UPC Weekly - Asserting narrower claims at the UPC

UPC Weekly brings you timely, thoughtful and joined-up insight into the evolving landscape of patent litigation at the Unified Patent Court.

2026 Week 33

It’s well established that claim amendments are available at the UPC, whether by way of main request or auxiliary request. This week we are looking at two different cases with different outcomes, to see how the parties are dealing with claim amendments but then also how the court is deciding on them.

In the first case we have a typical situation with the patentee filing a large number of auxiliary requests in a merits action. The court let this play out between the parties but then insisted that the number of requests was reduced. Going further, the court then leapfrogged to the last auxiliary request to decide it was invalid and that the same logic must apply to the broader auxiliary requests.

The second case is a preliminary injunction application where the patentee requested the injunction to be worded based on an amended scope compared with the claims as granted. The court agreed that this is fine, but refused permission for further auxiliary requests to be filed later.

Leapfrog to the final AR – Maxell v. Samsung (UPC LD The Hague, 10 August 2026)

Maxell sued Samsung for infringement of claims 1, 2 5 and 6 of EP 2061230 B1, claiming technology for allowing content initially viewed on a mobile phone to be cast to a larger display such as a TV. Samsung responded with a counterclaim for revocation, relying on 12 prior art documents. In reply to the invalidity attacks, Maxell filed 44 auxiliary requests (ARs). These applied 12 further feature combinations in different permutations compared with the claims as granted. Additional prior art attacks were then developed by Samsung against the ARs.

As we are seeing in other cases, the court seems content to allow the parties to deal with this volume and complexity during the written procedure. In view of the front-loading of proceedings, this can lead to some very lengthy written submissions and a high build-up of costs. But then when it comes to the interim conference (IC), as here, the court may force the parties to focus on a much smaller number of ARs and prior art attacks. In this case, the outcome of the IC was that Samsung relied on five prior art documents for invalidity attacks against the main request and Maxell limited to 10 ARs.

Interestingly, the court also told the parties that it wanted to discuss a prior art document combination not focused on by Samsung in relation to the ARs, this combination ultimately being determinative.

The independent claims as granted were found to lack novelty and so the court turned to the ARs. Still faced with 10 ARs, the court decided to take a short cut and look first at the last AR. The parties agreed that the set of ARs was convergent, with each AR progressively adding further features.

The LD noted that the claims of this request had numerous distinguishing features over the prior art. Relying on the UPC’s approach to a mere “aggregation of features” (see UPC Weekly 2026 w30), the LD decided that this narrowest AR was not inventive. Maxell tried to argue for a general technical effect for the combination of features, but the court’s view was:

Maxell argues that the distinguishing features together all contribute to a smoother and more user-friendly provision of content relay between the portable terminal and the external device. However, in doing so it merely provides the standard functionalities that the skilled person would usually associate with these distinguishing features and for which the skilled person would routinely employ them in a technical implementation. Maxell has not been able to point to any technical benefit or effect that a combination of two or more these distinguishing features would add beyond a mere aggregation/juxtaposition.

Having decided that the narrowest set of claims was not inventive, the court explained that the earlier, broader ARs could not be inventive. The patent was therefore revoked.

For patentees, it is worth bearing in mind that the UPC does not require auxiliary requests to be convergent. Also, the UPC will not typically reformulate the objective problem to be solved for each AR. Instead, the court prefers to consider a more holistic statement of the objective problem based on the story told by the patent itself, with the effect that the court is considering the same objective technical problem for each AR as for the main request.

Go PI, go narrow – Cybex v. Nuna (UPC LD Hamburg, 10 August 2026)

EP 4242056 B1 was granted on 18 March 2026 from a divisional application. On 20 April 2026, Cybex filed a preliminary injunction (PI) application against Nuna alleging infringement of the patent by Nuna’s NEXT child car seat system. Nuna filed a defence on 13 May 2026 and then Cybex filed a reply on 22 May 2026, with the PI oral hearing taking place on 26 June 2026. An EPO opposition was filed by one of the defendants on 22 June 2026.

Cybex requested a PI with wording narrower than claim 1 as granted. Interestingly, the wording used is not exactly a granted dependent claim. Instead, it is based on dependent claim 2 but with some tidying up amendments. Cybex also filed some ARs with the initial PI application.

There is UPC Court of Appeal (CoA) case law on the allowability of claim amendments for PI applications. As explained in UPC Weekly 2026 w14, the CoA expressly said in Onward Medical v. Niche Biomedical (UPC CoA, 27 March 2026) that starting a PI with a main request that is narrower than the broadest claim in the patent is OK. The CoA also said that it is allowable to include ARs in the initial PI application. But there was more caution around whether it would be allowable to file ARs later in the PI proceedings, these being subject to an admissibility check.

Back to Cybex v. Nuna, the LD followed the CoA approach in allowing the PI application to be based on a narrower main request from the outset. There was also no concern that this main request was a tidied-up version of granted claim 2 (although presumably if there had been added matter or clarity issues, these could have been raised by Nuna as a defence). However, even though some ARs had been filed with the PI application, the court did not permit further ARs. Cybex attempted to file these to replace the original ARs with their 22 May 2026 submissions, but the court said that this would not give Nuna enough time to defend against them and so they were not admitted.

The court was satisfied that the patent was probably valid and infringed and therefore turned to the questions of whether there had been undue delay, whether the PI was necessary and where the balance of interests lay. See UPC Weekly 2026 w26 for a brief recap of those headings.

Nuna’s system had been on the market since early 2025 and the court accepted that the parties’ products had been competing for more than a year. Dealing first with the “undue delay” question, the court noted that Cybex could not have launched the PI proceedings before the patent was granted. A month delay between patent grant and filing the PI was fine.

The case can be contrasted with Biolitec v. Light Guide (UPC CoA, 24 February 2025) in which a PI was refused by the CoA (see UPC Weekly 2025 w10). The superficial similarity is that the Biolitec patent was granted from a divisional application and the PI application was filed a month later. So this meets the “no undue delay” requirement. The alleged infringement had been on the market for about 3 years. The CoA refused the PI on the grounds that Biolitec had not shown why a PI was necessary – in other words, why the patentee could not wait for the injunction that would be granted if they were successful in the main infringement proceedings.

In Cybex v. Nuna, the LD decided that it would be unreasonable to make Cybex wait for the proceedings on the merits, citing product-specific issues such as the fact that these child seat systems would be used by families for at least four years and then potentially also for sibling children. There was argument between the parties about price erosion, but the court did not reach a view on this. Weighing up the competing interests of the parties, the court decided to grant the PI, with a notably high penalty payment upper limit attached. The grant of a PI in these circumstances is interesting because presumably this disturbs the market status quo and the same product-specific issues apply to the defendant as to the claimant.

The PI order is dated 10 August 2026 and on the same day Nuna filed an appeal. The appeal requests that the PI order is subject to suspensive effect but also that the PI order is subject to “provisional suspensive effect” even before the CoA decides on the whether the circumstances of the appeal substantively merit suspensive effect. Nuna’s aim is to prevent the PI from coming into effect at all. The CoA dealt with this in an order dated 3 days later in Nuna v. Cybex (UPC CoA, 13 August 2026), basically saying that there is no such thing as provisional suspensive effect at the UPC. It seems fair to assume that we will see further developments in this case at the CoA.