UPC_CoA_92/2026 – Surf Loch v American Wave

Expert Commentary

Request for documents Facts 1. Appellant American Wave filed an appeal against a default revocation decision with respect to EP 2 728 089 demanded by respondent WhiteWater. 2. Applicant Surf Loch requested access to certain documents. The Court of Appeal 1. American Wave requests refusal of the request or alternatively a prohibition to use the documents in foreign (US) proceedings. 2. The Court cites the different provisions and case law relating to the request, holding that in general documents are not accessible after the case had ended, unless a member of the public can demonstrate specific interest. 3. Such special interest lies in the validity of a patent, especially when the applicant is also concerned with as a competitor or a licensee, or when a party is accused of infringing a product that they also intent to market. 4. During the proceedings the JR may impose certain restrictions for the protection of the integrity of the proceedings. 5. Surf Loch did not provide any details as to why the patent was relevant or regarding its proposed activities in Europe. It also did not state that the patent had been asserted against any of its European activities. 6. Surf Loch did not disclose that the IPR proceedings it relied on as basis for its request were already closed. Nor did substantiate the necessity of the requested documents for these proceedings. 7. The Court dismissed the request. Comment 1. Vague and untrue or incomplete statements do not establish the special interest necessary for obtaining pleadings and evidence during proceedings. That is no surprise! 2. In its decision, the Court also refers to the difference of US law in the field of patents. Quite frankly, I have attended quite some Markman hearings, in which the meaning of claims is established, that were remarkably similar to what I was used to at home (with, of course, some difference such as the “means plus function concept” in US law). I can also certainly see that certain prior art and inventive step arguments can be very relevant for US proceedings. It is also interesting to see if a patentee uses contradictory argumentation. In general, I can see a specific interest for a member of the public (who has been sued for infringement in the US) in getting access to pleadings and evidence, although certainly not in a case such as presented here to the Court. The way I read the decision of the Court of Appeal, the possibility to obtain access for use in US proceedings is not, as such, excluded, but you will have to clearly and convincingly explain why this can be relevant even under a different legal system. I agree with this. I point out that the US law goes as far as giving a party to foreign proceedings the possibility (28 U.S. Code §1782) to obtain evidence for such proceedings. It remains to be seen if the UPC will provide the same possibilities.

