UPC CFI 33/2024 – SWARCO Futurit Verkehrssignalsysteme GmbH v STRABAG Infrastructure & Safety Solutions GmbH

Expert Commentary

Full Decision Text

1 Local division Vienna UPC CFI 33/2024 ACT 4261/2024 Decision of the Court of First Instance of the Unified Patent Court, Vienna Local Division relating to European patent 2 643 717 granted on 15/01/2025 Guiding principles: 1. If the allegation is made in the proceedings that the allegedly infringed patent is invalid, the statement of defence must contain a counterclaim for a declaration of invalidity of the patent against the proprietor of the patent in accordance with R 42 RoP. If this is not done, the content of the invalidity defence (here: exceeding the original disclosure) is not to be addressed. 2. The permanent removal from the distribution channels is a separate measure from the recall. It accompanies the recall, whereby removal can only be considered if the infringer has the actual and legal means to do so. The formulation of concrete and sufficiently specific measures must be based on this. 3. Art 80 UPCA leaves it to the discretion of the court whether or not to authorise publication. For such an Order to be issued, the plaintiff's interest in publication must outweigh the possible (adverse) consequences of such publication for the defendant. As a rule, such publication can only be considered if the protection of the plaintiff is not already guaranteed by other measures (see UPC CFI 373/2023 (LK Düsseldorf), decision of 31 October 2024 - SodaStream v. Aarke; UPC CFI 16/2024 (LK Düsseldorf), decision of 14 January 2025 - Ortovox v. Mammut). When exercising discretion, the purposes pursued by Art 80 UPCA (deterrence of future infringers and raising public awareness) must also be taken into account. However, this requires a submission as to what justifies the preventive interest in the specific case of infringement. 4. Although the RoP does not provide for a separate cost rule for intervention, it can be inferred from the principle of R 315.4 RoP that the intervener is also treated as a party with regard to the bearing of costs. In the event that the party supported by it loses - as in the specific case - a proportionate contribution to costs would be justified on the merits in any case if it has caused additional expenses for the winning party through its intervention. In any case, it must bear its own costs if it loses.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 2 Keywords: No action for annulment despite objection of nullity; removal from distribution channel; permission to publish the decision; intervener to bear costs2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 3 : SWARCO Futurit Verkehrssignalsysteme GmbH, Manfred-Swarovsky-Straße 1, 7343 Neutal, represented by: Attorney-at-law MMag. Alexander Koller, NOMOS Rechtsanwälte GmbH, Ledererhof 2, 1010 Vienna Electronic address for service: office@nomos.legal contributor: Patent attorney DI Werner Barger, pA Barger Piso & Partner Patentanwälte, Operngasse 4, 1010 Vienna Defendant: STRABAG Infrastructure & Safety Solutions GmbH, Ignaz-Köck-Straße 19, 1210 Vienna, both represented by:Patent attorney DI Dr Rainer Beetz, LL.M., SONN Patentanwälte GmbH & Co KG, Riemergasse 14, 1010 Vienna electronic address for service: office@sonn.at Intervener: Chainzone Technology (Foshan) Co, Ltd, Chainzone Tech. Industrial Park Taishan Bei Rd, Sanshan Avenue, Nanhai District, Foshan City, Guangdong Province, P.R., 528200, China represented by: Patent attorney DI Bernhard Henhapel, Kliment & Henhapel Patentanwälte OG, Gonzagagasse 15, 1010 Vienna electronic delivery addressoffice@klimenthenhapel.at Lawyer Dr Dominik Göbel Gassauer-Fleissner Rechtsanwälte GmbH, Wollzeile 3/Lugeck 6, 1010 Vienna electronic delivery addressoffice@gassauer.com STREITPATENT: EUROPEAN PATENT 2 643 717 PANEL/CHAMBER: Judicial body of the Vienna local division2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 4 PARTICIPATING JUDGES: This decision was made by presiding judge Dr Schober, legally qualified judges Kupecz and Mlakar and technically qualified judge Schwengelbeck. LANGUAGE OF THE PROCEEDINGS: German SUBJECT: Action for infringement ORAL HEARING: 3.12.2024 BRIEF DESCRIPTION OF THE FACTS: The plaintiff is suing the defendant for infringement of its European patent EP 2 643 717 B1 entitled "Colour-mixing collection optics" (patent in suit). The patent in suit, the grant of which was published on 26 January 2022, was filed on 17 November 2011. The application was published on 26 January 2022 and claims priority from 23 November 2010 (AT 19512010); it is in force in various UPCA member states. The patent in suit relates to a colour and light-mixing collection optic for outdoor imaging display panels for spotlights or signalling, consisting of an LED light source as well as a light guide rod arranged in front of it and a collecting lens. A colour and light mixing converging lens was known from the state of the art according to US 2007/0024971, whereby the mixing is achieved by the special design of the cross-section of the light guide rod with strips and concave indentations. In embodiments, TIR collimators are also provided as converging lenses with a special order in front of the fibre optic rod. A particular disadvantage is the high cost of the complex optical fibre rod and the relatively large longitudinal extension ([0002]). With large LED screens, it is very complex to install individual single-colour LEDs with lens domes in such a way that they are all precisely aligned with each other ([0011]). In principle, light transmission by means of an optical fibre, at one end of which a light source shines in and at the other end of which the emitted light is distributed by an optical system, has been known for a long time. However, this basic system can modified by an enormous number of parameters, resulting in an immense variety of properties and design options ([0020]). Based on the prior art, the invention according to the description of the patent was based on the task of constructing an optical system which mixes the light of different LED crystals of a full- colour or multi-LED completely with each other in such a way that its intensity and direction is maintained in a small space and can then be bundled in a known manner without forming colour differences, colour fringes or colour spots for the viewer, whereby the Order must be inexpensive and small ([0028 and 0032]). To solve the problem, the patent in suit proposes a collection optic with the features of patent claim 1. Patent claim 1 reads: 1. colour and light-mixing collective optics, in particular as a full-colour pixel for outdoor display panels, for spotlights or signalling, consisting of a2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 5 LED light source, as well as a light guide rod arranged in front of it and a converging lens, the LED light source (1) containing a plurality of LED crystals (R, G, B), the light entry area (3) of the light guide rod (2) is ordered in front of the light exit surface of the LED light source (1) and captures light from each LED crystal, wherein the light guide rod (2) extends perpendicular to the entry surface (3) and wherein its cross-section is constant or gradually increases, characterised in that the light exit (4) of the light guide rod (2) is located in the region of the focus (F) of the converging lens (5), in that the latter concentrates the light emerging from the centre point (F) parallel to the axis and concentrates the light emerging from a point (P) of the light outlet (4) to the side of the centre point (F) of the light outlet (4) in parallel in an associated direction (p), in that the lateral surface of the light guide rod (2) is formed from optically highly polished planes which adjoin one another with sharp edges and thus each cross-section has the shape of a polygon, in that the material of the light guide rod (2) is made of a polygonal material, and in that the light guide rod (2) is made of a polygonal material. (2) is free of light-scattering components and that the