Order
of the Court of Appeal of the Unified Patent Court
of 6 October 2025
concerning an appeal against the rejection of a preliminary objection

HEADNOTES:
1. R. 19.1 RoP contains an exhaustive list of admissible grounds for preliminary objections (see order of 3 September 2024, UPC_CoA_188/2024, APL_21943/2024, Aylo v. Dish, para. 32). This includes the jurisdiction and competence of the court (R. 19.1(a) RoP), and hence also the question of the validity of the relevant rules governing jurisdiction.
2. Insofar as an alleged violation of Art. 47, para. 2, EU CFR and Art. 6 ECHR does not involve any of the grounds for objection listed in R. 19.1 RoP, a preliminary objection based on that assertion is not admissible.
3. The conferral of powers on the Unified Patent Court, according to Art. 31 UPCA in conjunction with Art. 71a et seq. Brussels Ia and Art. 32 UPCA, does not encroach on the division of roles, as estab-lished by Art. 19 TEU and Art. 267 TFEU, between the Court of Justice of the European Union and the national courts.
4. The Administrative Committee was empowered by analogy under Art. 87(2) UPCA to determine that Milan would replace London as a section of the Central Division with the competences set out in Annex II to the UPCA.
5. The fixed fee that is to be paid for the appeal proceedings and, where applicable, the value based fee for the appeal, according to R. 228 RoP, is to be paid for each appeal proceedings. This also applies in the event that the appeals concerning the same parties raise the same issues.
KEYWORDS:
a) Grounds for the Preliminary objection (R. 19.1 RoP)
b) Validity of rules governing jurisdiction
UPC Court of Appeal
UPC_CoA_288/2025
APL_15039/2025
UPC_CoA_290/2025
APL_15067/2025
UPC_CoA_291/2025
APL_15072/2025
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c) Compatibility of Art. 31 UPCA in conjunction with Art. 71a et seq. Brussels Ia and Art. 32 UPCA with Art. 19 TEU and Art. 267 TFEU
d) Power of the Administrative Committee to amend pursuant to Art. 87(2) UPCA
e) Reduction of court fees according to R. 228 RoP
APPELLANTS AND DEFENDANTS BEFORE THE COURT OF FIRST INSTANCE
1. Roku International B.V., Amsterdam, The Netherlands,
2. Roku, Inc., San Jose, USA,
(hereinafter referred to collectively in the singular as “Roku”)
represented by Dr. Andreas Kramer, attorney at law, and other attorneys at law of the law firm Vossius & Partner Patentanwälte Rechtsanwälte mbB, Düsseldorf, Germany
RESPONDENT IN THE PROCEEDINGS APL_15039/2025 AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE
Dolby International AB, Dublin, Ireland
(hereinafter referred to as “Dolby”)
represented by Dr. Tilman Müller, attorney at law of the law firm Bardehle Pagenberg Partnerschaft mbB Patentanwälte, Rechtsanwälte, Hamburg, Germany
RESPONDENT IN THE PROCEEDINGS APL_15067/2025 AND APL_15072/2025 AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE
Sun Patent Trust, New York, USA
(hereinafter referred to as “Sun”)
represented by Dr. Volkmar Henke, attorney at law of the law firm Bardehle Pagenberg Partnerschaft mbB Patentanwälte, Rechtsanwälte, Hamburg, Germany
LANGUAGE OF PROCEEDINGS
German; with the consent of the parties, the oral hearing was held in English
PANEL AND DECIDING JUDGES
Panel 2:
Rian Kalden, Presiding Judge and legally qualified judge
Patricia Rombach, legally qualified judge and judge-rapporteur
Ingeborg Simonsson, legally qualified judge
IMPUGNED ORDERS OF THE COURT OF FIRST INSTANCE
Date: 18 March 2025, Local Division Munich,
Action number of the Court of First Instance:
- ORD_69038/2024 concerning preliminary objection App_45195/2024 in the main proceedings concerning the infringement action in ACT_27821/2024 UPC_CFI_235/2024
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- ORD_69030/2024 concerning preliminary objection App_47531/2024 in the main proceedings concerning the infringement action in ACT_29956/2024 UPC_CFI_254/2024, and
- ORD_69037/2024 concerning preliminary objection App_47532/2024 in the main proceedings concerning the infringement action in ACT_36560/2024 UPC_CFI_339/2024
PATENTS AT ISSUE
EP 3 490 258 (in proceedings APL_15039/2025)
EP 2 903 267 (in proceedings APL_15067/2025)
EP 3 200 463 (in proceedings APL_15072/2025)
ORAL HEARING
The joint oral hearing for all proceedings (R. 302.3 RoP) took place on 1 July 2025
SUMMARY OF FACTS
1. In all three proceedings, Dolby (ACT_27821/2024) and, respectively, Sun (ACT_29956/2024, ACT_36560/2024) are bringing action against the two defendants (hereinafter referred to collectively as “Roku”) before the Munich Local Division for the alleged infringement of the patents at issue.
2. Roku has lodged a preliminary objection in all proceedings and essentially requests that the action be dismissed as inadmissible or, in the alternative, that the present proceedings be stayed and that the following question be referred to the Court of Justice of the European Union for interpretation of EU law: “Is it compatible with Art. 267 TFEU that the Unified Patent Court, established by individual Member States by means of an international agreement, is entrusted with the application of Union law in the field of patent law instead of the courts of the Member States and is subject to the supervision of the CJEU by means of preliminary ruling proceedings pursuant to Art. 21 UPCA?” Dolby and, respectively, Sun have each requested that the preliminary objection be rejected.
3. In the impugned orders, the judges-rapporteurs rejected Roku's objections and allowed the appeal. In essence, the grounds for the impugned orders were as follows:
- Insofar as Roku bases its objection on R. 19.1(a) RoP, on the arguments that the UPCA is incompatible with the primary law of the European Union, on the (alleged) violation of the right to be heard by a court or tribunal established in accordance with the law, and on the lack of standing of the respective claimant, the objection is inadmissible, and in any case unfounded.
- R. 19.1(a) RoP lists as grounds for a preliminary objection only the jurisdiction and competence of the UPC. In this respect, reference is only made to Art. 31, 32 and 83 UPCA. The validity and applica-bility of the aforementioned articles are thereby assumed.
- The question formulated by Roku for referral to the Court of Justice of the European Union is not directly relevant to the question of the UPC's jurisdiction and competence.
- The Munich Local Division has territorial jurisdiction pursuant to Art. 33(1)(a) UPCA.
- The fact that the alleged acts of infringement were committed by Roku Inc. in part before the UPCA entered into force is irrelevant for the question of jurisdiction.
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- Roku’s argument that it cannot be ruled out that the composition of various divisions would have been different had there been a London section of the Central Division is not successful. The compo-sition of individual panels of a (permanent and previously established by law) court does not affect the right to be heard by a court or tribunal established in accordance with the law. Only if the judge specifically appointed to decide the case is not independent and/or not impartial could this consti-tute a violation of Art. 47, para. 2, EU CFR and Art. 6 ECHR. The latter is not asserted by Roku.
- It is not apparent that the Central Division would have jurisdiction. In this respect, there was no vio-lation of the right to be heard by a court or tribunal established in accordance with the law.
- Sun had validly withdrawn from the opt-out.
4. Roku has appealed against these orders.
REQUESTS OF THE PARTIES
5. In summary, Roku requests that the impugned order be set aside, the preliminary objections be upheld and the actions be dismissed as inadmissible, or in the alternative that the present proceedings be stayed pursuant to Art. 21 UPCA and Art. 38(2) Annex I to the UPCA, and that the question of the compatibility of the UPCA with Union law, in particular the question reproduced in paragraph 2, be referred to the Court of Justice of the European Union.
6. In proceedings APL_15067/2025 and APL_15072/2025, Roku requests that only one court fee be set, to cover both proceedings.
7. In summary, Dolby and Sun request that the appeal be dismissed in its entirety and that Roku be ordered to pay the costs of the appeal proceedings.
