Limits on Live Expert Testimony and the Straw Man Doctrine: Two Central Division Orders
Two procedural orders from the Munich Central Division clarify the strict limits on hearing private legal experts in person and confirm that 'straw man' objections to standing are governed by Article 47 UPCA, not national law.
When a parent company files a revocation action at the Unified Patent Court after its wholly owned subsidiary has already lost a parallel nullity suit in Germany, the defendant will inevitably raise a res judicata objection. The immediate procedural reflex is often to marshal extensive expert testimony on national law to prove or disprove that the parent is acting as a mere "straw man". Two recent procedural orders from the Munich Central Division in the matter of REEL International v. Fives ECL demonstrate exactly how the Court manages this influx of national legal theory, drawing a strict line between written expert opinions and live testimony.
How did the judge-rapporteur structure the debate on expert testimony?
The procedural management of the expert testimony request began during the interim conference. In the order of 2 October 2026 (UPC-CFI-0002296/2025), the judge-rapporteur utilised Rule 36 RoP to organise a precise sequence of supplementary briefs. Rather than ruling immediately on the defendant's request to hear private experts under Rule 176 RoP, the Court required the parties to first submit observations on a newly issued Court of Appeal decision, Heraeus v. Vibrantz.
This sequencing ensured the panel would only decide on the necessity of live testimony once the baseline legal framework for res judicata was established. The order also addressed practical hearing mechanics: the judge-rapporteur set the value of the dispute at 4.5 million euros and ordered simultaneous French-to-English translation at the Court's expense under Rule 109.3 RoP to assist the multinational panel.
Why did the panel reject live testimony on German res judicata?
Following the supplementary briefing, the full panel issued its decision on 26 October 2026 (UPC-CFI-0002296/2025#184560). Fives ECL had requested the in-person hearing of international law professors to debate the binding effect of the German Federal Court of Justice's decision against the subsidiary, REEL GmbH.
The panel rejected this request. Relying on the Court of Appeal's finding in Heraeus v. Vibrantz, the panel noted that both parties now agreed that the effect and scope of a national judgment are governed by the national law of the rendering court. Because the legal standard was settled and the written expert opinions on German civil procedure were already comprehensive, the panel found no need to clarify the matter further through an oral hearing.
Does national law govern the "straw man" objection under Article 47 UPCA?
Fives ECL further argued that REEL International was merely a "straw man" (Strohmann) attempting to circumvent the German res judicata ruling, and requested live expert testimony on this German legal concept.
The panel drew a sharp distinction between the existence of a national judgment and the rules governing standing at the Unified Patent Court. The panel held that qualifying a party as a "straw man" is fundamentally a question of admissibility and interest to act. Therefore, it must be assessed under the Unified Patent Court Agreement, specifically Article 47 UPCA, rather than national law. Given that the parties had already submitted 92 pages of private expert opinions and nearly 160 pages of briefs, the panel concluded it was sufficiently informed. Hearing experts live was deemed unnecessary under Article 53(2) UPCA.
How does patent expiration affect the need for expert testimony?
The defendant also argued that the patent's expiration and a formal commitment not to sue REEL International for infringement should restrict the claimant's interest to act, relying heavily on German case law.
The panel again separated national jurisprudence from UPC procedural autonomy. The effects of patent expiration and a non-assertion commitment on a party's standing fall strictly under Article 47(6) UPCA. Because this is a matter of UPC law rather than national law, and the written exchanges were already exhaustive, the panel refused the request for live expert testimony on this point as well.
What must practitioners adapt when relying on private experts after these orders?
The threshold for hearing private legal experts in person at the Unified Patent Court is exceptionally high. Practitioners must ensure their written expert reports are entirely comprehensive, as the Court will rely on the principle that written evidence suffices unless a specific factual gap requires oral clarification. Furthermore, while national law dictates the scope of a national res judicata effect, attempts to import national doctrines like the "straw man" to challenge standing will be redirected to the autonomous framework of Article 47 UPCA. Parties should allocate their resources to arguing UPC admissibility standards rather than debating national procedural theories in oral hearings.