UPC CFI, LD Vienna, 15 January 2025: Invalidity not addressed in the absence of a counterclaim for revocation

Patent infringement (Article 25 UPCA). 

All features of claim 1 are used in the optical unit. 

Invalidity objection (subject-matter extends beyond the application as filed, Article 123(2) EPC)) not addressed in terms of content since no counterclaim for revocation was filed (R. 25 RoP, R. 42 RoP). 

No (definitional) limitation of the skilled person’s understanding of the term ‘converging lens’ (Article 69 EPC). 

Neither the description nor the US patent support a limitation of feature M4 or the understanding of the skilled person that only spherical collecting lenses are to be covered by the patent in suit. […] the skilled person understands the term ‘converging lens’ to mean not only (restrictively) a spherical lens, but also an aspherical lens. A converging lens must be able to focus light at a focus point of the lens. For this technical function, it is not absolutely necessary for the lens to be perfectly spherical (see the remarks in 2.3.2 on the characteristic M10). According to the description of the patent in suit, a diffusing structure or surface is to be understood – contrary to the defendant's view – not as part of the light-conducting rod, but as an optically effective structure in the area of the converging lens (5) (see [0054] and also [0053] and Figure 4 / feature M13). 

According to the wording of the UPCA, the definitive removal from the channels of commerce is an independent measure, separate from the recall (Article 64(2)(d) and 4 UPCA). 

It accompanies the recall, whereby removal is only considered if the infringer has the factual and legal possibilities to do so. The wording of specific and sufficiently particular measures must be based on this. 

No apparent reasons that would make publication of the decision necessary (Article 80 UPCA). 

When exercising discretion, the purposes of deterring future infringers and raising public awareness, as pursued by Art 80 UPCA, must be taken into account. The patent proprietor's (plaintiff's) interest in prevention, which goes beyond the specific infringement case, must be taken into account when weighing up the interests of the parties to the proceedings. 

Intervener also treated as a party with regard to the bearing of legal costs; in this case 20% indicative (Article 69(2) UPCA, R. 315.4 RoP). 

In the present case, the intervener's statement of 19 August 2024 caused the plaintiff relatively little expense because the written proceedings had already been completed for her at that time.

IPPT20250115, UPC CFI, LD Vienna, Swarco v Strabag