SUBMISSIONS OF THE PARTIES
8. Roku challenges the impugned orders, reiterating and elaborating on the submissions made at first in-stance. Roku does not contest the Local Division's view on territorial jurisdiction, the question of jurisdic-tion regarding acts of infringement prior to the entry into force of the UPCA, the capacity to bring action and the validity of the opt-out.
GROUNDS:
9. The admissible appeals are unsuccessful.
I. Subject of the appeals
10. The statements of grounds of appeal do not address the issues set out in paragraph 8. These issues are therefore not subject of the appeal (R. 226(b) RoP in conjunction with R. 233.3 RoP).
II. Merits of the appeals
1. Requirements for international jurisdiction
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11. The Local Division correctly deemed the preliminary objections admissible, insofar as they are based on lack of jurisdiction as the ground for objection. As the Court of Appeal has already ruled (Order of 3 Sep-tember 2024, UPC_CoA_188/2024, APL_21943/2024, Aylo v. Dish, para. 32), R. 19.1 RoP contains an ex-haustive list of admissible grounds for preliminary objections. This includes the jurisdiction and compe-tence of the court (R. 19.1(a) RoP).
12. The Local Division correctly held that the requirements for international jurisdiction of the UPC under Art. 31 UPCA in conjunction with Art. 71a and Art. 71b of Regulation (EU) No. 1215/2012 (hereinafter: Brussels Ia) are met in this case.
13. Art. 31 UPCA states that the international jurisdiction of the Court shall be established in accordance with Brussels Ia or, where applicable, on the basis of the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention). The regulation thus re-fers to Art. 71a and Art. 71b Brussels Ia.
14. Art. 71a(1) Brussels Ia states that, for the purposes of this Regulation, a court common to several Member States as specified in paragraph 2 (a ‘common court’) shall be deemed to be a court of a Member State when, pursuant to the instrument establishing it, such a common court exercises jurisdiction in matters falling within the scope of this Regulation. According to Art. 71a(2)(a) Brussels Ia, the Unified Patent Court (UPC) is such a court.
15. Art. 71b(1) Brussels Ia states that a common court shall have jurisdiction where, under this Regulation, the courts of a Member State party to the instrument establishing the common court would have juris-diction in a matter governed by that instrument.
16. Dolby and Sun have conclusively argued that such an act of infringement justifying the jurisdiction of the UPC has taken place.
2. Does the incompatibility of Art. 31 UPCA in conjunction with Art. 71a et seq. Brussels Ia and Art. 32 UPCA with Art. 19 TEU and Art. 267 TFEU, constitute a ground for objection under R. 19.1 RoP?
a) Incompatibility of Art. 31 UPCA constitutes a ground for objection under R. 19.1 RoP
17. Roku successfully challenges the view expressed in the impugned orders, that there was an incompati-bility of Art. 31 UPCA in conjunction with Art. 71a et seq. Brussels Ia with Art. 19 TEU and Art. 267 TFEU cannot be used as a ground for objection under R. 19.1 RoP.
18. Since the validity of the rules governing jurisdiction is a requirement for the UPC to exercise its jurisdic-tion, the asserted invalidity of Art. 31 UPCA in conjunction with Art. 71a et seq. Brussels Ia must be ex-amined in the context of a preliminary objection, contrary to the opinion of the Local Division.
19. The national courts are obliged to examine the validity of an act of the Union (in this case Art. 71a and Art. 71b Brussels Ia) of their own motion or on the basis of the grounds of invalidity put forward by the parties (see CJEU, judgment of 3 July 2019, Eurobolt, C-644/17, ECLI:EU:C:2019:555, para. 28). This obli-gation also applies to the UPC, which according to Art. 1 UPCA is subject to the same obligations under
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Union law as any national court of the Contracting Member States. It would run contrary to this obligation if such an examination were reserved for the main proceedings.
20. The UPC must interpret its own substantive and procedural law in accordance with EU law and, in cases in which it conflicts with a provision of EU law with direct effect and an interpretation in conformity with EU law is not possible, disregard it ex officio (cf. CJEU, judgment of 19 December 2024, K GmbH, C-65/23, EU:C:2024:1051, para. 53; UPC Court of Appeal, order of 20 August 2025, expert/Viosys, UPC_CoA_380/2025, APL_20125/2025, para. 37).