Full Decision Text

Court of Appeal of the Unified Patent Court UPC-CoA-92/2026 Decision 4 September 2026 EP 2 728 089 **APPLICANT** Surf Loch LLC, 9747 Olson Dr, San Diego, CA 92121, USA (hereinafter ‘Surf Loch‘) represented by: Raphael Salzer, Vossius und Partner Patentanwälte Rechtsanwälte mbB, Munich, Germany **APPELLANT (AND DEFENDANT BEFORE THE COURT OF FIRST INSTANCE)** American Wave Machines, Inc. , Cedros Ave., Solana Beach, CA 92075, USA (hereinafter ‘American Wave‘) represented by: Roland Küppers, Taylor Wessing Part mbB, Düsseldorf, Germany **RESPONDENT (AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE)** WhiteWater West Industries Inc., 6551 Fraserwood Place, Unit 180, Richmond BC V6W 1/3, Canada (hereinafter ‘WhiteWater‘) represented by: Dr. Tobias Wuttke, BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte, Rechtsanwälte, Munich, Germany **LANGUAGE OF THE PROCEEDINGS** English **PATENT AT ISSUE** EP 2 728 089 **DECIDING PANEL** Panel 3: Ulrike Voß, Presiding Judge Bart van den Broek, legally qualified judge Nathalie Sabotier, legally qualified judge and judge-rapporteur **RELEVANT PROCEEDINGS** UPC-COA-75/2026 **SUMMARY OF FACTS (INSOFAR AS RELEVANT HERE)** 1. On 22 April 2025, WhiteWater filed a revocation action against American Wave concerning the patent at issue before the Central Division Paris (UPC-CFI-350/2025). 2. American Wave did not appear in these proceedings. 3. By a decision dated 16 January 2026, the Central Division Paris granted the request for a default decision filed by WhiteWater and revoked the patent at issue as regards claim 1 for the territories of the Contracting Member States for which the patent was in effect at the time the revocation action was filed. 4. On 12 May 2026, American Wave lodged an appeal against said decision (UPC-CoA-75/2026). 5. On 11 June 2026, Surf Loch requested access to certain written pleadings and evidence submitted in the appeal proceedings pursuant to R. 262.1(b) RoP. 6. On 29 June 2026, following an invitation by the judge-rapporteur, American Wave and WhiteWater provided their reaction to Surf Loch’s request for access. Subsequently, on 9 July 2026, Surf Loch filed a further submission. 7. Pursuant to R. 331.2 RoP, the judge-rapporteur referred the case to the panel for rendering a decision on the request for access. **REQUESTS** 8. Surf Loch requests immediate access to the following written pleadings and evidence with reference to R. 262.1(b) RoP: I. American Wave’s Statement of Appeal (12 May 2026), II. American Wave’s Exhibit (12 May 2026), III. the order published on 15 May 2026 (to the extent it contains substantive directions) IV. any written pleadings, exhibits and orders added to the casefile after submission of the present request but before a party to the proceedings has commented on the present request, in particular any Statement of response to be filed by WhiteWater. 9. Upon the judge rapporteur’s request for comments, American Wave requests that the Court of Appeal: I. dismiss Surf Loch’s request in its entirety, alternatively, should access be granted in whole or in part, II. prohibit Surf Loch to use, file or produce any disclosed document in any foreign (including US) proceedings, III. prohibit Surf Loch to disclose to Surf Loch’s US litigation counsel or any party involved or related to proceedings in the District Court, International Trade Commission or USPTO, concerning any member of the EP 089 family, IV. prohibit Surf Loch to disclose or distribute the documents until the present appeal proceedings are closed. 10. WhiteWater submits that it has no objections to Surf Loch’s request for immediate access to written pleadings and evidence. 11. In response to American Wave’s comments on its application, Surf Loch further requests that the Court of Appeal reject any protective measure and, in the alternative, that any protective measure imposed by the Court of Appeal be limited in time, i.e. until the final decision in the appeal proceedings UPC-CoA-75/2026. **PARTIES’ SUBMISSIONS** 12. Surf Loch submits that the validity of the patent at issue is of significant relevance for its operations in the European market as Surf Loch and American Wave are direct competitors, globally and with respect to the European market. In this respect, Surf Loch explains that it develops projects in Europe (in Lisbon, where a contract has already been signed and in Rotterdam) and that, in particular, the purpose of its request for access is to assess whether or not there is a need for modification of its products. Therefore, access to documents submitted in the appeal proceedings is of direct and legitimate interest to it. Surf Loch further argues that it is a co-petitioner in US Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), challenging the US family member of the patent at issue. Through its request for access, Surf Loch seeks to compare American Wave’s positions taken in the USPTO IPR proceedings with those before the UPC to assess whether American Wave continues to maintain the same positions as previously held in the IPR proceedings. To further substantiate its interest to access the requested documents, Surf Loch argues that American Wave sent cease-and-desist letters to “industry allies” of Surf Loch. In response to American Wave’s statement that these cease-and-desist letters were sent to third parties and not to Surf Loch and that these third party letters do not establish an imminent threat of enforcement of the patent at issue against Surf Loch, Surf Loch argues that the sending of a cease-and-desist letter directly to it cannot be a relevant criterion to assess the direct and legitimate interest of an applicant for immediate access to be granted, contrary to American Wave’s assertion. 13. Concerning the protective measures requested by American Wave, Surf Loch argues that the two first requests are unjustified since they contain no time limitation and submits that it should be clarified whether or not protective measures would prevent the applicant to rely on the arguments contained in the disclosed elements without directly disclosing them (see UPC-CoA-7/2025, 25 April 2025, Nicoventures, paras. 14 and 15). 