UPC CFI,LD The Hague, 11 September 2011: on claim construction and equivalents

Preliminary injunction for direct infringement (Article 25 UPCA, Article 62 UPCA, R. 211 RoP), order to communicate information (Article 67 UPCA), recall (Article 64(2)(b) UPCA )and cost award (Article 69 UPCA). 

Patent more likely than not valid. 

No added matter (Article 123(2) EPC): The Court concurs with the reasoning adopted by the Board of Appeal of the EPO, finding that the retaining member is disclosed independently of the cover plate, both in the general description and in the original claim structure. 

Inventive step (Article 56 EPC) Irrespective of whether D1 should be or should not be considered as a realistic starting point, the court believes that D1, combined with any of the prior art documents submitted by Defendants, does not prejudice inventiveness of the claim. 

Claim interpretation, equivalence and infringement (Article 69 EPC, Article 2 Protocol) 

A. Features 1.7-1.8: plate like support means for transmitting vertical forces. 

The claim recites that one or more plate-like means should support the carrier. It can therefore also be just one. […]. The purpose of the support means is that it transmits vertical forces in a meaningful way. 

B. Group of features 1.9 concerning a retaining member in the form of an L-shaped strip made of metal. 

Test for equivalence: In the positive, finding of equivalent patent infringement always requires that the variant performs essentially the same function as the element recited in the claim, with essentially the same result. The same applies to the assumption that protection cannot extend to what is not new or inventive over the prior art. In the absence of a decision by the Court of Appeal and given that both parties referred to this test without proposing or even debating an alternative, the Court sees no reason to deviate from the (four questions) test it applied in Plant-e v. Arkyne. 

Legal certainty for third parties: A skilled person would in principle understand that a material different from metal would work to retain the washing machine, provided the used material is strong enough to prevent a washing machine from falling off. While for the cover plate, both metal and fibre reinforced plastic are contemplated, the description as such does not give a clue as to why the retaining member, despite this understanding by the skilled person, can only be of metal. Absent such indications, a third party can not genuinely believe that he/she can take advantage of the claimed invention, by simply using a non-metal strip to circumvent literal infringement. 

Necessity and balance of interest (Article 62(2) UPCA, R. 206(d) RoP. R. 211(3) RoP). The price difference is not sufficiently large to underpin Defendants’ claim that the markets are so separate that Applicants will not economically “feel” the continued sales by Defendants. To the contrary, the price difference is such that it will undercut Applicants’ pricing, giving rise to a risk of irreparable price erosion while proceedings on the merits take place. Equally, Applicants are right to indicate (as such not contested by Defendants) that these cabinets are not purchased often by a consumer. This means serious irretrievable loss of sales and market share are likely. Also, Applicants have indicated that after their commercial relationship ended in which Defendants manufactured the cabinets of Applicants exclusively for important segments of the market, Applicants now have to build up their own market share in these segments, and Defendants’ cabinets irreparably harm that effort. The fact that the Applicant relies heavily on the patented product, whereas the defendant does not tends to lead the court to find that the balance of interests weighs in the benefit of the Applicant.  

Applicants acted without undue delay (R. 211(4) RoP): the delay was less than 2 months from the publication of the grant of the patent to start these proceedings, not counting some time for an out of Court settlement attempt by mail.

IPPT20250911, UPC CFI, LD The Hague, Washtower v Wasombouw