UPC CFI 338/2024 – bellissa HAAS GmbH v Windhager GmbH, Johann Windhager, Stefan Windhager

Expert Commentary

Full Decision Text

1 Local Division Mannheim UPC CFI 338/2024 Decision HEADNOTE S: of the Court of First Instance of the Unified Patent Court, issued on: 12 September 2025 concerning EP 2 223 589 1. If the design of a patented product according to the invention is specifically designed so that its components can be easily assembled at the place of use of the product without the addition of further objects, the mere offering or supplying of all components already constitutes a direct patent infringement within the meaning of Art. 25(a) UPC Agreement. 2. If a patent-protected product consists of at least two identical, coordinated components which, according to their design, are intended to be assembled into the patent-protected product without the addition of further objects, the individual sale of such a component generally constitutes a direct patent infringement within the meaning of Art. 25UPC Agreement if the possibility of assembly is indicated or is otherwise obvious. KEYWORDS: Distinction between direct and indirect patent infringement; offering and supplying components Claimant bellissa HAAS GmbH - Birkenstraße 22 - 88285 - Bodnegg-Rotheidlen - DE represented by Lenz Bernecker DEFENDANT 1) Windhager GmbH - Industriestraße 2 - 5303 - Thalgau - AT represented by Matthias Geitz2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 2 2) Johann Windhager - Industriestraße 2 - 5303 - Thalgau - AT represented by Matthias Geitz 3) Stefan Windhager - Industriestraße 2 - 5303 - Thalgau - AT represented by Matthias Geitz PATENT IN CONTENTION: European Patent No. EP 2 223 589 PANEL: Mannheim local division PARTICIPATING JUDGES: This decision was issued by Presiding Judge Prof. Dr. Tochtermann, legally qualified judge and judge- rapporteur Böttcher, legally qualified judge Kupecz and technically qualified judge Tilmann. LANGUAGE OF THE PROCEEDINGS: German SUBJECT MATTER: Infringement action and counterclaim for annulment ORAL HEARING: 18 July 2025 BRIEF DESCRIPTION OF THE FACTS: 1. The claimant is suing the defendant for alleged direct, or alternatively indirect, infringement of European patent EP 2 223 589 B1 ("patent in suit") relating to a flower bed edging with a lockable metal strip. The notice of the grant of the patent in suit, which was filed on 11 February 2010 claiming priority from a German patent application dated 25 February 2009, was published on 30 October 2013. The claimant is the sole registered owner of the patent in suit, which is in force in Germany, Austria and Luxembourg (Annexes K 2.1 to K 2.3). For these UPC Agreement member states, the claimant is seeking an injunction, recall/final removal from distribution channels, destruction,2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 3 information and publication of the judgment, and seeks a declaration of liability for damages. 2. Patent claim 1 reads as follows in the German language of the proceedings of the patent in suit: "Border for flower beds and grassland areas consisting of at least two sheet metal strips that can be connected to each other at the front, which are flanged at least on the upper longitudinal side and form connecting ends (2, 3) that are inserted into each other in a mutually overlapping manner, wherein one connecting end is designed as a tongue (4) that engages in a receiving slot (16) arranged in the opposite connecting end, characterised in that a receiving slot (16) arranged in the flange of one connecting end (3) can be inserted onto the tongue (4) at the other connecting end (2) in a direction perpendicular to the longitudinal extension of the sheet metal strip (6). 3. The first defendant is part of the Windhager group of companies. Its product portfolio includes goods in the areas of gardening, insect protection, pest control and sun protection. The second and third defendants are its managing directors. 4. Defendant 1 offers flower bed edging on its website https://www.windhager.eu/at under the name "lawn and design edging" (see Annexes K3.1 to Annexes K3.10). 5. Settlement talks between the parties prior to the court proceedings and after the oral hearing have failed. On 9 November 2022, the claimant unsuccessfully issued a warning to the defendants jointly at the business address of defendant 1 for patent infringement in Germany (see Annex LS 3). APPLICATIONS OF THE PARTIES 6. The claimant requests in its statement of claim: 1. The first defendant, the second defendant and the third defendant are ordered to refrain from manufacturing, offering, marketing, using or importing or possessing for the aforementioned purposes a product with the following characteristics in the territory of the contracting member states of Germany, Austria and Luxembourg: Borders for flower beds and grassland areas consisting of at least two sheet metal strips that can be connected to each other at the front, which are flanged at least on the upper long side and form connecting ends (2, 3) which are inserted into each other in an overlapping manner, one connecting end being designed as a tongue (4) which engages in a receiving slot (16) arranged in the opposite connecting end, characterised in that a receiving slot (16) arranged in the flange of one connecting end (3) can be pushed onto the tongue (4) at the other connecting end (2) in the vertical direction2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 4 to the longitudinal extension of the sheet metal strip (6) onto the tongue (4) at the other connecting end (2). 