Nera Innovations v Xiaomi Communications (CoA, 30 June 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 30 June 2026, made in appeals UPC_CoA_692/2025 and UPC_CoA_854/2025 against the decision of the Hamburg Local Division of 10 July 2025 concerning EP 2 642 632, the Court of Appeal disregards a private expert opinion and a handbook extract filed by Xiaomi for the first time on appeal, together with its new objection of lack of inventive step over D1, D2 and D4. Rule 222.2 RoP is applied strictly to material that could have been put forward at first instance.

Question

Should the Court of Appeal take into account a new expert opinion and exhibit, and an inventive step objection based on prior art relied on at first instance for lack of novelty only?

Decision

Art. 73(4) UPCA and Rule 222.2 RoP allow the Court to disregard material not submitted at first instance, having regard to the party’s justification, the relevance of the material and the other party’s comments (paragraph 18). Xiaomi had advanced the same construction before the Local Division, where it offered expert evidence without filing an opinion, and gives no reason for the late filing (paragraphs 20 and 21). A party relying on a private expert opinion must file it in good time, given the front-loaded nature of the proceedings. Moreover, the opinion is of limited relevance because claim construction is a question of law (paragraphs 21 and 22). The inventive step objection could have been raised at first instance on Xiaomi’s own construction. Resting on a different construction and different facts, it is new (paragraphs 23 and 24). The attack based on D3, confined to novelty, is unaffected (paragraph 25).

Key points for practice

• A private expert opinion supporting a construction already argued should be filed at first instance, or it may be disregarded on appeal (paragraphs 20 to 22).
• Relying on appeal, for inventive step, on prior art cited below only for novelty is a new objection where it rests on different facts (paragraph 24).

Provisions applied

Agreement on a Unified Patent Court

Art. 73(4)

Rules of Procedure

Rule 222.2

Case law cited

Insulet v EOFlow, Court of Appeal, 30 April 2025, on claim construction as a question of law, Hefei v Grundfos, Court of Appeal, 27 May 2026, on what amounts to a new objection on appeal.

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.