14. American Wave for its part contends that Surf Loch expressly stated in its application that its principal and concrete interest in the requested access lies with the IPR proceedings before the PTAB. In this regard, American Waves indicates that all these US proceedings are closed since 2023, and that, therefore, these US proceedings cannot be used to establish a direct and legitimate interest to access the requested documents. American Waves further argues that the competitive interest asserted by Surf Loch in the European market is too abstract and insufficiently substantiated. In particular, American Waves submits that, if the request for access were to be granted in this case, this would mean that any company operating in an adjacent field of technology to the one disclosed in the patent at issue could have access to documents exchanged in pending proceedings on the basis of mere speculative assertions. This would go beyond the framework set out in the Nicoventures-case cited above and would fundamentally undermine the procedural integrity of pending (appeal) proceedings. Moreover, it would render the condition of a “direct and immediate interest” largely meaningless. According to American Waves, the interest of procedural integrity must take precedence over a third party’s abstract, speculative and largely foreign-litigation-driven interests. **GROUNDS FOR THE DECISION** **I - LEGAL FRAMEWORK** 15. Subject to the conditions set out in the UPCA and the Rules of Procedure (RoP), the register kept by the Registry shall be public (Art. 10(1), second sentence, UPCA). 16. Art. 45 UPCA stipulates that the proceedings shall be open to the public unless the Court decides to make them confidential, to the extent necessary, in the interest of one of the parties or other affected persons, or in the general interest of justice or public order. 17. R. 262.1(b) RoP provides that, without prejudice to several articles and rules that provide for the protection of confidential information mentioned in R. 262.1 RoP, the redaction of personal data pursuant to Regulation (EU) 2016/679 and redaction of confidential information according to R. 262.2 RoP, written pleadings and evidence, lodged at the Court and recorded in the Registry, shall be available to the public upon reasoned request to the Registry. The decision is taken by the judge-rapporteur after consulting the parties. The procedure according to R. 262.1(b) RoP is based on individual assessments of each request (UPC-CoA-523/2024, 19 December 2025, Docket Navigator, para. 25). 18. The Court of Appeal has already clarified that the interest of the member of the public to obtain access to the Registry must be balanced against the general interests in Art. 45 UPCA: protection of confidential information and personal data, and of justice, including the protection of the integrity of proceedings, and public order. The protection of the integrity of proceedings ensures that the parties are able to bring forward their arguments and evidence and that this is decided upon by the Court in an impartial and independent manner, without influence and interference from external parties in the public domain (UPC-CoA-404/2023, 10 April 2024, Ocado v Autostore, para. 48). These interests are usually properly balanced and duly weighed against each other, if access to written pleadings and evidence is given to a member of the public after the proceedings have come to an end by a decision of the Court (see Nicoventures cited above, para. 8). 19. It has further been established in the case law of this Court that a member of the public who has a more specific interest in the written pleadings and evidence of a particular case than a general interest, may obtain access even before the proceedings have come to an end. This is in particular so where he has a direct interest in the subject-matter of the proceedings, such as the validity of a patent that he is also concerned with as a competitor or licensee, or where a party in that case is accused of infringing a patent by a product which is the same or similar to the product (to be) brought on the market by such member of the public. When a member of the public has such a direct legitimate interest in the subject-matter of certain proceedings, this interest does not only arise after the proceedings have come to an end but may very well be immediately present (see Ocado cited above, para. 53). 20. In weighing such a direct interest against the general interest of integrity of proceedings, the balance will generally be in favour of granting access to the written pleadings and evidence of such proceedings. The Court may, however, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access, such as the obligation for that member of the public to keep the written pleadings and evidence he was given access to confidential as long as the proceedings have not come to an end (Ocado, para. 54; see also Nicoventures, para. 15). 21. To allow the judge-rapporteur to balance all the interests set forth in Art. 45 UPCA, the applicant of a request pursuant to R. 262.1(b) RoP must set out the reasons why the applicant has an interest in obtaining access to the written pleadings and evidence. It follows that ‘reasoned request’ in R. 262.1(b) RoP means a request that not only states which written pleadings and evidence the applicant wishes to obtain, but also specifies the purpose of the request and explains why access to the specified documents is necessary for that purpose, thus providing all the information that is necessary for the judge-rapporteur to make the required balance of interests mentioned in Art. 45 UPCA (see Ocado, para. 44). 22. Written pleadings or evidence that were not yet in the casefile at the time when the request was made but were added to the casefile before a party commented on the request, can be covered by a decision granting access, provided that the request made clear that such documents are encompassed (see Nicoventures, para. 9). **II - APPLICATION TO THE CASE** 23. The Court of Appeal considers that the need to protect the integrity of the proceedings before they are finalised should, in the present case, take precedence over Surf Loch’s interest, as substantiated, in obtaining access to the written pleadings and evidence. 