2. Alternatively: The first defendant, the second defendant and the third defendant are ordered to refrain from offering or supplying sheet metal strips suitable for use in the following product to customers in the territory of the contracting member states of Germany, Austria and Luxembourg for use in the said territory: Borders for flower beds and grassed areas consisting of at least two sheet metal strips that can be connected to each other at the front, which are flanged at least on the upper long side and form connecting ends (2, 3) which are inserted into each other in an overlapping manner, one connecting end being designed as a tongue (4) which engages in a receiving slot (16) arranged in the opposite connecting end, characterised in that a receiving slot (16) arranged in the flanging of one connecting end (3) can be inserted onto the tongue (4) at the other connecting end (2) in a direction perpendicular to the longitudinal extension of the sheet metal strip (6). 3. The first defendant, the second defendant and the third defendant are ordered, at their own expense, a. recall the products referred to in point 1 and, alternatively, point 2 from the distribution channels; b. to permanently remove the products referred to in point 1 and, alternatively, point 2 from the distribution channels; c. to destroy the products referred to in point 1 and, alternatively, point 2; alternatively, to eliminate the patent-infringing characteristics of the products referred to in point 1 and, alternatively, point 2. 4. The first defendant, the second defendant and the third defendant are ordered to provide the claimant with information about: a. the origin and distribution channels of the products referred to in point 1 and, alternatively, point 2, and b. the quantities produced, manufactured, delivered, received or ordered and the prices paid for the products referred to in point 1 and, alternatively, point 2, and c. the identity of all third parties involved in the manufacture or distribution of the products referred to in point 1 and, alternatively, point 2. 5. It is hereby determined that defendant 1, defendant 2 and defendant 3 shall compensate the claimant for all damages incurred and to be incurred as a result of the actions described in section 1 and, alternatively, section 2. 6. In the alternative: It is hereby determined that defendant 1, defendant 2 and defendant 3 must surrender the profits.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 5 7. In the further alternative: It is hereby determined that the first defendant, the second defendant and the third defendant must pay compensation. 8. The plaintiff is permitted to announce and publish the decision in whole or in part in public media (print media, electronic media, radio, television) at the defendant's expense. 9. Defendant 1, Defendant 2 and Defendant 3 are ordered to pay a penalty of up to EUR 250,000.00 to the court for each violation of the orders in points 1 to 4. 10. The first defendant, the second defendant and the third defendant shall bear the costs of the legal dispute. 7. In its reply, the claimant requests the following in relation to the infringement action in applications I.1 and I.2: I.1. that the defendants be ordered to comply with claim 1 of the statement of claim, in particular if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1); furthermore, in particular, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), whereby areas with reduced bendability are provided on the sheet metal strip (1) at the transition to the tongue (4); furthermore, in particular, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), wherein areas with reduced bendability are provided on the sheet metal strip (1) at the transition to the tongue (4), wherein the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16); furthermore, in particular, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), wherein areas with reduced bendability are provided on the sheet metal strip (1) at the transition to the tongue (4), the bendability of the tongue (4) being provided by perforations (5) extending in the transverse direction of the wall (6) of the sheet metal strip (1), the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16); further, in particular, if the tongue (4) is flexibly attached to the sheet metal strip as an extension of the sheet metal strip (1), wherein (4), the bendability of the tongue (4) being provided by perforations (5) extending in the transverse direction of the wall (6) of the sheet metal strip (1), the perforations (5) being designed as elongated holes, the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16);2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 6 more specifically, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), whereby areas with reduced bendability are provided on the sheet metal strip (1) at the transition to the tongue (4), the flexibility of the tongue (4) being provided by perforations (5) extending in the transverse direction of the wall (6) of the sheet metal strip (1), the perforations (5) being designed as elongated holes, the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16), wherein a locking tongue (12) is arranged at one connection end (2, 3) there is a locking tongue (12) which can be pressed out of the plane of the wall of the sheet metal strip (1) and can be swung into a locking opening (11) arranged at the other connecting end (2, 3); I.2. Alternatively, to order the defendants, in accordance with claim 2 of the statement of claim, in particular if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1); furthermore, in particular, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), wherein areas with reduced bendability are provided on the sheet metal strip (1) at the transition to the tongue (4); further in particular if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), wherein areas with reduced bending strength are provided on the sheet metal strip (1) at the transition to the tongue (4), wherein the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16); furthermore, in particular, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), wherein areas with reduced bendability are provided on the sheet metal strip (1) at the transition to the tongue (4), the bendability of the tongue (4) being provided by perforations (5) extending in the transverse direction of the wall (6) of the sheet metal strip (1), the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16); further, in particular, if the tongue (4) is attached to the sheet metal strip in a bendable manner as an extension of the sheet metal strip (1), wherein bending- weakened areas are provided on the sheet metal strip (1) in the transition to the tongue (4), the bendability of the tongue (4) being provided by perforations (5) extending in the transverse direction of the wall (6) of the sheet metal strip (1), the perforations (5) being designed as elongated holes, the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16); further in particular, if the tongue (4) is attached to the sheet metal strip (1) in a bendable manner as an extension of the sheet metal strip (1), wherein on the sheet metal strip (1) in the transition to the2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 7 Tongue (4) with areas of reduced flexibility, wherein the flexibility of the tongue (4) is provided by perforations (5) extending in the transverse direction of the wall (6) of the sheet metal strip (1), wherein the perforations (5) are designed as elongated holes, wherein the flanged edge (7, 8, 9) extends over the entire length of the sheet metal strip (1) and is bent upwards in the area of the opposite connection point (3) and forms an extended flanged edge (9) as a receiving slot (16), wherein a locking tongue (12) that can be pushed out of the plane of the wall of the sheet metal strip (1) is arranged at one connection end (2, 3) there is a locking tongue (12) which can be pressed out of the plane of the wall of the sheet metal strip (1) and can be swung into a locking opening (11) arranged at the other connecting end (2, 3); 8. The additions of "in particular" included in the statement of claim relate to the subjects of auxiliary requests B1 to B6, with which the claimant defends the patent in suit in a limited manner (see below). Claims I.3 to I.5 of the reply refer back to claims I.1 and I.2 and, without any substantive changes, correspond to claims 3 to 5 of the statement of claim; claims I.6 to I.10 of the reply refer to claims 6 to 10 of the statement of claim. For this reason, they are not reproduced here. Upon request, the claimant stated in a document dated 7 July 2025 (main workflow) that claim I.2 is also submitted for decision in the alternative, in the event that the court should consider certain forms of infringement not to be covered by the otherwise successful claim I.1. 9. The defendants, who expressly object to the amendment of the claims in the reply as a precautionary measure, request that: I. The action is dismissed. II. The claimant shall bear the costs of the proceedings. 10. The first defendant has filed a counterclaim for annulment (CC 65106/2024, UPC CFI 778/2024). In this regard, it requests that I. European Patent No. EP 2 223 589 B1 is declared invalid in its entirety. II. The claimant shall bear the costs of the counterclaim proceedings. 11. Upon request, defendant 1 stated in a document dated 7 July 2025 (replacement workflow App 32774/2025) that the counterclaim for revocation relates to the UPC contracting states of Germany, Austria and Luxembourg. 12. The claimant, who has filed an application for amendment of the patent (App 13144/2025), requests, with regard to the counterclaim for annulment, that2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 8 II.1. to dismiss the counterclaim; II.2. in the alternative, to dismiss the counterclaim in part and to maintain the patent at issue in accordance with one of the auxiliary requests 1 to 6 as set out in Annexes B1 to B6. 13. The first defendant requests, with regard to the application for amendment of the patent, in the alternative, that European patent No. EP 2 223 589 B1 be declared invalid also to the extent of auxiliary requests B1 to B6. FACTUAL AND LEGAL ISSUES 14. The parties dispute the following points in particular. DISCUSSION OF INFRINGEMENT PATENT-INFRINGING CHARACTERISTICS OF THE COMPOSITE BED EDGING 15. The claimant is of the opinion that the edging made of lawn and decorative edging produced by the first defendant literally fulfils the requirements of claim 1 of the patent in suit. 16. In the defendant's opinion, however, these bed edging strips do not have a tongue as required (feature 2.3.2). Rather, the connecting ends are clearly separated from the sheet metal strip. The connecting end must be identical to the tongue ("formed as a tongue"). The element claimed as a tongue is not a connecting end, but merely an extension. The connecting ends themselves, namely the ends of the lateral main edges, therefore do not overlap in the contested embodiment (feature 2.3.1), but lie butt to butt. In the absence of a tongue, it does not engage in a receiving slot (feature 2.3.4). PATENT-INFRINGING ACTS 17. The claimant alleges patent infringement in Austria and Germany, referring to the Austrian website of the first defendant (Annexes K3.1 to K3.10), which is also aimed at business customers in Germany (see inserts in the reply, p. 10 ff.), and a test purchase from a third- party company in Germany (Annexes K4, K5). It also alleges patent infringements in Luxembourg, whereby the pre-trial negotiations on a licence for Luxembourg, in addition to Germany, Austria and Switzerland, at least indicated a corresponding willingness to supply.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 9 18. The defendants complain about the lack of evidence of infringing acts. The test purchase cannot be attributed to the first defendant. The first defendant's website, even insofar as excerpts are included in the reply, does not show that all the features of claim 1 have been realised. The contrary is disputed. The excerpts submitted with the action date from 5 March 2024, while the alleged test purchase did not take place until 20 June 2024, more than three months later. REFERENCE TO DOCUMENTS 19. For further details, reference is made to the exchanged documents and annexes. COUNTERCLAIM FOR ANNULMENT 20. The first defendant bases its counterclaim for revocation on the following grounds for revocation pursuant to Art. 138 EPC in conjunction with Art. 65(2) UPC Agreement: - lack of novelty (Art. 138(1)(a) in conjunction with Art. 54(1), (2) EPC); - lack of inventive step (Art. 138(1)(a) in conjunction with Art. 56 EPC). 