Short Summary
iCAT Corporation brought a patent infringement action against DENTSPLY SIRONA Inc. and Dentsply Sirona Deutschland GmbH concerning European Patent EP 1 808 129 B1 before the Local Division Mannheim. The defendants filed a preliminary objection under R.19 RoP arguing that Article 72 UPCA limits the temporal scope of financial compensation to acts occurring after 11 June 2021. The court dismissed the preliminary objection as inadmissible, holding that it concerned the scope of relief rather than the court's jurisdiction or competence.
Detailed Summary
The Claimant, iCAT Corporation (a Japanese company based in Osaka), filed a patent infringement action against two Defendants: DENTSPLY SIRONA Inc. (a US company based in Charlotte, North Carolina) and Dentsply Sirona Deutschland GmbH (a German company based in Bensheim). The patent at issue was European Patent no. EP 1 808 129 B1. The proceedings were conducted in English before the Local Division Mannheim of the Unified Patent Court, with Judge Thomas Adocker serving as judge-rapporteur.
The Defendants filed a preliminary objection on 24 July 2026 under Rule 19 of the Rules of Procedure (RoP). While they did not contest the Court's jurisdiction or competence, they argued that Article 72 UPCA precludes the Court from providing the full breadth of relief sought. Specifically, they contended that the Claimant's claimed start date of 4 June 2017 for the calculation of damages was irreconcilable with the five-year limitation period under Article 72 UPCA. They argued that since the Statement of Claim was formally submitted on 11 June 2026 (after correction of formal deficiencies), financial compensation could not be sought for acts prior to 11 June 2021. The Defendants requested that the substance of the objection be dealt with in the main proceedings under R. 20.2 RoP.
The Claimant argued that the preliminary objection was inadmissible and unfounded. It contended that the objection did not concern jurisdiction or competence but rather the applicable substantive law and scope of relief, which falls outside the scope of R. 19.1 RoP. The Claimant further argued that a distinction must be drawn between the intertemporal applicability of substantive law, the temporal scope of information to be rendered, and the period relevant to damages determination. It also argued that the correction of formal deficiencies on 11 June 2026 should not displace 1 June 2026 as the date the action was brought, citing UPC case law (Amgen v. Sanofi-Aventis, UPC_CFI_1/2023) treating an action as brought by the objective act of lodging it.
The Court ruled that the preliminary objection was inadmissible. Under R. 19.1 RoP, a preliminary objection may only concern: (a) the jurisdiction and competence of the Court; (b) the competence of the division indicated by the claimant; or (c) the language of the Statement of claim. The Defendants' objection merely contended that Article 72 UPCA limits the temporal scope of certain remedies and did not refer to any of the permitted grounds under R. 19.1 RoP. The Court therefore dismissed the preliminary objection of 24 July 2026 as inadmissible, without ruling on its substantive merits.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before UPC Court. Understanding the court's reasoning in iCAT Corporation vs DENTSPLY SIRONA Inc. and Dentsply Sirona Deutschland GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Renault Nederland N.V., Renault Retail Group Deutschland GmbH, Renault Deutschland AGvsRespondent
The President of the Court of First Instance issued an order regarding an application by the Defendants (Renault entities) to change the language of proceedings from German to English in an infringement action based on EP3651429. The Claimant, Avago Technologies International Sales Pte. Limited, did not object to the application. The court considered the fairness grounds and relevant circumstances under Art. 49(5) UPCA and R. 323 RoP, referring to a previous order between the same Claimant and three of the Defendants.
CooperSurgical, Inc.vsEuropean Distribution Center Motiva BVBA, Establishment Labs S.A. and PulseLavage AB
This case concerned an infringement action filed by CooperSurgical, Inc. before the Unified Patent Court (Local Division Brussels) regarding EP 3 302 292 B1. After the European Patent Office Opposition Division revoked the patent on 30 September 2025, the Claimant withdrew the action. The Court allowed the withdrawal and assessed the costs to be reimbursed to the Defendants, ordering the Claimant to pay €105,757.90 to Defendants 1-2 and €81,423.33 to Defendant 3, while also ordering reimbursement of 60% of the court fees to the Claimant.
LiNA Medical AGvsTonglu Qianyan Medtech Co., Ltd.,
LiNA Medical AG, proprietor of European Patent EP 2 593 025 B1 relating to a laparoscopic morcellator, filed an application for preservation of evidence and inspection against Tonglu Qianyan Medtech Co., Ltd. before the Düsseldorf Local Division. The Applicant sought measures at the Defendant's exhibition booth at the MEDICA trade fair in Düsseldorf, suspecting that the Defendant's exhibited disposable morcellator was a slavish copy of LiNA's Xcise™ product and infringed the patent. The Court granted the application, ordering an inspection and preservation of evidence procedure to be carried out by an independent expert, subject to confidentiality measures.
Amgen, Inc.vsSanofi-Aventis Deutschland GmbH, Sanofi-Aventis Groupe and Sanofi Winthrop Industrie S.A.
This is a decision of the Court of Appeal of the Unified Patent Court issued on 25 November 2025 concerning appeals in a revocation action and a counterclaim for revocation. The decision sets out headnotes addressing key legal principles on claim interpretation, added matter, sufficiency of disclosure, and inventive step. The headnotes establish that dependent claims only inform main claim interpretation when they provide more specific descriptions of main claim features, that medical use-format claims inherently require therapeutic effectiveness, and that sufficiency must be assessed from the perspective of the skilled person at the filing or priority date.
Yealink (Xiamen) Network Technology Co. Ltd. and Yealink (Europe) Network Technology B.V.vsBarco N.V.
This Order of the Court of Appeal addresses an appeal and cross-appeal concerning an application for provisional measures under Rule 206 RoP. The Court of Appeal clarified several procedural and substantive issues, including the applicability of Rule 19.5 RoP to provisional measures proceedings, the referral mechanism between divisions based on competence challenges, the interpretation of competence rules under Article 33 UPCA, and the principles governing interim awards of costs. The Court held that there is no hierarchy between the competence grounds in Article 33(1)(a) and 33(1)(b) UPCA, and that competence should be assessed through a cursory review of the parties' allegations and evidence rather than a comprehensive evaluation.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.