outline of the light exit (4) of the light guide rod (2) already largely corresponds to the required upside-down light distribution and the light passing through is emitted by the upstream collecting lens (5) in accordance with the optical projection law in the form of the upright outline. Patent claim 1 can be subdivided into the following features: M1 Colour and light-mixing collection optics, in particular as a full-colour pixel for image- and light-mixing applications. outdoor display panels, for spotlights or signalling, consisting of M2 an LED light source, and M3 a fibre-optic rod arranged in front of it and M4 a converging lens, M5 whereby the LED light source (1) contains several LED crystals (R, G, B), M6 the light entry surface (3) of the light guide rod (2) is ordered in front of the light exit surface of the LED light source (1) and M7 light each LED crystal, M8 wherein the optical fibre rod (2) extends perpendicular to the entrance surface (3) and M9 where its cross-section is constant or increases gradually, characterised in that M10 that the light exit (4) of the fibre-optic rod (2) is in the area of the focus (F) of the sample. lens (5) is located, M11 that it focuses the light emitted from the centre point (F) parallel to the axis and the light emitted laterally of the centre point (F) of the light outlet (4) from a point (P) of the light outlet (4) parallel in one of the associated directions (p), M12 that the lateral surface of the light guide rod (2) is from optically highly polished planes which adjoin each other with sharp edges and thus each cross-section has the shape of a polygon, M13 that the material of the light guide rod (2) is free of light-scattering components, and M14 that the outline of the light exit (4) of the light guide rod (2) already largely corresponds to the required upside-down light distribution and the light passing through the upstream converging lens (5) is emitted in the form of the upright outline in accordance with the optical projection law.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 6 Figure 3 below shows a section through an arrangement according to the invention, including the beam path; Figures 4 and 5 illustrate optics according to the invention:2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 7 In a public announcement dated 22 October 2022, the defendant received an order from ASFINAG to replace the existing prismatic variable message signs at the A12, VKP Kundl, RFB Innsbruck, AQ km 22.525 and AQ km 23.007 locations with LED variable message signs by 14 April 2023 and otherwise by 31 August 2023 (enclosure K8). The defendant subsequently installed LED variable message signs (CHAINZONE V1.2 - "Optik Version 2") at the locations subject to the order, which it (undisputedly) purchased from the intervener. APPLICATIONS BY THE PARTIES: The applicant requested, 1. It is established that the sample optics installed in LED display panels of the series of the manufacturer Chainzone (Foshan) Technology Co., Ltd. identified by the serial number 18023020550 infringe patent claims 1, 2, 3, 4, 5, 10 and 14 of the European patent EP 2 643 717 B1. 2. The defendant is ordered, on pain of a penalty payment of up to EUR 100,000.00 to be fixed by the court for each case of non-compliance, to refrain with immediate effect from travelling in Belgium, Germany, Denmark, France, Italy, Luxembourg, the Netherlands, Austria, Sweden and Slovenia Colour- and light-mixing collecting optics, in particular as a full-colour pixel for outdoor display panels, for spotlights or signalling, which consist of an LED light source and a light guide rod arranged in front of it and a collecting lens, wherein the LED light source contains several LED crystals (red, green, blue), the light entry surface of the light guide rod is arranged in front of the light exit surface of the LED light source and captures light from each LED crystal, wherein the light guide rod is arranged in front of the light exit surface of the LED light source and captures light from each LED crystal, wherein the light guide rod is arranged in front of the light exit surface of the LED light source, green, blue), the light entry surface of the light guide rod is ordered in front of the light exit surface of the LED light source and captures light from each LED crystal, wherein the light guide rod extends perpendicular to the entry surface and wherein its cross-section is constant or gradually increases, to offer, on the market, use, import or possess for these purposes, in which the light exit of the light guide rod is in the area of the focus of the converging lens, the converging lens bundles the light emerging from the centre point parallel to the axis and bundles the light emerging from a point on the side of the centre point of the light exit in parallel in one of the associated directions, the lateral surface of the light guide rod is formed from optically highly polished planes which adjoin one another with sharp edges and thus each cross-section the shape of a polygon, that the material of the light guide rod is free of light-scattering components, and the outline of the light exit of the light guide rod already largely corresponds to the required light distribution turned upside down and the light passing through the upstream converging lens is emitted in the form of an upright outline according to the optical projection law; especially if the fibre-optic rod (2) has a length that is a multiple of the diameter of the entry surface (3); or if the LED crystals emit different colours; or if the light source is a full-colour or multi-LED with a number of crystals and/or colours in a common housing; especially if the light source is a full-colour or multi-LED with three crystals in the primary colours red, green and blue, or if the optical fibre cross-section is an equilateral triangle or regular hexagon, square or rectangle;2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 8 and/or if the light exit of the light guide rod is only virtually present and the light guide rod passes directly into the converging lens; in particular in the form of the sample optics installed in LED display panels of the series of the manufacturer Chainzone (Foshan) Technology Co., Ltd. identified by the serial number 18023020550, as shown in the following illustrations: 3. The defendant is ordered, under penalty of a fine of up to EUR 100,000.00 to be determined by the court for each day of delay, to provide the plaintiff within 14 days with information in writing on the origin and distribution channels of the objects referred to in point 2 of the request for a decision, in particular the products infringing the patent in dispute pursuant to point 1, stating • the names and addresses as well as other information necessary or useful for clear identification of all persons involved in their production and distribution, in particular their import into Austria; • the names and addresses of all commercial customers who have purchased these items from the defendant; and • the quantities of these items ordered, received and/or delivered and the prices paid for them by the defendant, whereby copies of the corresponding purchase and sales documents (invoices, delivery notes, etc.) must be submitted as proof of the information, whereby details requiring confidentiality outside the data subject to disclosure may be blacked out. 4. The defendant is ordered, under penalty of a fine of up to EUR 100,000.00 to be determined by the court for each day of delay, to destroy at its own expense within 14 days all items pursuant to item 2 of the request for a decision, in particular all products infringing the patent pursuant to item 1, which are in its direct or indirect possession or ownership; 5. The defendant is ordered, under threat of a penalty payment of up to EUR 100,000.00 to be determined by the court for each day of delay, to recall at its own expense within 14 days all items marketed by it pursuant to item 2 of the request for a decision, in particular all products infringing the patent pursuant to item 1, with reference to their patent-infringing condition and, if necessary, to give an undertaking to the customers, • to refund any fees paid by them, • necessary dismantling, packaging and transport costs, and • to bear the customs and storage costs associated with the return, and to permanently remove them from the distribution channels by having the defendant • takes back the recalled items and destroys them in accordance with point 4 of the request for a decision, or • the destruction of the recalled products at the respective owner. 6. The defendant is obliged to the plaintiff for any damage, including loss of profit, which the plaintiff suffers as a result of actions pursuant to point 2 of the request for a decision.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 9 The amount of damages is to be determined in a procedure for the determination of damages pursuant to R 125 et seq. of the RoP. 7. The defendant is obliged to reimburse the plaintiff for the costs of the legal dispute and other related costs up to the upper limit set by the Board of Directors, whereby the determination of the amount of the costs to be reimbursed is reserved for a cost determination procedure pursuant to R 150 et seq. of the RoP. 8. The defendant is ordered to pay the part of the decision in favour of the action within 8 weeks at its own expense. • each in one issue of the magazines "tti - Traffic Technology International" and "ITS International", each in the text section with normal type as intended for editorial articles, with bold print border, bold print headline, blocked and bold print names of the parties to the proceedings; possibly • in a print medium to be determined at the discretion of the court in a manner determined by the court. The plaintiff additionally requested, pursuant to R 190 RoP, that the defendant be ordered to produce an LED variable message sign supplied by it to ASFINAG, or possibly a component ("display module") thereof with intervention objects installed therein, or an LED variable message sign or component ("display module") thereof from the same series (i.e. labelled with the same serial number). The defendant and the intervener applied, 1. Dismiss the application for the submission of evidence pursuant to R 190 RoP; 2. Dismiss the action; 3. Order the applicant to reimburse the defendant for the costs of the legal proceedings and other related costs up to the upper limit set by the Board of Directors, whereby the determination of the amount of the costs to be reimbursed is reserved for a cost determination procedure pursuant to R 150 et seq. of the RoP. ARGUMENTS OF THE PARTIES: The plaintiff argued that the light-collecting optics installed in the LED variable message signs used by the defendant would interfere with the scope of protection of the disputed patent claims 1 to 5, 10 and 14; all features of claim 1, in particular the disputed features M4 and M10 (converging lens, characterised in that the light exit (4) of the light guide rod (2) in the area of the focus (F) and the converging lens (5)), feature M11 (centre point (F)) and features M12, M13 and M14 are realised in the subject-matter of the interference. Thus, (sub)claims 2 to 5, 10 and 14 of the patent in suit are also infringed. At the hearing on 3 December 2024 the plaintiff added that the light guide should be defined functionally. The light guide ends where there no longer total reflection on all four sides of the lateral surface. Therefore, the focus is precisely on the surface where the green line in Figure 5 (Reply, page 15) ends. As the expert opinion and assessment by Dr Gotschy (enclosure K12) very difficult because it had to be carried on the motorway, the application for the submission of evidence was made. She was not in possession of the object of the intervention and therefore not able to analyse the results of the visual inspection.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 10 The company has now succeeded in experimentally verifying the knowledge gained on the motorway about the infringement of its patent. Feature M11 concerns the inversion of the light emission, whereby it had meanwhile also been possible to prove this inversion according to feature M11 by means of experiments with an identical lens. What had previously been assumed had been confirmed. This test evidence could still be presented. The defendant and the intervener countered that the display panels purchased from the intervener had a large number of LED light sources, each of which contained LED crystals in the basic colours. A fibre-optic rod was ordered in front of each of these LED light sources, which was formed in one piece with a lens. The light entry surface of the light guide rod is ordered in front of the light exit surface of the LED light source, whereby the light of each LED crystal is captured. The light guide rod extends perpendicular to an entry surface. The intervener manufactures two similar optical systems. "Version 1" is an isolated collector optic of a first (larger) size, which can be inserted into a perforated plate or removed from the perforated plate. "Version 2" sent to the IOSB (Fraunhofer Institute of Optronics) in an installed state as part of two display panels; 8 × 16 optical systems were combined in a matrix form on each display panel. Version 2' corresponds to the intervener's optical system supplied by the defendant to ASFINAG, which has an asymmetrical or aspherical lens made from a block of polycarbonate material without visible intermediate surfaces. The intervener's display panels supplied to ASFINAG do not fulfil a large number of the features of claim 1. Purely for reasons of procedural economy, a nullity counterclaim was not filed, although the patent in suit goes beyond the content of the original disclosure in several respects (extension to "lateral surfaces" instead of "all surfaces" or omission of "smooth" in the case of "optically highly polished") and would therefore have to be declared null and void on the basis of Art 138 (1) (c) EPC. Since claim 1 of the patent in suit is not infringed, the dependent claims 2 to 5, 10 and 14 cannot be infringed either. The defendant and the intervener opposed the submission of new comparative measurements at the hearing on 3 December 2024. On the one hand, these were late according to the provisions of the RoP; on the other hand, it would be contrary to a fair trial if this evidence were admitted because there would be no room and no time for verifiability. Overall, the applicant's submission was incomplete and contradictory. There was no evidence of an infringement of the patent in dispute. As objectivised by the IOSB, there was no longer any total reflection behind the blue line, i.e. behind the area where all four surfaces of the light guide rod were no longer optically smooth and highly polished. Thus, the focal position of the object of the intervention had been misinterpreted by the plaintiff. There is no longer any mixing of light after the inclined lateral surface. The actual light mixing takes place in the fibre optic rod. Moreover, the mirror surface is not defined in the patent in suit. Feature M10 was not realised. There is no longer any inversion after the light exit surface from the fibre-optic rod. Feature M11 was to be read with feature M4, which defined nothing other than a spherical lens. However, the intervention object has an aspherical lens, as can be seen from Figure 3 of the IOSB on page 13. The skilled person would understand a highly polished surface to be a special manufacturing method, which the subject-matter of the interference does not fulfil because it a surface manufactured by injection moulding. Features M10 and M14 would require two conditions: Feature M10 defines the focus in the area of the converging lens where an inversion must still take place according to feature M14. If the light distribution in the light-emitting surface is no longer inverted, the light emission is in any case2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 11 not in the area of the focus (F) according to feature M14. However, where the plaintiff sees the focus at the object of intervention, there is no longer any inversion. REASONS FOR THE DECISION: A. The action is admissible and well-founded. The jurisdiction of the local division seised is rightly not in dispute between the parties. The plaintiff is authorised to assert the claims in dispute arising from the patent in suit. B. The defendant and the intervener have not filed a counterclaim for revocation. However, according to R 25 RoP, the statement of defence must contain a counterclaim for a declaration of invalidity of the patent against the proprietor of the patent in accordance with R 42 RoP if the allegation is made that the allegedly infringed patent is invalid. Since no counterclaim for annulment was filed, the content of the related objection to annulment (exceeding the original disclosure) does not need to be addressed. C. 1. The scope of protection of the patent in suit has already been set out in the brief description of the facts. Reference is made to this in order to avoid repetition. 2. Claim 1 of the patent in suit, in particular features M4, M9, M10, M11, M12 and M14 in this claim 1, which are disputed between the parties, require further interpretation: 2.1 Pursuant to Art. 69 EPC in conjunction with the Protocol on its interpretation, the patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. The interpretation of a patent claim does not solely on its exact wording in the linguistic sense. Rather, the description and the drawings must always be taken into account as explanatory aids for the interpretation of the patent claim and not only be used to resolve any ambiguities in the patent claim. Das bedeutet aber nicht, dass der Patentanspruch lediglich als Richtlinie dient und sich sein Gegenstand auch auf das erstreckt, was sich nach Prüfung der Beschreibung und der Zeichnungen als Schutzbegehren des Patentinhabers darstellt (UPC CoA 335/2023, Anordnung vom 26.2.2023 in conjunction with Order of 11.03.2024, GRUR- RS 2024, 2829, headnote 2. and para. 73 - 77 - 10x Genomics v. NanoString; UPC CoA 182/2024, Order of 25.9.2024, para. 82 - Mammut v. Ortovox; see also UPC CFI 7/2024 (LD Düsseldorf), decision of 3 July 2024, ORD 598324/2023 - Franz Kaldewei v. Bette). 2.2 The parties agree and rightly define the competent specialist as a signalling technician with experience in the field of optical signalling systems, whereby the specialist is familiar with the basics of geometric optics, as is the case with a physicist with a bachelor's degree. 2.3 With this in mind, the local division bases its decision on the following understanding of the features of claim 1 of the patent in suit:2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 12 2.3.1 According to the specialist's understanding of the term "converging lens", a parallel light falling on it should initially come together behind the lens in one area of the focus. A converging lens can have different shapes. The skilled person understands a converging lens in particular to be a (simple) spherical lens with an entrance or exit surface in the form of a spherical segment and a corresponding radius of curvature. However, they also know that imaging errors/ aberrations occur with spherical lenses, which can be avoided with aspherically shaped lenses. It is questionable whether the description of the patent in suit contains a (definitional) limitation of this understanding of the skilled person. This is not the case: para [0001] states "...and a converging lens, according to the generic term of claim 1 and US 2007/0024971". In addition to an aspherical lens, US 2007/0024971 also mentions a Fresnel lens. It can therefore be assumed that neither the description nor the US patent support a limitation of feature M4 or the understanding of the skilled person that only spherical converging lenses are to be covered by the patent in suit. The applicant must therefore agree that the skilled person understands the term "converging lens" to mean not only (restrictively) a spherical lens, but also an aspherical lens. A converging lens must be able to concentrate light in a focus - i.e. a focal point - of the lens. For this technical function, it is (also) not absolutely necessary for the lens to be perfectly spherical (see explanations in 2.3.2 on feature M10) 2.3.2 This understanding can also be taken from feature M10. Feature M10 is defined in such a way that the light exit (4) of the light guide rod (2) is located in the area of the focus (F) of the converging lens (5). In principle, a converging lens must be able to concentrate the light in a focus - i.e. a focal point - of the lens. However, due to the possible imaging errors, real converging lenses are not usually a perfect focus/focal point in the sense of a geometric point of the lens, as the defendant attempts to argue. In line with this, the patent in suit in the wording of feature M10 therefore obviously refers to a "region of the focus (F)" of the converging lens (5). 2.3.3 The centre point (F) specified in feature M11 is the centre point of the light exit (4) from the light guide rod (2). According to feature M10, the light exit (4) should only be located in the area of the focus (F) of the converging lens (5) and therefore not necessarily exactly in a perfect focus/focal point of the converging lens (see [0048], as well as Figure 3 and Figure 4 with coloured marking by the applicant / features M10 and M11). This is expressed by the different designations "focus" on the one hand and "centre point" on the other. The feature M11 is thus to be understood in no other way than that the light emerging from the centre of the light exit (4) of the light guide rod (2) is bundled parallel to the axis and the light emerging from a point (P) of the light exit (4) to the side of the centre (F) of the light exit (4) is bundled parallel in an associated direction (p) (not directions[!]) (see [0048], as well as Figure 3, reference sign (p)). It is therefore understandable that the light exit (4) is projected to infinity according to the laws of optics, whereby each point (P) of the light exit (4) is imaged in a direction (p) determined according to the laws of optics, irrespective of the direction of the individual light rays emerging from this point (as described in [0048]).2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 13 2.3.4 According to features M12 and M13, the cladding surface of the light guide rod (2) has the shape of a polygon and is formed from optically highly polished planes, whereby its material is free of light-scattering rough components. This is in line with the understanding of an expert who assumes that the effect of a light guide or light guide rod is based on the so-called "total reflection" of light on its inner surface. The polygonal shape, the cross-section of which is constant or gradually increases according to feature M9, and the optically highly polished planes (without scattering components) ensure that the light from the LED light source (1) is guided by multiple lossless total reflection on the walls of the light guide rod (2) up to its light outlet (4) (see [0034] and [0052]). Such "guidance" of the light in the sense of an optical fibre would no longer be possible in the case of scattering components in the cladding surface and its planes. The highly polished planes (without scattering components) mentioned in feature M12 and the course of the cross-section thus also functionally define the end of the light guide rod and the light outlet (4) mentioned in features M10 and M14. Contrary to the defendant's assertion, the skilled person does not assume for features M12 and M13 that or how the light guide rod is or was actually "highly polished" in the literal sense during its manufacturing process. The person skilled in the art knows that a polishing process is not the only way to an optically polished or a correspondingly smooth and thus a specular/highly reflective surface of the light guide rod. The point of the patent application is that the cladding surface is so smooth that it reflects the light (completely/totally) as it passes through the light guide rod. As mentioned above, the end of the highly polished plane (without scattering components) and the end of the associated total reflection of the light on the smooth surface defines the light exit in a functional manner. The patent in suit explains that the light exit (4) can only be present virtually (see the embodiment example according to Figure 4), with the material extending up to the exit dome (6) of the converging lens (2), the focus of which lies in the virtual light exit (see [0055] and para. [0053]: In a further embodiment of the invention, the light exit (4) can only be present virtually, the converging lens (5) connects directly and integrally to the light guide rod 2). In [0055] of the patent specification, the following explanation can also be found with regard to the virtual light exit and subsequent reflective side surfaces: "An inclined surface (8) is attached to the top of the light guide rod (2), which produces a mirror image of the virtual light exit immediately adjacent above, and the side surfaces (8a) of the light guide rod are also continued, whereby they also produce an adjacent mirror image of the virtual light exit."2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 14 According to the description of the patent in suit, a scattering structure or surface as a possible embodiment - contrary to the defendant's view - is not to be understood as part of the light guide rod, but as an optically effective structure in the area of the converging lens (5) (see [0054] and also [0053] and Figure 4 / feature M13). 2.3.5 Feature M14, which the skilled person reads in conjunction with feature M10, represents an inherent feature of the given optics based on the laws of geometrical optics (as also explained by the intervener on page 5 of the intervener's statement), taking into account the light exit (4) of the light guide rod (2) and the converging lens (5). It can be seen that - as long as the light exit is in the focal area of the converging lens - the outline of the light exit (4) of the light guide rod (2) largely corresponds to the required light distribution turned upside down. The light passing through the light outlet (4) is emitted through the upstream converging lens (5) in accordance with the optical projection law in the form of the upright outline of the light outlet (4). As described in the patent specification in [0048] with reference to Figure 3 and a point P at the light outlet (4), the light outlet (4) is projected to infinity according to the laws of optics, whereby each point (P) of the light outlet (4) is projected in a direction (p) determined according to the laws of optics. The light distribution of the optical order thus results in a uniformly bright, equally coloured, upside-down area in the shape of the light outlet (4). 3. Based on this understanding of the features of claim 1 of the patent in suit, the CHAINZONE V1.2 collection optics ("Optics Version 2"), which the defendant supplied to ASFINAG, a patent infringement. All features of claim 1 are utilised in this collection optic. 3.1 The CHAINZONE V1.2 collection optics ("Optics Version 2") challenged by the plaintiff is a collection optics which generates a pixel of a display field of an outdoor display panel for signalling (see Figures 2 and 3 of the statement of claim). In the process, coloured or white pixels/pixels corresponding to feature M1 are created for a viewer by additive colour mixing of the light emitted by an LED light source from the RGB colour space (red, green, blue) (see Figure 3 of the application).2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 15 The collection optics (indisputably) have an LED light source and a light guide rod arranged in front of it corresponding to features M2 and M3 (see Figure 3 in conjunction with Figure 4 in the statement of claim as well as the statement of defence including Annex S 13, Figure 5).2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 16 In addition to the LED light source and the light guide rod arranged in front of it, the collector optic also includes a converging lens, whereby, with reference to the above interpretation and the understanding of the person skilled in the art, it is irrelevant whether this is a spherical or an aspherical lens. The collection optics in question thus consists of an LED light source, a light guide rod and also a converging lens, as indicated in features M2 to M4. The light guide rod of the collecting optics extending perpendicular to the light entry surface is arranged in front of the light exit surface of the LED light source with several coloured LED crystals (red, green, blue), whereby the light entry surface also captures light from each LED crystal (RGB), as stated in features M5 to M8 (see also Figures 3 and 4). 3.2 The light guide rod obviously has a rectangular - and thus polygonal - cross-section with sharp-edged and smooth total reflecting planes which correspond to the highly polished planes mentioned in the claim (cf. Figure 4 of the application and also Figure 5 of Annex S13 to the statement of defence / feature M12). The skilled person recognises that the light guide rod extends along the highly polished lateral surface without a light-scattering structure as a result of a rough surface (cf. blue line in Figure 5 of Annex S13 of the Reply and the blue line in Figures 5 and 6 of Reply / feature M13). Where the cross-section no longer (=constantly) or (only) gradually increases and the light-scattering structure begins in the form of a rough, no longer smooth surface of the material) and thus the total reflection ends at at least one plane (cf. left end of the blue line in Figure 5 of the Reply), the light guide rod ends and the light exits the light guide rod. Thus, the light exit is located where a green dotted line is drawn in Figure 5 of the Reply (see features M10 and previous explanations on the interpretation and understanding of the skilled person in connection with Figure 4 of the patent in suit, together with the associated text [0053] and [0055]). The light exit thus corresponds to a virtual light exit, as described the patent specification in connection with Figure 4 and the associated text (see [0055] of the patent specification: "Following the light guide rod (2), an inclined surface (8) is attached to the upper side, which produces a mirror image of the virtual light exit immediately adjacent above, and the side surfaces (8a) of the light guide rod are also continued, whereby they also produce an adjacent mirror image of the virtual light exit").2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 17 Contrary to the defendant's opinion, the area adjoining the fibre-optic rod with a roughened scattering structure (see red outline in Figure 6 of the Reply) is no longer to be regarded as part of the fibre-optic rod. Rather, this is a structure adjacent to the fibre-optic rod. The fibre-optic rod itself is thus free of light-scattering components in order to guide light on its four highly polished walls as a lateral surface by means of total reflection up to its exit surface - and not to scatter it even before the exit surface (cf. previous interpretation of feature M10 in conjunction with feature M12 and in particular feature M13).2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 18 3.3 Consequently, the light exit of the CHAINZONE V1.2 collection optics in dispute is located at the end of the gradually increasing polygonal polished lateral surface (marked in green in Figures 5 to 7 of the Reply), in other words at the end of the light guide rod (cf. interpretation). This is a virtual light outlet, namely one which is covered by claim 1 (cf. [0055] and the above explanations on the interpretation of the term "light exit"). Based on this, the cross-section of the light guide rod of the CHAINZONE V1.2 collection optics dispute - viewed from the light entry into the light guide rod - only increases gradually (and not abruptly due to an edge [feature M9 refers to a claimed "or" feature alternative to a