UPC CFI, LD Dusseldorf, 11 February 2026 : Validity, infringement, publication of decisions and more
16-03-2026 Print this page
Patent valid and infringed. (Article 25 UPCA).
VALIDITY.
Counterclaim for revocation unfounded : No added matter (Article 138 EPC).
The Court cannot identify any relevant differences between the new translations of claim 1 (from Japanese) and the application as filed. Even if considering only the pure wording, the translation does not necessarily lead to a different meaning.
Inventive step present (Article 56 EPC).
The stronger a pointer towards the claimed solution, the lower is the threshold for a reasonable expectation of success. Whether there is a reasonable expectation of success depends on the circumstances of the case.
The more unexplored a technical field of research, the more difficult it was to make predictions about its successful conclusion and the lower the expectation of success. The Defendants did not show a pointer to the solution, which would have directed the skilled person from D3 (prior art) to a next step in the direction of the invention claimed in the patent in suit. No arguments presented as to how such a pointer could be derived from the prior art D3.
INFRINGEMENT.
The challenged embodiments directly infringe the patent by making literal use of the teaching of claim 1. (Article 25 UPCA, Article 69 EPC, Protocol on the interpretation of Article 69 )
The infringement is challenged only with regard to feature 1.1 and based on their interpretation of claim 1 as a system claim requiring a developer receiving apparatus. From the Court’s interpretation of claim 1, the developer receiving apparatus itself, and the printer or parts of it, are not subject of claim 1.
Claim 1 states that the developer supply container is ‘mountable’ to a developer receiving apparatus. The skilled person will understand this to mean that the parts of the developer receiving apparatus named in feature 1.1 — the developer receiving portion, the receiving opening and the supported portion — are not claimed to be present.
The decision whether to permit publication should depend on a two step-test: (1) whether the claimant has a legitimate interest in publishing the decision and (2) whether the defendant’s interests outweigh this interest (Art. 80 UPCA).
The Claimant has demonstrated a legitimate interest . In addition to general considerations, it has pointed out that the Defendants have already chosen this communication channel by announcing the underlying proceedings on their US website.
The Claimant has demonstrated that it is necessary to correct the false impression created in the public domain regarding their authorisation to manufacture and sell the challenged products.
Furthermore, the Claimant has convincingly pointed out that the Defendants supply approximately 8,000 customers worldwide, all of whom must be notified.
This would not be feasible through private communication alone.
In the Court’s view, there should be a restriction on the number of public media outlets in which the Claimant is allowed to publish the decision and that the period of publication must be limited.
No order for security granted (Art. 82(2) UPCA, R. 158 RoP)
the Defendants have not provided any justification for making enforcement in this case dependent on the provision of security.