24. To substantiate its interest, Surf Loch argues that it is a “direct competitor” of American Wave and that the patent at issue relates to technology that is “similar in nature” to technology of Surf Loch. Surf Loch has not provided any details about its technology or why the patent at issue would be of relevance to its products. In response to American Wave’s statement that it failed to show any European activity in its application for access, Surf Loch referred in general terms to a “project under contract” in Lisbon and to inquiries from “potential customers” on its wave technology, with specific reference to an “ongoing pool operation” in Rotterdam. Also in this context, Surf Loch did not provide any details regarding its products or the relevance of the patent at issue with respect to these products. Surf Loch did provide a link to a website regarding the project in Rotterdam, but this website only mentions the name of Surf Loch at the bottom of the first page among several other companies without providing any further details about Surf Loch or its products. 25. In addition, Surf Loch did not show that the patent at issue has been asserted against any of its activities within the European market, by way of a cease-and-desist letter or otherwise, or that there is a risk that this could be the case in the near future. In its application, Surf Loch indicates that “despite the existing technical differences” between its technology and the patent in suit, it should be prepared for “potential assertions” given the cease-and-desist letters that American Wave sent to third parties (called “industry allies” by Surf Loch). The Court of Appeal agrees with American Wave that such third-party cease-and-desist letters, in the case at hand, cannot be regarded as a present assertion or imminent enforcement threat against Surf Loch which could justify access to the requested documents while the appeal proceedings are ongoing. Also in its response to the application, American Wave did not suggest that it would enforce the patent at issue against Surf Loch pending these appeal proceedings or at some other point in time in the near future. 26. Surf Loch is neither involved in any (other) on-going legal proceedings concerning the patent at issue. In its application, Surf Loch indicated that it “is” a co-petitioner in IPR proceedings before the USPTO challenging “the US family member” of the patent at issue. In its response, American Wave informed the Court of Appeal that all these proceedings were closed in 2023, an important fact that Surf Loch did not disclose in its application. Leaving this aside, Surf Loch did not provide any further information about the content and scope of protection of the US patent(s) that were the subject of the IPR proceedings, or why these US patents or the prior art raised in the US IPR proceedings would be relevant to the patent at issue. In view thereof and given the fundamentally different legal principles applicable to US patents, the Court of Appeal fails to see the relevance of the terminated IPR proceedings to Surf Loch’s request for access in these proceedings. In any event, in view of the requirements developed in the case law of this Court in case access is requested while proceedings are ongoing, it was up to Surf Loch to explain why a comparison between American Wave’s position during the IPR proceedings and its position during the appeal proceedings in the UPC would be relevant. Surf Loch’s application and further submission do not provide any details in this respect. 27. As a result, the Court of Appeal considers that Surf Loch failed to demonstrate a direct interest in the immediate access to documents from the proceedings before their closure, which should outweigh the need to protect the integrity of the present proceedings. The mere allegation of being a “direct competitor” to the patentee or being active in a “similar” field of technology as the patent at issue is not sufficient to get such access to the casefile before the closure of the proceedings. As indicated above, given the importance of protecting the integrity of the proceedings while these are ongoing, the applicant will have to show a direct interest in the subject matter of the proceedings (Ocado, para. 53). Where an applicant is not involved in an on-going dispute concerning the validity or the infringement of the patent at issue, the applicant will have to provide other concrete and relevant information that justifies immediate access to the requested documents even before the termination of the proceedings. This is even more so when access is requested in pending appeal proceedings, where the applicant may already derive relevant information from the decision in first instance and from the documents in first instance that may be requested for access following the closure of the first instance proceedings (see Ocado, para. 50). 28. Such concrete and relevant information is absent in this case. The request is therefore dismissed in its entirety. **DECISION** I. The request is dismissed. II. This decision closes the application. Issued on 4 September 2026. Ulrike Voß, Presiding Judge Bart van den Broek, legally qualified judge Nathalie Sabotier, legally qualified judge and judge-rapporteur

Key Holdings

• Documents are generally not accessible to the public after a case has ended, unless a specific interest is demonstrated.
• A special interest for access to documents can exist for competitors or licensees, or parties accused of infringement, especially concerning patent validity.
• Vague, untrue, or incomplete statements regarding relevance or proposed activities are insufficient to establish the special interest required for document access.
• The possibility of obtaining access to UPC documents for use in foreign (e.g., US) proceedings is not excluded, but requires clear and convincing explanation of relevance.

Tags

• Request for documents

Related Cases

• UPC_CFI_350/2025 – WhiteWater v American Wave
• UPC_CFI_837/2024; UPC_CFI_349/2025; UPC_CFI_394/2025 – American Wave v Surftown
• UPC_CFI_837_2024_Aug01 – American Wave Machines v Surftown