constant cross-section]). The light emission is therefore not located at the end of the roughened and thus light-scattering area (outlined in red in Figure 6 of the Reply) adjacent to the highly polished surface of the light guide rod, as the defendant attempts to portray it. Furthermore, it also follows from this that the light exit of the highly polished fibre optic rod is located in the area of the focus of the converging lens, whereby the plaintiff's statements in its Reply with reference to the beam path or optical geometry shown in Figure 8 must be accepted (feature M10). This also applies with regard to features M11 and M14, which are realised with the collection lens in dispute due to the aforementioned optical conditions (see Figures 7, 8 and 9 of the Reply, which are each based on Figure 18 of the Statement of Defence).2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 19 3.4 As correctly stated by the plaintiff in its Reply, based on the simulations commissioned by the defendant (by IOSB), there is no (longer) a dispute between the parties as to where the focal area of the converging lens lies. This is indicated by the red circle in Figure 8 above. This corresponds to the caption of the (original) Figure 18 on page 13, which reads: "...The "ray tracing" simulation shows that the focal areas are inside the fibre optic rod..." (where the light exit of the fibre optic rod is not correctly shown/"defined" by the defendant at the location of the red line). After the PANEL has explained above that the (virtual) light exit is located at the end of the light guide rod (marked green in Figures 7 and 8), it is therefore given that the light exit is in the area of the focus of the converging lens. According to the optical law of projection, the light is emitted through the upstream converging lens in the form of the upright outline of the light exit. It also follows from this that a point located in the lower area of the outline of the light exit of the light guide of the CHAINZONE V1.2 collecting optics (just like point (P) at the light exit according to Figure 3 of the patent specification) projects in a direction from below to diagonally above and thus upside down in a direction that corresponds to the direction (p) in Figure 3 of the patent specification, according to the optical laws. With the light exit of the light guide rod in the area of the focus of the converging lens (see feature M10) shown in green in Figures 7 and 8 above, this means that the outline of the light exit already largely corresponds to the required upside-down light distribution, whereby the light passing through the upstream converging lens is emitted in the form of the upright outline according to the optical projection law; no different from what is indicated in (inherent) feature M14. The intervener does not take into account in its rejoinder that the claim/patent in suit does not exclude the possibility that further optical structures may be present after the (virtual) light exit from the optical fibre rod, which may also reflect the light (as discussed above with reference to [0055]). If it is assumed - based on the assertions of the intervener (CH3) supported by additional simulations - that this would be the case with the infringing device, it does not follow that there is no light exit at the end of the fibre-optic rod within the meaning of the claim; the local division has already explained that this is the case. 3.5 As a result, the CHAINZONE V1.2 collection optics in dispute has all the features of the collection optics according to claim 1 of the patent in dispute. This means that use is also made of the features mentioned in (sub)claims 2 to 5 and 10 and 14 (cf.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 20 previous statements, which apply here in the same way). Both the defendant and the intervener have themselves argued that claims 2 to 5, 10 and 14 dependent claims of claim 1, which means that no (substantive) objections to the infringement of these sub-claims have been raised. 4. The defendant has indisputably committed acts of infringement under Art 25 lit a UPCA. It installed the infringing LED variable message signs (CHAINZONE V1.2) produced by the intervener at the locations A12, VKP Kundl, RFB Innsbruck AQ km 22.525 and AQ km 23.007 on the basis of the order from ASFINAG and thus them on the market. With regard to the resulting legal consequences requested by the plaintiff, it must be noted in advance that the defendant and the intervener focussed exclusively on contesting the non- infringement of the patent in suit and did not make any substantiated submissions on the individual legal consequences requested. Against this background, the following legal consequences explained in detail are justified: 4.1 Determination of the patent infringement (point 1. of the claim): The finding of patent infringement is based on Art 64 para 2 lit a UPCA. The finding of patent infringement forms the basis for the court to exercise its powers under Art 56 et seq. of the UPCA (cf: Luginbühl/Hüttermann/Klein, Unitary Patent System, Art 64 para. 8; Til- mann/Plassmann/Steininger, Unitary Patent/Unified Patent Court, para. 13 para. 19; see also: UPC CFI 210/2023 (LK Mannheim), decision of 22 November 2024 - Panasonic v. OPPO). 4.2 Injunction (point 2 of the claim): Taking into account the circumstances of the case, the plaintiff has a right to prohibition of the continuation of the infringement pursuant to Art 25 lit a UPCA and/or Art 26 UPCA in conjunction with Art 63 para 1 UPCA. With regard to the requested injunction, it must be taken into account that the exclusive right is the core of the essence of patent law (Art 25 UPCA). Refraining from an injunction can only be considered in justified exceptional cases (see Tilmann/von Falck/Tilmann, Einheitspatent, Unified Patent Court, Art 63 UPCA, para. 29 et seq.), whereby such reasons are not apparent here. The defendant has not denied that it obtained the LED display panels at issue from the intervener. Even if the plaintiff has not demonstrated a placing on the for each Member State of the contract applied for here, the plaintiff's submission is sufficient in any case if the defendant does not deny the placing on the market in more concrete terms. By offering and/or placing on the market, the defendant has a rebuttable presumption that it also imports and/or possesses the accused embodiment for the purpose of offering, placing on the market or using it. No circumstances are apparent, nor have any been presented, that would argue in favour of the disproportionate nature of the injunction requested. The defendant may not continue to offer or distribute in the contracting member states covered by the action. The same applies to use, importation and possession.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 21 4.3 Request for information (point 3. of the claim): The decision to provide the requested information is based on Art 25 lit a, Art 26 in conjunction with Art 67 para 1 UPCA. The information is necessary to calculate the damages and to assess whether any other persons/companies (intermediaries, importers, etc.) were involved in the acts of infringement and/or have committed such acts themselves. 4.4 Destruction (point 4. of the claim): The Order of destruction is based on Art 25 li a UPCA in conjunction with Art 64 para 2 lit e and para 4 UPCA. The destruction is intended to reliably prevent the products from entering or re-entering the market (Tilmann/von Falck/Tilmann, Unitary Patent, Unified Patent Court, Art 64 UPCA, para. 33). In any case, the relief sought in this regard is only aimed at destroying the objects of interference directly or indirectly in the possession or ownership of the defendant, which means that the measure is not disproportionate. 