UPC CFI, LD Munich, 22 August 2025: Interpretation of a purpose specific claim, novelty, no exhaustion but a potential indirect infringement
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Patent maintained in amended form (Article 65 UPCA). Indirect infringement (Article 26 UPCA); No exhaustion (Article 29 UPCA).
As is usually the case, the purpose specified in the claim (Article 69 EPC) defines the protected subject matter in such a way that it must be objectively suitable for interacting with the valve in accordance with features 1a and 1b of claim 1. This is because it has not been argued or is otherwise apparent that valves other than those corresponding to features 1a and 1b do not exist or are not technically conceivable. Given the purpose specified in the claim the only relevant factor for the novelty test is whether a device with the spatial physical characteristics as required by the contested patent for the valve actuating device is already disclosed in the prior art (Article 54(1) EPC). If this is the case, the device is disclosed ‘as such’, regardless of its intended use. The only exception to this is if the device disclosed as such with all its spatial and physical features is unsuitable for the intended purpose of the contested patent or requires modification in order to be used for this purpose.
When plaintiff defends the contested disputed patent only to a limited extent in accordance with the respective sets of claims (Article 65(3) UPCA), there is no need to investigate whether subordinate claims of the contested patent in the registered version are to be declared partially invalid and, if necessary, upheld in combination with uncontested (sub)claims, since the court must decide in accordance with the parties' submissions (Article 76(1) UPCA).
The (alternative) defence of the contested patent by means of the closed sets of claims means that the contested patent can only be upheld on the basis of such an alternative request, in which each of the subordinate claims of the contested patent is included in a grantable version.
Any amendment to the contested patent must satisfy the requirements of Article 84 EPC. Rule 30.1(b) RoP explicitly requires that a request for amendment of the patent must include, inter alia, an explanation of why the amendment meets the requirements of Article 84 EPC. It must therefore be examined whether the amendment introduces a lack of clarity.
Exhaustion of patent rights in case of use of the product for its intended purpose, to sell it to third parties or to offer it to third parties for one of these purposes (Article 29 UPCA).
The intended use of a patent-protected product also includes the usual maintenance and restoration of its usability if the functionality or performance of the specific product is wholly or partially impaired or eliminated due to wear and tear, damage or other reasons.
However, the intended use does not include any measures that result in the reproduction of a patented product. The patent holder's exclusive right to manufacture is not exhausted when a copy of the patented product is placed on the market for the first time.
One factor to be considered in this assessment is whether the replacement or substitution of the part in question can normally be expected during the product's lifetime and whether, as a result, the market or consumers can reasonably expect to be able to continue using the purchased product or to use it multiple times by means of the replacement part. If this is the case, it can generally be assumed that this is a normal maintenance measure and thus a permissible use of the patented product placed on the market.
However, the situation is different in exceptional cases where the technical effects of the invention are reflected precisely in the replacement part. In such cases, the replacement of the part means that the technical and economic advantages of the invention are realised once again and the identity of the patented product originally placed on the market is lost.
The assumption of exhaustion fails because the filter cartridge offered and distributed by the plaintiff does not itself have the features of a filter cartridge according to claim 1 as amended in auxiliary request 16.
If an embodiment that indirectly infringes the patent can also be used without infringing the patent (Article 26 UPCA) only a limited prohibition is justified, which ensures that, on the one hand, economic trade in the contested object outside the scope of the property right remains unaffected and, on the other hand, the direct patent-infringing use by the customer is excluded with sufficient certainty.
Suitable measures for this purpose include, in principle, warnings to customers not to act in accordance with the patent-compliant teaching without the consent of the property right holder, as well as a contractual cease-and-desist agreement with the customer, which may be linked to the payment of a contractual penalty to the property right holder in the event of a breach of the cease-and-desist agreement.
