UPC CFI, LD Mannheim, 2 April 2024, Jurisdiction, applicable law, novelty and private prior use
23-05-2025 Print this page
Direct infringement of non-lapsed German part of European patent (Article 25 UPCA), revocation counterclaim dismissed (Article 65 UPCA).
Amendment of patent and of request in infringement action (R. 30 RoP, R. 263 RoP, R. 265 RoP). Auxiliary requests in reply to statement of defence with regard to infringement action are covered by R. 30 RoP without necessity to formally apply for leave to change the claim or amend the case in accordance with R. 263 RoP. R. 263 RoP does not address amendments of original requests for the infringement action from the original main claim to the original auxiliary request as the new main request, which relates to the mere wording only, not to the substantive content of the request. Even if one considered the transition to be a partial withdrawal of the statement of claim in the meaning of R. 265 RoP, such partial withdrawal would have to be granted under R. 265 RoP. An amendment in response to concerns raised by the Court does not constitute a change or amendment in the meaning of R. 263 RoP if the lack of specificity and the amendment responding to it concern the wording only but not the content of the request. Even if the lack of specificity and the amendment concerned the substance of the requests, it would serve the purpose of removing a potential lack of substantive specificity only after having been addressed by the court. Such amendment would have to be admissible under R. 263 RoP on a regular basis if it does not unduly hinder the defence of defendant.
No jurisdiction UPC over national parts of a European patent, which have already lapsed in a UPCA member stat or a non-UPCA-member state before 1 June 2023 (Article 3(c) UPCA, Article 32 UPCA).
The Defendants’ objection against the UPC’s jurisdiction with regard to the lapsed national parts of the patent-in-suit is not precluded by R. 19.7 UPCA or Art. 26 (1) Brussels Ia Reg., although Defendants did not base their preliminary objection on the lack of jurisdiction under Art. 3 (c) UPCA, but raised an objection insofar in the oral hearing only. Applicable aw:
The substantive law to be applied to on the instant facts of the case is the UPCA as the attacked embodiments (SONORA XTRA-3 plates) had been marketed at least also after 1 June 2023 (IPPT20250311, UPC CFI, LD Mannheim, Hurom v NUC - I).
Priority - no public prior use (Article 87 EPC): all essential elements of the invention must be directly and unambiguously apparent from the prior application. In this context it is decisive what is being disclosed by the priority document as a whole and the same test as for novelty applies. Therefore, there is no sufficient argument being presented that JP ‘837 lacks disclosure of aspect B, as Defendants limit the disclosure counter to these principles to the claims of the priority document and do not elaborate on the disclosed technical teaching in the document as a whole. Therefore, the relevant priority date is 29 September 2017. The analysis is to be limited to the facts which had been presented in the Statement of Defense and the Counterclaim for Revocation. It is in those briefs that the defendant has to submit reasons why the action shall fail, R. 24(g) RoP and the grounds for revocation have to be presented comprehensively, R. 25(1)(b) and (c) RoP whereas the following briefs have to limit themselves to a response to matters raised in the Reply, R. 29(c) and (d) RoP. Printing plate precursors of Defendants were protected by an at least implicit confidentiality regime.
Novelty – reworking standard (article 54 EPC). In principle, when assessing novelty, the disclosure of a prior-art document also extends to a result which is automatically achieved as a result by reworking a procedure which is being described in a manner, which allows reworking by the person skilled in the art, or where the procedure for reworking is obvious to a person skilled in the art which aims at arriving at a specific technical result. In that way the result itself, at which the skilled person arrives by reworking according to the disclosed procedure, is also directly and unambiguously disclosed.
Inventiveness – no incentive to recombine (Article 56 EPC). With regard to inventiveness, there is no motivation for the skilled person to recombine the micropore properties of the thirty examples disclosed in table 2 so as to arrive at a technical solution which is encompassed by the patent-in-suit.
No added matter (Article 138(1)(c) EPC). Any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims, and drawings) can irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application(s) as filed.
No private prior use in Germany in accordance with German law (Article 28 UPCA. § 12 German Patent Act. Defendants did not submit sufficient facts so as to establish that they had also made the final business decision within the Kodak Group to commercialize printing plates with the features of the claimed invention before the relevant priority date.