4.5 Recall and removal from the distribution channels (point 5. of the claim): The requested recall from the distribution channels is justified with regard to the directly infringing products (cf. Art 25 lit a UPCA in conjunction with Art 64 para 2 lit b and para 4 UPCA). The wording of the application is also not objectionable from the point of view of certainty. The decision regarding the final removal from the distribution channels has its basis in Art 25 lit a UPCA in conjunction with Art 64 para 2 lit d and para 4 UPCA. According to the wording of the UPCA, permanent removal from the distribution channels is a separate measure from recall. It accompanies the recall, whereby removal can only be considered if the infringer has the factual and legal means to do so. The formulation of concrete and sufficiently specific measures must be based on this (see UPC CFI 7/2024 (LK Düsseldorf), decision of 3 July 2024 - Kaldewei v. Bette). The wording of the claim in this regard takes this into account to a sufficient extent. 4.6 Threat of a penalty payment: The threat of a penalty payment in relation to the second to fifth heads of claim raises no objections (Article 63(2) UPCA), not even up to this amount. This also applies from the point of view of proportionality. The threat of injunctive relief, information, removal, refusal and recall is based on Art 82 (1) and (4) UPCA, R 354.3 RoP (UPC CFI 7/2023 (LK Düsseldorf), decision of 3 July 2024, p. 31, F. 5 - Kaldewei v. Bette). The threat of a penalty payment gives the local division the necessary flexibility to take into account the circumstances of the individual case, including the behaviour of the infringer, in the event of an infringement. On this basis, an appropriate periodic penalty payment can be imposed in accordance with Art 82 (4) sentence 2 UPCA in conjunction with R 354.4 RoP. 4.7 Determination of liability for damages on the merits (point 6 of the claim): Art 68 (1) UPCA allows the award of damages the merits. Based on the circumstances of this case, the defendant could and should have recognised with due care that it was infringing the patent in dispute with the intervener's subject matter. This has been the case at least since the action in question was brought.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 22 4.8 Publication (point 8. of the application): Art 80 UPCA leaves it to the discretion of the court whether or not to authorise publication. It must be taken into account that publication also contains an additional sanction element. For such an Order to be issued, the plaintiff's interest publication must outweigh the negative consequences for the defendant. As a rule, the granting of a publication is only possible if the protection of the plaintiff is not already guaranteed by other measures (see UPC CFI 373/2023 (LK Düsseldorf), decision of 31 October 2024 - SodaStream v. Aarke). When exercising discretion, however, the purposes pursued by Art 80 UPCA of deterring future infringers and raising public awareness must be taken into account. The preventive interest of the patent proprietor (= plaintiff), which goes beyond the actual case of infringement, must be taken into account when weighing up the interests of the parties to the proceedings (see Hoppe in Luginbühl/Hüttermann, Unitary Patent System, UPCA Art 80 para. 19). However, the plaintiff has not put forward any reasons and/or no such reasons are apparent that make publication in the sense of the aforementioned principles necessary. The plaintiff has only justified the publication obligation by stating that the relevant public should be informed and educated about patent infringement. However, it leaves open why this would be necessary in the specific case, in particular due to which preventive interest. In view of this and from the point of view of proportionality, the remedies already granted against the defendant under Art 64 (2) UPCA are therefore sufficient. 5. Submission of evidence: Based on the above, the plaintiff was able to prove the infringement of the patent in dispute. The submission of an LED traffic sign and/or a corresponding component thereof supplied by the defendant to ASFINAG was not necessary, also because the subject matter of the infringement was not in dispute between the parties. D. Basic cost decision: Pursuant to Art 69 (2) UPCA in conjunction with R 118.5 RoP, a basic decision on costs is to be made. Since the defendant has been unsuccessful with regard to the action - with the exception of the (not particularly significant) request for publication - it is justified to order it to pay the plaintiff's costs in this respect on the merits. The determination of the upper limits for reimbursable representative costs is based on the decision of the Administrative Committee on the upper limits of reimbursable costs of 24 April 2023 (D - AC/10/24042023 D). The question is to what extent the intervener must also reimburse the plaintiff's costs on the merits: According to R 315.4 RoP, the intervener is to be treated as a party. Although the RoP does not provide for a separate rule on the bearing of costs for the intervener, it can be inferred from the principle of R 315.4 RoP that the intervener is also treated as a party with regard to the bearing of costs (see Greiner-Wittner; Werner in Luginbühl/Hüttermann, Einheitspatentsystem, RoP R 315 para. 41; Plassmann/Dorn in Tilmann/Plassmann, Einheitspatent Unified Patent Court, R 315 RoP para. 23).2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 23 In the event that the party supported by it loses - as in the specific case - a proportionate contribution to costs would be justified the merits any case if it has caused additional expenses for the winning party through its intervention. In any case, it must bear its own costs if it loses. In the specific case, the intervener's statement in intervention of 19 August 2024 caused the plaintiff relatively little effort because the written procedure had already been concluded for her at that time. The plaintiff had submitted her Reply on the same day. The plaintiff therefore only dealt with the content of the intervener's defence at the oral hearing. This circumstance and the fact that the intervener's and the defendant's arguments were very similar in content, which limits the additional effort for the plaintiff, would principle indicate that the intervener should bear 20% of the plaintiff's costs; 80% of the plaintiff's costs should be borne by the defendant. Should there be arguments that would indicate a different allocation, these could still be presented in any cost determination proceedings.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 24 DECISION: 1. It is established that the collection optics installed in LED display panels of the series of the manufacturer Chainzone (Foshan) Technology Co. Ltd. identified by the serial number 18023020550 infringe patent claims 1, 2, 3, 4, 5, 10 and 14 of the European patent EP 2 643 717 B1. 2. The defendant is ordered, on pain of a penalty payment of up to EUR 100,000.00 to be fixed by the court for each case of non-compliance, to cease and desist with immediate effect in Austria, Belgium, Denmark, France, Germany, Italy, Luxembourg, the Netherlands, Slovenia and Switzerland from Colour and light-mixing collecting optics, in particular as a full-colour pixel for outdoor display panels, for spotlights or signalling, consisting of an LED light source and a light guide rod arranged in front of it and a collecting lens, wherein the LED light source contains several LED crystals (red, green, blue), the light entry surface of the light guide rod is arranged in front of the light exit surface of the LED light source and captures light from each LED crystal, wherein the light guide rod is arranged in front of the light exit surface of the LED light source and captures light from each LED crystal, wherein the light guide rod is arranged in front of the light exit surface of the LED light source and captures light from each LED crystal, green, blue), the light entry surface of the light guide rod is ordered in front of the light exit surface of the LED light source and captures light from each LED crystal, wherein the light guide rod extends perpendicular to the entry surface and wherein its cross-section is constant or gradually increases, to offer, on the market, use, import