21. Dolby and Sun argue, unsuccessfully, that R. 19.1 RoP serves to clarify certain individual issues, which are typically simple and procedural in nature, as early as possible in the proceedings before the Court has to deal with substantive patent law issues, which would be incompatible with the complex examination for a violation of Art. 19 TEU and Art. 267 TFEU. While it is true that R. 19.1 RoP serves the purpose of estab-lishing the Court´s jurisdiction at an early stage, it would however contradict this purpose if the validity of the principles that determine jurisdiction could not be tested in the preliminary objection proceedings.
b) Invalidity of Art. 32 UPCA as ground for objection under R. 19.1 RoP
22. Nothing else applies insofar as Roku bases its objection on the invalidity of Art. 32(1) UPCA. Art. 32 UPCA grants the UPC exclusive substantive jurisdiction over claims that form the subject matter of the present proceedings.
3. Incompatibility of Art. 31 et seq. UPCA in conjunction with Art. 71a et seq. Brussels Ia and Art. 32 UPCA with Art. 19 TEU and Art. 267 TFEU
23. Contrary to Roku’s opinion, the conferral of powers on the Unified Patent Court, according to Art. 31 UPCA in conjunction with Art. 71a et seq. Brussels Ia and Art. 32 UPCA, does not encroach on the division of roles, as established by Art. 19 TEU and Art. 267 TFEU, between the Court of Justice of the European Union and the national courts.
24. Art. 19(1), sentence 2, TEU states that the Court of Justice of the European Union shall ensure that in the interpretation and application of the Treaties the law is observed. According to Art. 267, paragraph 1, point a), TFEU, it has jurisdiction to give preliminary rulings concerning the interpretation of the Treaties. Where such a question is raised before any court or tribunal of a Member State, that court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court to give a ruling thereon pursuant to Art. 267, paragraph 2, TFEU. Thus, the guardians of that legal order are the Court of Justice of the European Union and the courts and tribunals of the Member States (see Opinion 1/09 of the Court of Justice of the European Union of 8 March 2011, EU:C:2011:123 [here-inafter Opinion 1/09], para. 66).
25. Roku argues unsuccessfully that the UPC is not a court of a Member State, but rather an international court. The UPC is a court common to the Contracting Member States pursuant to Art. 1, paragraph 2, UPCA (see Court of Appeal, order of 3 September 2024, APL_21943/2024, UPC_CoA_188/2024, Aylo v. Dish, para. 10). It is true that the Unified Patent Court is a court that was established on the basis of an international agreement - the UPCA - i.e. on the basis of international law.
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26. However, as the Court of Justice of the European Union has already ruled for the Benelux Court of Justice, there is no good reason why a court common to a number of Member States should not be able to submit questions to the CJEU (judgment of 4 November 1997, Parfums Christian Dior, C-337/95, ECR I-6013, EU:C:1997:517, paras 21-23; judgment of 14 June 2011, Miles and Others C-196/09, EU:C:2011:388, par-agraph 40; judgment of 6 March 2018, Achmea, C-284/16, ECLI:EU:C:2018:158, paragraph 47).
27. Nonetheless, the Court of Justice of the European Union objected to the 2009 draft agreement on the European and Community Patents Court as being incompatible with the provisions of the TEU and the TFEU because it provided for a preliminary ruling mechanism which reserved, within the scope of that agreement, the power to refer questions for a preliminary ruling to the Community Patents Court while removing that power from the national courts (Opinion 1/09, para. 81). The decisive factor here was, however, the consideration that the situation of the Community Patents Court envisaged by the draft agreement submitted to the Court of Justice would have differed from that of the Benelux Court of Jus-tice. It was emphasized that the Benelux Court of Justice is a court common to a number of Member States and is thus situated within the judicial system of the European Union, and hence its decisions are subject to mechanisms capable of ensuring the full effectiveness of the rules of the European Union (Opinion 1/09, para. 82).
