Malikie Innovations v Nintendo (CFI, UPC_CFI_537/2024, 28 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a summary of the interim conference of 22 October 2025 with orders, dated 28 October 2025 (UPC_CFI_537/2024, EP 2 579 551), the judge-rapporteur of the Hamburg Local Division admitted everything in dispute in Malikie Innovations’ infringement action against Nintendo Co. and Nintendo of Europe and the revocation counterclaim: two rounds of applications to amend the patent, new prior art and new validity attacks. The parties consented to values of EUR 3 million for the action and EUR 4.5 million for the counterclaim. A separate order was issued the same day in UPC_CFI_555/2024 (EP 2 448 225).

Question

Are a second round of applications to amend (Rule 30.2 RoP), and the new prior art it prompts, admissible at this stage of the written procedure?

Decision

The patent sale and assignment agreements were admitted, their probative value as to standing being left to the merits (paragraph 5). Changes of claim under Rule 263 RoP are subject to a more liberal regime than Rules 30.1 and 30.2, and an unconditional limitation must always be allowed (paragraph 6), conditional requests must be reasonable in number (paragraph 7). Having heard the patentee’s explanations, the judge-rapporteur revised his initial view and admitted the second round, which narrows the claimed subject matter: neither fairness nor efficiency requires its dismissal (paragraphs 17 and 18). The patentee must explain from the outset why amended requests are patentable. Each new round gives the defendant a fresh opportunity to attack, hence the admission of D10 and D11 (paragraphs 23 to 27). New attacks may not, however, be raised for the first time at the oral hearing (paragraph 24). Each side has two weeks to respond in writing.

Key points for practice

• A second round of amendments under Rule 30.2 RoP may be admitted where it narrows the claimed subject matter and the defendant can still respond.
• Each new round of amendments reopens the validity debate, including with new prior art.

Provisions applied

Rules of Procedure

Rules 30.1, 30.2, 105.5, 171.1 and 263

European Patent Convention

Art. 84, Art. 123(2)

Case law cited

Nera Innovations v Xiaomi, 10 July 2025 (Hamburg Local Division), Agfa v Gucci, 30 April 2025 (Hamburg Local Division), Tridonic v Cupower, 7 March 2025 (Düsseldorf Local Division), Philips v Belkin, 3 October 2025 (Court of Appeal, UPC_CoA_534/2024, paragraph 138), Meril v Edwards, Paris Central Division, 27 February 2024 (UPC_CFI_255/2023), Paris Central Division, 27 November 2024 (UPC_CFI_308/2023), Munich Central Division, 19 April 2025 (UPC_CFI_526/2024), Hamburg Local Division, 30 December 2024 (UPC_CFI_173/2024 and 424/2024), Düsseldorf Local Division, 12 September 2025 (UPC_CFI_733/2024 and UPC_CFI_255/2025)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.