriously prejudices Palo Alto’s opportunity to defend itself. Auxiliary request Centripetal 18. Centripetal filed an auxiliary request in the event that the Court of Appeal considers that maintaining the Saisie Order requires the participation of Palo Alto Networks (Germany) GmbH. However, Centripetal’s request to “maintain” the Saisie Order in the amended form is inadmissible irrespective of the participation of Palo Alto Networks (Germany) GmbH. The condition under which Centripetal filed its auxiliary request therefore does not apply. Conclusion 19. Since Centripetal does not defend the Saisie Order as issued and its request to maintain the Saisie Order in amended form is inadmissible, the Mannheim Local’s decision to revoke the Saisie Order and reject Centripetal’s application must be upheld. The Court of Appeal will therefore reject the appeal. 20. Since Centripetal is the unsuccessful party, it must bear the costs of the appeal proceedings. ORDER I. The appeal is rejected; II. Centripetal must bear the costs of the appeal. 10 This order was issued on 4 February 2026. Klaus Grabinski, president of the Court of Appeal Peter Blok, legally qualified judge and judge-rapporteur Emanuela Germano, legally qualified judge, signed by Klaus Grabinski on her behalf Eric Augarde, technically qualified judge signed by Klaus Grabinski on his behalf Torsten Duhme, technically qualified judge

Key Holdings

• Amendments to requests on appeal are generally not allowed if they could have been made earlier or are substantially different from the original request.
• New requests on appeal are subject to strict discretion under R. 222.2 RoP, considering timeliness, relevance, and the other party's position.
• The UPC requires extensive preparation before litigation, as corrections or significant changes are difficult to make during proceedings or on appeal.
• The revocation of a patent in opposition proceedings can significantly impact the viability of ongoing inspection orders.

Tags

• Appeal
• Evidence
• Inspection
• Revocation
• Procedure

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