28. Nothing different now applies to the Unified Patent Court established on the basis of the UPCA. This is because, unlike in the draft agreement objected to by the Court of Justice of the European Union, the Agreement was concluded by EU Member States alone without the participation of the Union or any non-EU Member State (see Opinion of the Legal Service of the Council of the European Union, 21 October 2011, 15856/11, para. 27). It is clear from Opinion 1/09 of the Court of Justice of the European Union that at any rate the creation of such a court common to a number of EU Member States is permissible (see Opinion of the Legal Service of the Council of the European Union, 21 October 2011, 15856/11, para. 28).
29. For the UPC to be classified as a court common to a number of Member States, it is sufficient that the UPC has the task of ensuring that the legal rules common to the Contracting Member States are applied uniformly, and that it has a sufficient connection with the judicial systems of the Contracting Member States (see judgment of 14 June 2011, Miles and Others, C 196/09, EU:C:2011:388, para. 41; judgment of 6 March 2018, Achmea, C-284/16, ECLI:EU:C:2018:158, para. 48). Contrary to Roku's opinion, such a link with the judicial systems does not require the UPC to rule as an intermediate instance in proceedings pending before national courts, as is the case with the Benelux Court of Justice. Nothing to the contrary emerges from the Achmea and Miles decisions of the Court of Justice of the European Union. In those decisions, the CJEU determined that a court common to a number of Member States did not exist be-cause there was no comparability with the Benelux Court of Justice because in each case the court in question “does not have any such links with the judicial systems of the Member States” (underlining added). This demonstrates that a decision as an intermediate instance is not necessary; rather, a compa-rable connection to the judicial system of the Member States is sufficient.
30. In this respect, the UPC is comparable to the Benelux Court of Justice. This is because it has sufficient links with the judicial systems of the Member States. The fact that the UPC is a court common to the Contracting Member States has been expressly clarified by the Contracting Member States in Art. 1 UPCA.
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This alone is sufficient for it to be qualified as a court common to the Contracting Member States (in the case of derivation from the constitution of a Member State, see the CJEU’s decision in Achmea, para. 44). Accordingly, the UPC is considered, for the purposes of that Regulation, to be a court of one of the Con-tracting Member States – and thus part of its legal system – as a court common to the Contracting Mem-ber States pursuant to Art. 71a Brussels Ia, when the UPC exercises jurisdiction on the basis of Art. 32(1) UPCA in matters falling within the scope of the Brussels Ia Regulation.
31. In the case of the UPC, the link with the judicial system of the Member States is established by the fact that, according to Art. 1 UPCA, it is subject to the same obligations under Union law as any national court of the Contracting Member States. Thus, the UPC is in functional terms an inherent part of the judicial system of the Member States, even though it was established by a treaty (see Opinion of the Legal Service of the Council of the European Union loc. cit. para. 33). The Court is subject to mechanisms capable of ensuring the full effectiveness of the rules of the European Union. Art. 20 and Art. 21 UPCA state that, as a court common to the Contracting Member States and as part of their judicial system, the Court shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, in accordance with Art. 267 TFEU in particular. Deci-sions of the Court of Justice of the European Union shall be binding on the Court.
32. The close link with the judicial systems of the Member States also follows from the liability of the Member States and the actions provided for this purpose (cf. Opinion of the Legal Service of the Council of the European Union loc. cit. para. 33).
33. According to Art. 22(1) UPCA, the Contracting Member States are jointly and severally liable for damage resulting from an infringement of Union law by the Court of Appeal, in accordance with Union law con-cerning non-contractual liability of Member States for damage caused by their national courts breaching Union law.
34. If a question requiring a preliminary ruling arises in the context of an action for damages, the competent authority may refer the question to the Court of Justice of the European Union for a preliminary ruling pursuant to Art. 267 TFEU. Contrary to Roku's opinion, the UPC does not completely supersede the na-tional courts.
35. According to Art. 23 UPCA, actions of the Court are directly attributable to each Contracting Member State individually, including for the purposes of Articles 258, 259 and 260 TFEU, and to all Contracting Member States collectively.
36. Thus, the UPC is subject to the “mechanisms capable of ensuring the full effectiveness of the rules of the European Union” as stipulated by the Court of Justice (Opinion 1/09, para. 82).