21. It considers the subject matter of the patent in suit to be non-novel in relation to DE 1 871 426 U (DE '426; Annex LS 6) and US 2006/0150480 A1 (US'480; Annex LS 11), and furthermore not based on an inventive step based on DE 299 01 263 U1 (DE'263; Annex LS 7), alternatively in conjunction with further prior art. 22. For further details, reference is made to the exchanged documents and annexes. REASONS FOR THE DECISION 23. The admissible action is well founded, the admissible counterclaim is unfounded. A. ADMISSIBILITY International jurisdiction of the UPC Agreement 24. The international jurisdiction of the UPC Agreement for infringement proceedings is based on Art. 31 UPC Agreement, Art. 4 (1), Art. 63 (1) Brussels Ia Regulation. The first defendant has at least its head office and principal place of business in Austria. In the absence of any indications to the contrary, it can be assumed that the second and third defendants, as its managing directors, also have their2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 10 also reside in Austria, the country in which the defendant's head office is located. 25. Furthermore, the international jurisdiction of the UPC Agreement for all defendants also arises from Art. 31 UPC Agreement, Art. 7(2) Brussels Ia Regulation. The claimant alleges acts of infringement by defendant 1, for which defendants 2 and 3, as its managing directors, are also allegedly responsible, in Germany, Luxembourg and Austria, and thus in the UPC Agreement member states. Whether these alleged acts of infringement, which are not mere speculations, actually exist and whether defendants 2 and 3 are also responsible for them is a question of merit. 26. In any case, international jurisdiction follows from Art. 71a(1), (2) a), Art. 71b(1), Art. 26(1) of the Brussels Ia Regulation because the defendants did not challenge international jurisdiction, especially not in their first statement on the merits in the statement of defence. 27. International jurisdiction for the counterclaim for annulment pursuant to Art. 32(1)(e) of the UPC Agreement follows from Art. 31 of the UPC Agreement in conjunction with Art. 24(4), 71a(2)(a), 71b(1) Brussels Ia. Local jurisdiction of the local division Mannheim 28. The local jurisdiction of the local division in Mannheim is based on Article 33(1)(a) of the UPC Agreement. The claimant alleges a significant infringement in Germany. Reference is made to the above statements on international jurisdiction. 29. The jurisdiction of the Mannheim local division, which is based on its territorial jurisdiction, also extends to acts of infringement in other UPC Agreement Contracting States, namely Luxembourg and Austria. This is confirmed by the provisions of Article 33(2) UPC Agreement. Furthermore, the UPC's internal jurisdiction follows from Rule 19.7 of the RoP, since the defendants did not file a preliminary objection under Rule 19 of the RoP. This applies even if the internal jurisdiction of the local and regional chambers were to be determined by the Brussels Ia Regulation, as the defendants did not challenge the jurisdiction as provided for in Article 26(1) of the Brussels Ia Regulation. Local jurisdiction extends to the counterclaim for revocation (Article 33(3)(a) UPC Agreement).2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 11 Admissibility of amending the claims with the Reply in infringement proceedings 30. The admissibility of the amendment to the claims, which the defendants objected to, with the reply in the infringement proceedings already follows from the fact that the added "in particular" additions correspond to those versions of the patent in suit which the plaintiff defends in the alternative with its application for amendment of the patent. The plaintiff thus indicates that, if necessary, it will also base its action on one of these versions. The admissible (alternative) defence of the patent in suit in one or more restricted versions in the case in dispute means that the infringement action may also be based on these restricted versions (see Local Division Mannheim, decision of 2 April 2025, UPC CFI 359/2023, para. 28 – Fuji v. Kodak et al.; decision of 6 June 2025, UPC CFI 471/2023, para. 50 – DISH et al. v. Aylo et al.). B. INTERPRETATION OF THE PATENT IN SUIT 31. According to the generic term in patent claim 1, the invention relates to edging for flower beds and grassed areas. 32. The patent specification considers it common knowledge to manufacture flower bed edging from sheet metal strips, whereby several elongated sheet metal strips are joined together. It is known to provide the long sides of the sheet metal strips with flanges on at least one side in order to protect the sheet metal strips from tearing and to avoid sharp edges (para. [0002]). 33. However, according to the description in the patent specification, such bed edging, which consists of sheet metal strips joined together, is generally not bendable and therefore cannot be bent into round bed edging (para. [0003]). In the case of sheet metal strips that can be connected lengthwise but only in a straight line, it is known, according to the patent specification, to design the connection in such a way that the respective end face of the sheet metal strip is formed as a tongue that is inserted into an associated pocket-shaped receptacle on the end face of the opposite sheet metal strip (para. [0004]). According to the description in the patent specification, this requires that the sheet metal strips be inserted and connected to each other precisely in the direction of their longitudinal extension. However, according to the patent specification, this type of assembly has the disadvantage that the sheet metal strips can only be assembled in a ready-made state, which means that for relatively large flower bed edgings with a radius of, for example, 2 m, three or2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 12 four metal strips must first be slotted together and then installed in the ground as a flower bed edging (para. [0005]). The patent specification considers this to be difficult to handle and inconvenient to install (para. [0006]). 34. According to the patent specification, US 2006/0150480 A1 shows a edging system for e.g. lawn edges in the horticultural sector. The system is designed to be pluggable and has male and female plug-in connectors for this purpose. However, the embodiments described therein have the disadvantage that they can only be inserted into the ground when they are plugged together. The design of the plug-in connectors does not allow the individual panels to be installed in the ground (para. [0007]). 35. The patent specification describes the underlying task of the invention as being to further develop a flower bed edging made of a lockable sheet metal strip of the type mentioned at receipt in such a way that the sheet metal strips can be fixed or anchored in the ground one after the other and thus the sheet metal strips can be installed one after the other without the need to first assemble all the sheet metal strips together and then install them in the ground (para. [0008]). 36. To solve this problem, the patent in suit protects in claim 1 a border for flower beds and grassland areas, the features of which can be broken down as follows (different breakdown by the parties in square brackets): Border for flower beds and grassland areas [M1.1] 1. The edging consists of at least two metal strips; [M1.2 – Part 1] 2. The two sheet metal strips 2.1. can be connected to each other at the front; [M1.2 – Part 2] 2.2. have upper longitudinal sides and [are] at least flanged on these; [M1.3] 2.3. have front sides and form in the area of these connecting ends; [M1.4] 2.3.1. the connection ends are inserted into each other in a mutually overlapping manner; [M1.5] 2.3.2. one connection end is designed as a tongue; [M1.6] 2.3.3. a receiving slot is arranged at the opposite connection end; [M1.7 – Part 1] 2.3.4. the tongue engages in the receiving slot; [M1.7 – Part 2] 2.3.5. The receiving slot is arranged in the flange of the [one] connecting end; [M1.8]2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 13 2.3.6. The receiving slot can be attached to the tongue at the other connecting end in a direction perpendicular to the longitudinal extension of the sheet metal strip. [M1.9] 37. Some features require explanation. 38. The specialist, who is not expressly defined by the parties, is a mechanical engineer with a degree from a university of applied sciences and several years of professional experience, particularly in the field of sheet metal constructions for gardening and landscaping. This includes experience in the field of multi-part sheet metal construction, including the shaping of the associated components and solutions for connecting them. 39. From the relevant perspective of the expert, the features are as follows: Feature 2.1, 2.3 – Front side 40. The front sides of the sheet metal strips are formed by the narrow end sides of the sheet metal strip and not by the upper longitudinal side of the respective sheet metal strip. 41. This is already clear to the skilled person from the wording of the claim. The claim refers to sheet metal strips, which the skilled person, particularly due to the word component "strip", would normally imagine to be narrow objects extending in a longitudinal direction, with long sides and narrow end sides. This initial understanding of the shape of the sheet metal strip is confirmed for the skilled person in the claim itself by the reference to an upper long side. The skilled person finds further confirmation of this initial understanding in the reference to the longitudinal extension of one of the sheet metal strips in the claim. Finally, the reference to end sides also confirms this understanding; the skilled person usually sees these as the narrow end sides of an elongated strip. 42. However, the skilled person does not stop at such a consideration based solely on the wording of the patent claim. According to Art. 69(1) sentence 2 EPC, the description and drawings must be taken into account when interpreting the patent claim (cf. the applicable principles: UPC CoA 335/2023, Order of 26 February 2024, GRUR-RS 2024, 2829, paras. 73- 79 – verification procedure). If the skilled person then looks at the description of the patent in suit, they will recognise in paragraph [0018] the concretisation of possible2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 14 dimensions of a sheet metal strip that can be used in the frame according to the invention. It is proposed there that a galvanised metal sheet with a thickness of, for example, 0.65 mm and a height of, for example, 130 mm be used as the sheet metal strip, whereby the sheet metal strip has, for example, a length of 1.20 m (corresponding to 1,200 mm). This confirms the expert's understanding, based on the claim, that the invention focuses on sheet metal strips that are considerably longer than they are wide (high) (in the suggestion in paragraph [0018], approx. 