The dispute was between South Korean company Eoflow Co., Ltd. and US company Insulet Corporation concerning the alleged infringement of European patent EP 4 201 327 relating to an insulin pump in patch form (‘Omnipod 5’). In this case, Eoflow was initially targeted in July 2024 by an ex parte preliminary injunction sought by Insulet to stop the marketing of its ‘EOPatch’ pump. In response, Eoflow filed a patent revocation action in October 2024, to which Insulet replied with a counterclaim for infringement and, in the alternative, a request for limitation of the patent in question.

In each of the three proceedings, the parties exchanged two sets of written submissions until the beginning of April 2025. In its latest submissions in the patent revocation proceedings, Eoflow had sought authorisation to file an additional written submission in order to comment on a recent appeal decision and had simultaneously attempted to introduce a new document, the US patent (US 6 656 159), as new prior art. In parallel, Insulet had invoked its opponent’s fragile financial situation to request that it be ordered to deposit a sum of €1 million as security for costs.

In its Order, the Central Division first recalls that the procedure before the UPC is front-loaded, explaining that “this means that whenever a party proposes to bring an action before the UPC, it must take care to collect in advance the documents supporting the claim.” All evidence, and in particular prior art documents in revocation actions, must therefore be gathered before initiating the action and filed with the Statement of revocation. Otherwise, they may not be admissible at a later stage unless it is shown that the document were not available or could not have been submitted earlier.

In the present case, EOFLOW did not demonstrate that it was materially impossible to produce the US patent 6 656 159 earlier, a document which had not even been mentioned before and which was not submitted in response to new arguments raised by the other party. The Central Division thus finds the document inadmissible, closes the written procedure, schedules an Interim Conference, clearly defining its modalities, language, subject-matter and format, as well as the date for the oral hearing.

In this decision, it is interesting to note that the Central Division also ruled on the request for security for costs made by Insulet, claimant in the infringement action, in view of its doubts as to the defendant’s ability to pay the costs of the proceedings if it were to be found liable.

In response, Eoflow argued that only defendants could make such a request under Article 69(4) of the Agreement on a Unified Patent Court, Rule 158 of the Rules of Procedure of the UPC, and also Article 6 of the ECHR and Article 42 of the TRIPS Agreement, unless the defendant would be subject to unacceptable financial pressure.

The Central Division recalls that a security for costs may be ordered against any party when there are serious doubts about its financial capacity to bear the costs of the proceedings it might be liable for, even if that party is the defendant.

In view of the financial indicators produced in this case by Insulet and not seriously contested by Eoflow, the Central Division grants the request for security and orders Eoflow to deposit within three weeks the sum of €500,000, half of the maximum recoverable costs, specifying that in the event of difficulties, an extension of the time limit may be requested, and that, in the absence of payment, the Central Division may issue a default judgment pursuant to Rule 355 RoP.

More information available on www.upc-casalonga.eu.