UPC CFI, LD Munich, 6 June 2025: Suitability of a device is sufficient for infringement and injunction
05-09-2025 Print this page
Patent partially invalid (Article 65 UPCA) and infringed (Article 25 UPCA).
Inventive step (Article 56 EPC): Problem-solution-approach: to increase legal certainty and further align the case law of the Unified Patent Court with the case law of the EPO and its Boards of Appeal, the problem-solution approach (PSA) developed by the European Patent Office (EPO) should be applied as far as possible.
Extent of protection (Article 69 EPC); infringement (Article 25 UPCA); Injunction (Article 63 UPCA): If a device has the required suitability, it is irrelevant whether the characteristics and effects specified in the patent are achieved regularly, only in exceptional cases or only by chance, and whether the user intends to achieve these effects. It is sufficient that the groove base present in the contested embodiments is potentially suitable for receiving the front end of a pile end. In the court's view, this is the case because the groove of the contested embodiments, which tapers towards the groove base and is shown below, does not prevent a pile with a wall thickness corresponding to the groove base or a tapered pile from reaching the groove base. An injunction relating to the contested embodiments could not be imposed if, taking into account all relevant parameters such as shape (cone), material, wall thickness of the pile, soil conditions and pile driving force, it is technically impossible to manufacture a pile whose front end can reach the bottom of the groove of the contested pile tips when they are attached or driven in. In this case, the claim's requirement of attachability and thus the realisation of all features of the patent claim would have to be denied, even though this is a circumstance outside the scope of the patent claim.
Burden of proof regarding infringement (Article 25 UPCA, Article 54 UPCA). The plaintiff must demonstrate and prove that all the features of the patent in suit are realised by the contested embodiments (ramming tips), since it alleges infringement and thus the realisation of all the features of the patent in suit by the contested embodiments. If the defendants claim that patent infringement is impossible due to circumstances outside the scope of the patent claim, the defendants bear the burden of proof for this claim .
Territorial scope of decision (Article 34 UPCA). Defendants’ position that the geographical scope of the prohibition should be limited to Germany, Austria and Italy, since the contested embodiments were only offered there, is incorrect on the basis of Article 34 EPC. In the case of a European patent, the decisions of the court apply to the territory of those contracting member states for which the European patent is effective.
Publication of the decision (Article 15 Enforcement Directive). The court does not agree with the defendants' view that there is no legitimate interest in publishing the judgment because EPG decisions are published anyway. If this were the case, any application for publication of the judgment would always have to be rejected.