10 times longer than wide (high)). The skilled person finds further confirmation of this understanding in Fig. 1 and Fig. 9 of the patent in suit, which show different embodiments of the invention and, in turn, sheet metal strips that have a considerably greater longitudinal extension than width (height) and which, in addition to longitudinal sides, also have narrow end sides that correspond to the skilled person's understanding of a "front side". Figs. 1 and 9 are reproduced below. Features 1, 2.3.1 – at least two sheet metal strips; connecting ends mutually overlapping and inserted into each other2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 15 43. The claim relates to the enclosure in the state in which the connecting ends of the two sheet metal strips are inserted into each other with mutual overlap (feature 2.3.1) and the tongue engages in the receiving slot (feature 2.3.4). Sheet metal strips whose connecting ends are not inserted into each other in an overlapping manner and where the tongue does not engage in the receiving slot, for example a loose collection of sheet metal strips, do not constitute a frame as claimed. 44. According to feature 1, the claim relates to a border for flower beds and grassland areas consisting of at least two metal strips and, in the understanding of the skilled person, to the end product, or at least to a product in which the connecting ends of the two metal strips are inserted into each other in an overlapping manner and the tongue engages in the receiving slot. This follows directly from features 2.3.1 and 2.3.4. 45. Although feature 2.1 refers to the suitability of connecting the two sheet metal strips at the front by using the term "connectable", it does not require in this feature that the sheet metal strips be connected. However, since feature 2.1 also does not require that the sheet metal strips not be connected, the mere indication of suitability in feature 2.1 is not sufficient to relativise the specific indication of condition in features 2.3.1 ("are inserted into one another") and 2.3.4 ("engages"). The same applies to the suitability specification in feature 2.3.6, according to which the receiving slot can be attached to the tongue at the other end of the connection in a direction perpendicular to the longitudinal extension of the sheet metal strip. Rather, these features specify an additional property, namely that the elements referred to are designed to be "connectable" or "attachable" regardless of the assembled state. This ensures that the protected object fulfils the above-mentioned task, namely that the sheet metal strips can be fixed or anchored in the ground one after the other and thus the sheet metal strips can be mounted one after the other without it being necessary to first mount all the sheet metal strips and then install the finished bed edging in the ground (para. [0008]). 46. According to their wording and function, connecting ends are the end areas at the front sides that are involved in connecting two sheet metal strips. Regarding the degree of2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 16 The claim does not contain any specific requirements regarding the overlap of the connecting ends of two connected sheet metal strips. An overlap that ensures a connection between the sheet metal strips suitable for use as a flower bed edging is therefore sufficient. Feature 2.3.2 – Tongue 47. With regard to the shape of one connection end, claim 1 stipulates that it is sufficient for this connection end to be designed as a tongue (feature 2.3.2) and that the tongue and the receiving slot arranged at the other connecting end are at least matched to each other in such a way that the tongue engages in the receiving slot (feature 2.3.4). The claim does not specify any further details regarding the shape of the connecting end formed by the tongue and, in particular, does not specify that the tongue continues the wall of the sheet metal strip at one connecting end with the same width (height). Such a specification is only found in subclaim 2. Claim 1 also covers shapes in which the tongue is narrower than the width (height) of the sheet metal strip. 48. The description of a tongue in paragraph [0029] of the patent specification referred to by the defendant (statement of defence, margin note 26), according to which the tongue consists of the wall of the sheet metal strip, relates solely to a possible embodiment of the invention which has not received entry into claim 1 and to which the claim is not limited; only subclaim 2 deals with the possibility that the tongue continues the wall of the sheet metal strip at a connecting end with the same width. 49. This understanding is confirmed by the examples shown in Figs. 1 and 9. Fig. 1 shows an embodiment in which the tongue continues the wall of the sheet metal strip at a connecting end with the same width, while Fig. 9 shows an embodiment in which the tongue 12 has a significantly smaller width (height) than the end face of the wall of the sheet metal strip. 50. Although claim 1 specifies that the sheet metal strips form connecting ends in the area of the front sides, it does not exclude the possibility of further elements being formed in the area of one front side in addition to a connecting end designed as a tongue, for example a lock. Since claim 1 does not specify that each end face must have exactly one connecting end, the other elements can also contribute to the connection.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 17 51. Similarly, claim 1 does not exclude a multi-part tongue. The only decisive factor is that the tongue, regardless of its further shape, fulfils its intended technical function of engaging in the receiving slot and thereby ensuring the connection. Since claim 1 does not impose any specific requirements on the extent of the engagement, the tongue does not have to be completely absorbed by the receiving slot. Rather, it is sufficient for the engagement to ensure a connection via the interaction of the tongue and the receiving slot. Feature 2.2 – Flanging 52. The sheet metal strips are flanged at least on the upper longitudinal side (feature 2.2). In addition, the sheet metal strip is flanged in the area of the connection end where the receiving slot is located. This is apparent to the skilled person from feature 2.3.5, according to which the receiving slot is ordered in the flanging of the connection end. In order for the receiving slot to be ordered in the flanging of the connection end, the connection end must have flanging. 