or possess for these purposes, in which the light exit of the light guide rod is in the area of the focus of the converging lens, the converging lens bundles the light emerging from the centre point parallel to the axis and bundles the light emerging from a point on the side of the centre point of the light exit in parallel in one of the associated directions, the lateral surface of the light guide rod is formed from optically highly polished planes which adjoin one another with sharp edges and thus each cross-section the shape of a polygon, that the material of the light guide rod is free of light-scattering components, and the outline of the light emission of the light guide rod already largely corresponds to the required light distribution turned upside down and the light passing through the upstream converging lens is emitted in the form of an upright outline according to the optical projection law; especially if the fibre-optic rod (2) has a length that is a multiple of the diameter of the entry surface (3); or if the LED crystals emit different colours; or if the light source is a full-colour or multi-LED with a number of crystals and/or colours in a common housing; especially if the light source is a full-colour or multi-LED with three crystals in the primary colours red, green and blue, or if the optical fibre cross-section is an equilateral triangle or regular hexagon, square or rectangle; and/or if the light exit of the light guide rod is only virtually present and the light guide rod passes directly into the converging lens; in particular in the form of the sample optics installed in LED display panels of the series of the manufacturer Chainzone (Foshan) Technology Co., Ltd. identified by the serial number 18023020550, as shown in the following illustrations:2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 25 3. The defendant is ordered, under penalty of a fine of up EUR 100,000.00 to be determined by the court for each day of delay, to provide the plaintiff within 14 days with information in writing on the origin and distribution channels of the objects referred to in point 2 of the request for a decision, in particular the products infringing the patent in dispute pursuant to point 1, stating • the names and addresses as well as other information necessary or useful for clear identification of all persons involved in their production and distribution, in particular their import into Austria; • the names and addresses of all commercial customers who have purchased these items from the defendant; and • the quantities of these items ordered, received and/or delivered and the prices paid for them by the defendant, whereby copies of the corresponding purchase and sales documents (invoices, delivery notes, etc.) must be submitted as proof of the information, whereby details requiring confidentiality outside the data subject to disclosure may be blacked out. 4. The defendant is ordered, under penalty of a fine to be determined by the court of up to EUR 100,000.00 for each day of delay, to destroy at its own expense within 14 days all items pursuant to item 2 of the request for a decision, in particular all products infringing the patent pursuant to item 1, which are in its direct or indirect possession or ownership; 5. The defendant is ordered, on pain of a penalty payment of up EUR 100,000.00 to be determined by the court for each day of delay, to recall at its own expense within 14 days all items marketed by it pursuant to item 2 of the request for a decision, in particular all products infringing the patent pursuant to item 1, with reference to their patent-infringing condition and, if necessary, to give an undertaking to the customers, • to refund any fees paid by them, • necessary dismantling, packaging and transport costs, and • to bear the customs and storage costs associated with the return, and to permanently remove them from the distribution channels by having the defendant • takes back the recalled items and destroys them in accordance with point 4 of the request for a decision, or • the destruction of the recalled products at the respective owner. 6. The defendant is obliged to compensate the plaintiff for any damage, including loss of profit, which the plaintiff has suffered or will suffer in the future as a result of actions pursuant to item 2 of the request for a decision, whereby the determination of the amount of damages is reserved for proceedings to determine damages pursuant to R 125 et seq. of the RoP. 7. The request that the defendant be ordered to pay the part of the opposing decision granting the action within 8 weeks at its own expense. • each in one issue of the magazines "tti - Traffic Technology International" and "ITS International", in each case in the text section with normal type as intended for editorial articles, with bold print border, bold print headline, blocked and bold print names of the parties to the proceedings, in eventu2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 26 • in a print medium to be determined at the discretion of the court in a manner determined by the court to be published is rejected. 8. The defendant and the intervener are obliged in principle to reimburse the plaintiff for the costs of the legal dispute and other related costs up to the upper limit set by the Administrative Council, whereby the determination of the amount of the costs to be reimbursed is reserved for cost determination proceedings pursuant to R 150 et seq. of the RoP. Issued in Vienna, 15 January 2025 NAMES AND SIGNATURES Presiding judge Dr Schober Walter signed by Digital Walter Schober Schober Date: 2025.01.15 15:01:14 +01'00' Legally qualified judge Kupecz András Digitally signed from András Ferenc Ferenc. Kupecz Date: 2025.01.15 Kupecz 15:07:28 +01'00' Legally qualified judge Mlakar MOJCA Digitalno podpisal MOJCA MLAKAR MLAKAR Date: 2025.01.15 15:14:34 +01'00' Technically qualified judge Schwengelbeck Uwe Digitally signed by Uwe Schwenge Schwengelbeck lbeck Date: 2025.01.15 16:17:51 +01'00' for the Deputy Registrar Mag. Stüber Katrin-Julia Digitally signed by Katrin-Julia Stüber Stüber Date: 2025.01.15 16:51:19 +01'00'2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB 27 INFORMATION ON THE APPOINTMENT: An appeal against this decision may be lodged with the Court of Appeal within two months of service of the decision by any party whose applications were unsuccessful in whole or in part (Art 73.1 UPCA, R 220.1 (a), 224.1 (a) RoP). INFORMATION ON ENFORCEMENT: Information on enforcement (Art 82 UPC Agreement, Art 37(2) EPGS, R 118.8, 158.2, 354, 355.4 RoP): A certified copy of the enforceable decision is issued by the Deputy Registrar on application by the enforcing party, R 69 RegR.2025-01-16 LD Vienna UPC CFI 33-2024 ORD 2646-2025 ORD 2647-2025 en-GB

Key Holdings

• An invalidity defence must be accompanied by a counterclaim for a declaration of invalidity of the patent in accordance with R 42 RoP; otherwise, the content of the invalidity defence will not be addressed.
• Permanent removal from distribution channels is a distinct measure from recall, accompanying it, and is only applicable if the infringer has the actual and legal means to execute it.
• The court has discretion under Art 80 UPCA to authorize publication of a decision, requiring the plaintiff's interest in publication to outweigh potential adverse consequences for the defendant, and typically only if other protective measures are insufficient.
• An intervener is treated as a party regarding costs (R 315.4 RoP); if the supported party loses, the intervener must contribute proportionately to costs if they caused additional expenses for the winning party, and must bear their own costs if they lose.
• The interpretation of a patent claim (Art 69 EPC) must consider the description and drawings as explanatory aids, not merely the exact linguistic wording, to determine the scope of protection.

Tags

• Costs
• Counterclaim
• Destruction
• Information Order
• Infringement
• Injunction
• Publication of Decision
• Recall

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