The Düsseldorf LD issued the first UPC decision on the merits (LD, Düsseldorf, Franz Kaldewei GmbH & Co. KG v. Bette GmbH & Co. KG, 3 July 2024, UPC_CFI_7/2023).
This decision finds that in the targeted UPC states (AU, BE, DK, FR, IT, LU, NL) the patent as granted is revoked but the patent as per the auxiliary request filed by the claimant is valid and infringed.
Infringement was found on a direct and indirect basis.
Key takeaways:
- There is an informative explanation of the reasoning behind the structure of the decision.
- Inventive step is assessed by using the problem-solution approach –although without explicit reference. Validity as per the auxiliary request is assessed as a second step, once the patent as granted has been revoked.
- Prior use defence to infringement must be demonstrated on
country-by-country basis. - Direct infringement found, even in the absence of direct sales, as the offer for sale of infringing products is made on the Internet website of the defendant, referring to local distributors.
- Indirect infringement requires double territoriality in that the offer and/or
delivery must take place in a contracting member state and must be aimed at use of the invention in a contracting member state. Indirect infringement was found in all targeted contracting member states as the infringing products could be purchased by customers in those states. - In both types of infringement, Germany was not targeted by the permanent injunction request.
- Injunction, withdrawal, recall of infringing products and communication of
information ordered under penalty fines, as well as EUR 10,000 provisional
damages. Final damages to be applied after the stage of the communication of information. - Costs of the claim split equally for the revocation counterclaim but not for the infringement action (claimant to bear 15% and defendant to bear 85%).
However, the operative part of the decision referring to added subject-matter appears not to be aligned with the reasoning of the decision.
Gowling WLG
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