53. The claim does not require a flange in the area of the connecting end, which is designed as a tongue in accordance with feature 2.3.2, but it does not exclude it either. The expert only finds an exclusion of a flange in the area of the connection end formed by the tongue in subclaim 3. There it is specified that the flange edge of the sheet metal strip extends over the entire length, but only up to just before an end-side recess, thus forming the adjoining tongue. Claim 1 does not contain a comparable specification. 54. Since claim 1 is a product claim, the manner in which the flanging was produced in the manufacturing process is, as usual, irrelevant. It is therefore sufficient that the flanging has the properties that arise during flanging. As can be seen from the wording and the figures, a flange requires the formation of a fold or a change in direction compared to the surface of the sheet metal. It also follows from paragraph [0002] and the fact that, according to the invention, nothing is to be changed in this respect, that a flange must be suitable for protecting the sheet metal strip against tearing and avoiding a sharp edge. There are no indications that the use of a specific manufacturing process is particularly important.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 18 Feature 2.3.6 – can be attached in a vertical direction 55. The receiving slot can be attached vertically to the tongue at the other end of the connection, perpendicular to the longitudinal extension of the sheet metal strip (feature 2.3.6). The wording of the claim does not explicitly specify the vertical direction. However, it follows from the function of the invention, which is to enable the attachment of a further sheet metal strip to a sheet metal strip already in the ground by attaching it from above and pressing it down in a direction perpendicular to the longitudinal extension of the sheet metal strip (see paragraphs [0011], [0014], [0017]), it follows that vertical does not mean perpendicular to the surface of the sheet metal strip, but rather perpendicular to the longitudinal extension and in a plane that runs essentially parallel to the surface of the sheet metal strip. This is confirmed by the figures in the patent specification. C. COUNTERCLAIM FOR NULLITY 56. The counterclaim for annulment by the first defendant is unfounded. The granted version of the patent in suit is already legally valid. The grounds for annulment asserted are not valid. I. Novelty of claim 1 The subject matter of claims 1 to 11 is novel in relation to the prior art cited against novelty, Art. 65(2) UPC Agreement in conjunction with Art. 138(1)(a) and Art. 54(1) and (2) UPC Agreement. 1. Legal standard for assessing novelty 57. An invention is considered new if it does not belong to the prior art. The assessment of novelty within the meaning of Art. 54(1) EPC requires the determination of the overall content of the prior publication. The decisive factor is whether the subject-matter of the patent at issue, with all its features, is directly and unambiguously disclosed in the citation (UPC CoA 182/2024, order of 25 September 2024, para. 123 – Mammut v. Ortovox). 2. Novelty over DE 1 871 426 U (DE'426; Annex LS 6) 58. According to this criterion, the subject matter of patent claim 1 is novel in relation to DE 1 871 426 U (hereinafter: LS 6). LS 6 does not disclose, at least not clearly and directly, that a connecting end (feature 2.3.2) in the form of a tongue is formed in the area of the end face of a sheet metal strip.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 19 59. LS 6 does not clearly and directly reveal whether the sheet metal parts shown in Figs. 3 and 4 referred to by the first defendant have a front side. Figs. 3 and 4 of LS 6 only specifically show the area of the connection between the two sheet metal parts 1 and 2. LS 6 leaves open the question of what shape the sheet metal parts have outside this specifically shown area. The respective "free edges" of sheet metal parts 1 and 2 are shown in Figs. 3 and 4 of LS 6 with wavy lines. For the specialist, this is a form of representation regularly used in technical drawings, which indicates that the object shown only in part in the figure extends further, but that the shape of the further, unrepresented sections of the component is not relevant for understanding the specifically represented section. 60. The form of representation chosen for sheet metal parts 1 and 2 in Figs. 3 and 4 therefore leaves open the question of how far these parts extend upwards, downwards and to the left in the view shown in Figs. 3 and 4. Thus, it is also not immediately and unambiguously disclosed that the bent edge of component 1 (the transition from the part of the component marked with reference numeral 1 to the part forming the tabs 10) is a longitudinal side at all. Nothing in Figs. 3 and 4 indicates that the component extends upwards and/or downwards in such a way that a person skilled in the art would recognise it as a "long side".2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 20 61. If, in agreement with the first defendant (counterclaim for annulment, margin no. 56) to regard the bent edge of component 1 as a flange of sheet metal part 1 along its upper longitudinal side, then, contrary to the definition in feature 2.3.2, the crossbar 4 regarded by it as a "tongue" would not be a tongue-shaped connecting end formed in the area of an end face (feature 2.3), but rather a connecting end formed in the area of the longitudinal side. 62. Nothing else can be inferred from Fig. 4 of LS 6, supplemented with handwritten explanations, which is presented in para. 65 of the document of 20 February 2025 (reply in the infringement proceedings and reply in the counterclaim for annulment proceedings, hereinafter referred to as reply NWK) and is copied below. 