4. No referral to the CJEU
37. It is not necessary to refer the question of the compatibility of the conferral of powers on the Unified Patent Court with Art. 19 TEU and Art. 267 TFEU to the Court of Justice of the European Union. In view of the decisions of the Court of Justice cited in paragraphs 26 and 29 above and Opinion 1/09 cited in paragraph 27, there is no doubt as to the compatibility of the conferral of powers on the UPC in Art. 71a
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and Art. 71b Brussels Ia with Art. 19 TEU and Art. 267 TFEU (see CJEU, judgment of 6 October 1982, C-283/81, ECLI:EU:C:1982:335, CILFIT, para. 21; judgment of 3 July 2019, Eurobolt, C-644/17, para. 30; CJEU, judgment of 6 October 2021, C-561/19, ECLI:EU:C:2021:799, Consorzio Italian Management and Catania Multiservizi).
5. Violation of the right to be heard by a court or tribunal established in accordance with the law pursuant to Art. 47, para. 2, EU CFR and Art. 6(1), sentence 1, ECHR
38. The appeals against the impugned decisions are unsuccessful insofar as the objections on the grounds of a violation of the right to be heard by a court or tribunal established in accordance with the law were rejected.
a) Was there a violation of the right to be heard by a court or tribunal established in accordance with the law due to an allocation of powers that is contrary to Union law?
39. Since, in light of the above, the rules governing jurisdiction of the UPCA are compatible with Art. 19 TEU and Art. 267 TFEU, no violation of the right to be heard by a court or tribunal established in accordance with the law can be found from this point of view.
b) Violation of the right to be heard by a court or tribunal established in accordance with the law due to the lack of a London section of the Central Division
40. It is also not objectionable that the Local Division considered the objections to be inadmissible insofar as Roku argues that the lack of a London section of the Central Division, which is contrary to Art. 7(2) UPCA, results in a violation of the right to be heard by a court or tribunal established in accordance with the law.
(1) No admissible ground for objection according to R. 19 RoP
41. The exhaustive list of admissible grounds for objection provided in R. 19.1 RoP does not include a viola-tion of Art. 47, para. 2, EU CFR and Art. 6 ECHR. Insofar as a violation of Art. 47, para. 2, EU CFR and Art. 6 ECHR does not involve any of the grounds for objection listed in R. 19.1 RoP, a preliminary objection based on that assertion is not admissible.
(2) Unfoundedness of the preliminary objection
42. Merely for the sake of completeness, the Court of Appeal notes that the objection is also unfounded in this respect.
43. According to Art. 47, para. 2, sentence 1, EU CFR, everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal previously established by law. Art. 6(1), sen-tence 1, ECHR states that, in the determination of his civil rights and obligations [...], everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal established by law.
44. Since, as the Local Division rightly accepted, a London section would not have jurisdiction over the dis-pute, one can say already from this point of view that there was no violation of Roku's right to be heard by a court or tribunal established in accordance with the law.
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45. Roku argues, without success, that a violation of Art. 47, para. 2, EU CFR and Art. 6 ECHR arises from the fact that the absence of a section of the Central Division in London could have had an impact on the actual composition of the panel.
46. The reason for the introduction of the term “established by law” in the first sentence of Art. 6(1) ECHR is to ensure that the organisation of the judicial system does not depend on the discretion of the executive, but that it is regulated by law emanating from the legislature in compliance with the rules governing its jurisdiction. That phrase reflects, in particular, the principle of the rule of law and covers not only the legal basis for the very existence of a tribunal, but also the composition of the bench in each case and any other provision of domestic law which, if breached, would render the participation of one or more judges in the examination of a case irregular, including, in particular, provisions concerning the independ-ence and impartiality of the members of the court concerned (CJEU, judgment of 6 October 2021, W.Z., C-487/19, ECLI:EU:C:2021:798 para. 129).
47. As regards EU law, the Court thus held, drawing, in that regard, on the case-law of the European Court of Human Rights to the effect that an irregularity committed during the appointment of judges within the judicial system concerned entails an infringement of the requirement that a tribunal be established by law particularly when that irregularity is of such a kind and of such gravity as to create a real risk that other branches of the State, in particular the executive, could exercise undue discretion undermining the integrity of the outcome of the appointment process and thus give rise to a reasonable doubt in the minds of individuals as to the independence and the impartiality of the judge or judges concerned, which is the case when what is at issue are fundamental rules forming an integral part of the establishment and functioning of that judicial system (CJEU, W.Z. para. 130).
