UPC CFI LD Dusseldorf, 3 July 2024: First infringement decision on the merits

07-07-2024 Print this page
IPPT20230703, UPC CFI, LD Düsseldorf, Kaldewei v Bette

 

Direct (undisputed) infringement (Article 25 UPCA) and indirect infringement (Article 26 UPCA). 

 

Indirect infringement requires a double territorial connection. This means that, on the one hand, the offer and/or delivery must take place in the territory and, on the other hand, the invention must also be used in the territory. Not necessary to decide the question whether in case of a European (bundle) patent subject to the UPCA without unitary effect, it is sufficient that the offer/supply takes place in one of the contracting member states in dispute and is intended for direct use of the invention in the other protected states, or whether, it must be required that the unlawful act is directed to the same Contracting Member State in which the direct patent infringement is realised by the supply. 

 


Burden of proof invalidity (article 54 UPCA). The burden of presentation and proof for facts relating to an attack on the novelty and/or inventive step of the patent in dispute lies with the defendant. 

 

Novelty: direct and unambiguous disclosure (Article 54 EPC). A technical teaching is new if it deviates from the prior art in at least one of the known features. Only that which is directly apparent to a person skilled in the relevant technical field from publication or prior use is anticipated in the prior art. Findings that a skilled person only obtains on the basis of further considerations or by consulting other publications or uses are not prior art. The mere fact that the skilled person has two options for understanding the information speaks against the existence of a direct and unambiguous disclosure. 

 

Inventive step (Article 56 EPC). An inventive solution begins beyond the area which, based on the state of the art, is defined by what the skilled person with average knowledge, skill and experience can routinely develop and find in the relevant technical field. An invention is deemed to exist if it does not result from the usual approach of the person skilled in the art, but requires an additional creative effort on their part. 

 

No prior use rights in each Contracting Member State (article 28 UPCA). The narrow wording of the provision is clear. The user of the technology according to the invention can only invoke the rights granted to him by the respective national regulations of the respective contracting member states. In this respect, the existence of a right of prior use must be submitted for each of the protected states under their conditions. The standard does not provide for a European right of prior use, but is a sliding reference to the respective national law. 

 

No obligation to lay open books in infringement proceedings (Article 68 UPCA, Rule 131 RoP, Rule 141 RoP). Request to lay open books is part of the proceedings to determine the amount of damages ordered and, where applicable, precedes the quantified claim for damages. Entitlement in infringement proceedings to request information which the plaintiff needs in order to be able to check the validity of information and to obtain indications for its calculation of damages. (Article 68 UPCA, Article 67 UPCA, Rule 191 RoP). In terms of content, such a request is directed at information on the cost factors on which the defendant relies when calculating its profits. In addition, the patent proprietor may, within the scope of this right of disclosure, also request documentary evidence for the information pursuant to Art. 67 (1) UPCA, namely invoices or, if these are not available, alternatively delivery notes. 

 

Recall and definitive removal from the channels of commerce are two separate measures (Article 64(2)(b) and (d) UPCA). Definitive removal accompanies the recall, whereby removal can only be considered if the infringer has the factual and legal means to do so. The formulation of concrete and sufficiently specific measures must be based on this [partially granted]. 

 

Retroactive extension of deadline from 13 May 2024 to 15 May 2024 for submission of sketches or documents to refer to at the hearing of 16 may 2024 rejected (Rule 9(3)(a) RoP). Firstly, such an application must be made at the latest at the same time as the substantive submission for which the party is requesting the retroactive extension of the deadline. If such an application is filed later - as is the case here - it has no prospect of success from the outset. Secondly, the application should not be granted because the missed deadline served to ensure the proper preparation of the oral hearing by the international panel.

 

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette