UPC CFI, LD Dusseldorf, 10 April 2025: Interpretation of product-by-process claim, prior use, compensation during application stage (and more)

Direct patent infringement (Article 25 UPCA), revocation dismissed: permanent injunction (Article 63(1) UPCA), provision of information (Article 67 UPCA), and corrective measures (Article 64 UPCA): recall, removing the product from channels of commerce , destruction (Article 64(2)(e) UPCA), Provisional damages of € 100.000 (Article 68 UPCA). 

No license for the contested embodiments. The development agreement submitted as Annex rop 10 to the file grants the defendant a right to use the disputed patent only for the ‘Travelino’ caravan, but not for the “Deseo” and ‘Azur’ caravans that are the subject of the dispute. 

Enforcement not subject to security (Article 82(2) UPCA). defendant has not presented any reasons that would justify making enforcement in the present case dependent on the provision of security. 

Competence of the UPC (Article 32(1)(a) UPCA, Article 83 UPCA) extends to infringement proceedings concerning a European patent which had not yet expired at the time of the entry into force of the UPCA at 1 June 2023 and Also encompasses claims for (allged) acts of use prior to 1 June 2023 and rior to 2 February 2024 (withdrawal of the opt-out). Applicable law: (Article 24 UPCA) the substantive law as laid down in the UPCA applies to acts that began before the entry into force of the UPCA and continued after 1 June 2023. 

Unfounded rebuttal of patent proprietorship plaintiff (R. 8.5 RoP): the declaration of sale and transfer also transferred claims for information, damages and compensation from the period prior to 30 December 2022 to the plaintiff and the declaration of sale and transfer also includes the French, Italian and Slovenian parts of the contested patent. There is therefore no reason to doubt the standing of the plaintiff for these countries. 

Product-by-process claim interpretation (Article 69 EPC). Such claims are characterised by the fact that the technical content of the invention does not normally consist in the process as such, but in the technical characteristics conferred on the product by the process. The decisive factor is therefore how the skilled person understands the information on the manufacturing method and what conclusions he draws from this for the inventive nature of the object. However, if the manufacturing process leads to properties in the product that can only be achieved in this way and whose presence can be detected in the finished product, the patent is ultimately limited to products that can be manufactured in this way. What is decisive is whether the patent specification provides any indications that justify the conclusion that the use of the process described in feature group 2 is necessary for technical reasons in order to achieve certain features of the product. 

Standard for assessing novelty (Article 54 EPC): A technical teaching is new if it differs from the prior art.  Findings which a skilled person only gains on the basis of further considerations or the use of further documents or uses are not prior art. 

Standard for inventive step (Article 56 EPC): the assessment of inventive step always requires an evaluation in each individual case, taking into account all relevant facts and circumstances. An objective approach must be adopted. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. The decisive factor is whether the claimed subject matter is such that the skilled person would have found it based on their knowledge and skills, e.g. through obvious modifications of what was already known. .There may be several realistic starting points, whereby it is not necessary to determine the ‘most promising’ starting point. 

No prior use right (Article 28 UPCA). The user of the technology according to the invention can only rely on the rights granted to him by the respective national regulations of the respective contracting member states. In this respect, the existence of a prior right of use must be asserted for each of the protected states under its conditions. The provision does not provide for a European right of prior use, but rather a sliding reference to the respective national law. Whether a right of prior use, as asserted by the defendant, must always be asserted by way of a (counter) action or whether it can also be raised merely by way of a defence against the allegation of infringement does not need to be examined in detail in the present case. Possession of the invention alone is not sufficient, it must also be used. In any case, arrangements must have been made for its use for thus purpose. For the latter it is necessary that the person invoking Section 12 PatG has made a form and definitive decision to commercially exploit the invention. In addition, they must have taken steps to prepare for the rapid implementation of the decision and have the intention to exploit the invention. In order to meet the requirements, two conditions must therefore be fulfilled: First, there must be legal action aimed at the substantial implementation of the invention. Second, these actions must demonstrate a serious intention to use the invention in the near future […]. Mere preparatory acts for the purpose of exploring the possibility and expediency of commercial exploitation are not sufficient, nor are preparatory acts for a later planned execution […]. 

Damages or compensation derived from provisional protection conferred by a published European patent application (Article 32(1)(f) UPCA). Since such compensation is not regulated in either the UPP Regulation or the UPCA, the court must apply the provision of Art. 24(1)(c) UPCA on the basis of Art. 67 EPC, which grants Member States discretion in terms of how they structure such compensation. Since there is currently no uniform regulation on the question of compensation, it is initially for the plaintiff seeking such compensation to demonstrate that the conditions for compensation are met in the individual Member States in question.

IPPT20250410, UPC CFI, LD Düsseldorf, Yellow Sphere v Tabbert