48. Such doubts cannot be derived from the fact that, contrary to Art. 7 UPCA, there is no section of the Central Division in London. The establishment of a section of the Central Division in London became im-possible after the UK did not ratify the UPCA following its withdrawal from the EU. The fact that such a section was not established and that British judges were not considered in the appointment process thus does not give rise to reasonable doubt in the minds of individuals as to the independence and the impar-tiality of the competent judges.
49. Contrary to Roku's opinion, the Administrative Committee of the UPC was also empowered by analogy under Art. 87(2) UPCA to provide, by its decision of 26 June 2023, that Milan would replace London as a section of the Central Division with the competences set out in Annex II to the UPCA.
50. Art. 87(2) UPCA states that the Administrative Committee may amend the UPCA to bring it into line with an international treaty relating to patents or Union law. The fact that the Agreement does not provide for the power to amend if the implementation of the UPCA proves impossible is due to an unintended gap. Art. 87(2) UPCA serves the purpose of ensuring that there are no obstacles to the implementation of the Agreement. Since a corresponding need also exists in the case of de facto obstacles, Art. 87(2) UPCA must be applied mutatis mutandis in this case.
51. Contrary to Roku's opinion, the fact that the United Kingdom left the European Union before the UPCA entered into force does not prevent this. The power to amend the UPCA pursuant to Art. 87(2) UPCA is not limited to adaptation in the event of legal changes after the entry into force of the Agreement. The
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wording “to bring it into line with an international treaty [...] or Union law” rather suggests that, in par-ticular, an incompatibility with Union law, which already existed at the time of the entry into force of the Agreement, empowers the Administrative Committee to amend it accordingly. This is the only way to ensure that there are no obstacles to the implementation of the Agreement and that the Administrative Committee can react appropriately to any incompatibility with Union law that is identified. Nothing else can apply in the case of an analogous application of Art. 87(2) UPCA due to de facto obstacles.
52. Roku argues unsuccessfully that the change to the court structure, which is based on a de facto impossi-bility, is a fundamental change that requires democratically legitimized decisions by the Contracting Member States. The involvement of the Contracting Member States is adequately ensured by virtue of the right of veto provided for in Art. 87(3) UPCA.
53. Contrary to Roku's opinion, the competence of the Administrative Committee was also not limited to removing London as a competent section. Pursuant to Art. 87(2) UPCA, the Administrative Committee has discretion to decide how it brings the Agreement into line with an international treaty relating to patents or Union law. The same applies in cases where, as in the present instance, Art. 87(2) UPCA applies mutatis mutandis due to the impossibility of implementing the Agreement.
III. Application for the determination of a court fee
54. Roku’s request that only one court fee be set in proceedings APL_15067/2025 and APL_15072/2025 is unsuccessful. For the appeal proceedings, R. 228 RoP states that the appellant shall pay the fixed fee and, where applicable, the value based fee for the appeal, in accordance with Part 6. A fee is payable for each infringement proceedings. The fact that the appeals raise the same issues does not change this.
IV. Costs
55. Dolby's and Sun's requests that Roku be ordered to bear the costs of the proceedings must be dismissed. Since this is not a final order or decision that concludes the main proceedings on the merits, there is no need for a decision on costs (see UPC Court of Appeal, order of 16 September 2024, UPC_CoA_301/2024, APL_33746/2024, ICPillar v. ARM para. 41).
ORDER
I. The appeals are rejected.
II. Roku’s request that only one court fee be set in proceedings APL_15067/2025 and APL_15072/2025 is dismissed.
III. Dolby's and Sun's requests that Roku be ordered to bear the costs of the proceedings are re-jected.
Issued on 6 October 2025
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Rian Kalden, presiding judge and legally qualified judge
Patricia Rombach, judge-rapporteur and legally qualified judge
Ingeborg Simonsson, legally qualified judge