63. Here too, defendant 1 does not specify where, in its view, the front edge should be formed. It does claim (para. 77 of the aforementioned Reply) that Fig. 4, which it has annotated by hand, shows that the sheet metal strips (sheet metal parts 1, 2) form connecting ends in the area of the front edges of the sheet metal strips. However, it is not possible to determine where the end faces of the sheet metal strips are located from Fig. 4, which was copied above and supplemented by hand by the first defendant. Even if the above drawing by the first defendant were to be interpreted as showing the tab (reference number 10 in Fig. 4) as a receiving slot and, instead of the crossbar 4, the bent area of the opposite sheet metal part as a tongue, it would not be immediately and clearly disclosed for the above reasons that this tongue is formed on the front end. 64. Furthermore, feature 2.3.6 is also not disclosed. The tab with reference number 10 (Fig. 4), which is regarded as a receiving slot, cannot be attached perpendicular to the longitudinal direction of the sheet metal strip drawn in Fig. 4 by the first defendant2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 21 in Fig. 4, in the sense of the feature, because it can only be attached perpendicular to the surface of the alleged longitudinal side. The same applies to the recess referred to as a receiving slot, into which the crossbar 4 referred to as a tongue engages. 3. Novelty compared to US 2006/0150480 A1 (US'480; Annex LS 11) 65. The subject matter of patent claim 1 is novel in relation to the publication US 2006/0150480 A1 (hereinafter: LS 11), which is already discussed as prior art in the patent specification (para. [0007]). In LS 11, it is at least not clearly and directly disclosed that a receiving slot (into which a tongue engages) can be attached to the tongue at the other connecting end in a direction perpendicular to the longitudinal extension of the sheet metal strip (feature 2.3.6). 66. If, in accordance with the first defendant, the hem 710a ("top heam 710a") in Fig. 7 of LS 11, to which it refers in relation to this feature, as a receiving slot, this seam could not be attached to a tongue of one of the metal strips, but rather to a separate connecting piece ("connecting shim 716") which cannot be clearly assigned to either of the metal strips to be connected in comparison to the other. In any case, however, contrary to the specification in feature 2.3.6, the receiving slot could be attached in a direction parallel to the longitudinal extension to the supposed tongue, as the arrows in Fig. 7 copied below once again emphasise. 67. Nothing else can be inferred from Fig. 4 of LS 11, which is copied below. There, too, the connection is made parallel to the longitudinal extension by sliding element 402, which is regarded as a tongue, into the seams of another sheet metal part at position 404, which are regarded as receiving slots.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 22 68. Even on the basis of the inaccurate submission by the first defendant, there would be no evidence that feature 2.3.6 is disclosed in LS 11, because they themselves state (Reply NWK, margin note 91) that Annex LS 11 leaves open how the receiving slot 16 is attached to the tongue 4 at the other end of the connection relative to the longitudinal extension of the sheet metal strip. 4. Novelty compared to DE 299 01 263 U1 (DE'263; Annex LS 7) 69. Should the first defendant, in paragraph 110 of the reply NWK, assert that the publication DE 299 01 263 U1 (hereinafter: Annex LS 7) "therefore anticipates all features M1.3 to M1.9", this objection would have to be rejected as belated. It is neither apparent from her statement nor otherwise evident why she is only raising such an objection in the reply NWK. LS 7 was already submitted with the counterclaim for annulment, where, however, it was only used to counter an inventive step. 70. Furthermore, the arguments put forward by defendant 1 are not convincing, at least with regard to feature 2.3.6. The copy of Fig. 7 of LS 7, with handwritten notes, submitted by defendant 1 in paragraph 94 of its reply NWK, misrepresents the disclosure content of Fig. 7 (and the accompanying description). Fig. 7 (left), Fig. 7 (centre) of LS 7 and Fig. 2 (right) of LS 7, as labelled by the first defendant, are reproduced below.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 23 71. According to the explanation in the third paragraph on page 4 of LS 7, the object marked with the handwritten comment "other metal strip" is a ground peg 7, i.e. an object that is used in a similar way to the ground peg 6 shown in Fig. 2 of LS 7. This alone casts serious doubt on whether the object "other metal strip" is a metal strip within the meaning of claim 1. 72. Even if the ground spike 7 were to be regarded as a sheet metal strip, the "one sheet metal strip" and the "other sheet metal strip" in the annotated copy of Fig. 7 above would not be connected at the front, as required by feature 2.1 of the two sheet metal strips of the border in claim 1. This is because the part of the "one strip of sheet metal" handwritten by the first defendant as "tongue" is in fact its upper longitudinal side. The upper longitudinal side is inserted into the groove of the ground nail 7, which the defendant has handwritten as "flange", so that the upper end of the ground nail 7 is connected to the longitudinal side of the "one metal strip". 73. In the alternative embodiments referred to by the defendant in 1 (reply NWK, margin note 98), connecting elements 2, 3 are provided which, according to the passage referred to by the defendant on page 4, second paragraph, are inserted into grooves 1a and 1b of band 1. In these embodiments, the connecting ends of the two tapes 1 to be connected are therefore not arranged in a mutually overlapping manner, contrary to feature 2.3.1. Rather, the connecting end of one tape 1 is ordered overlapping with the connecting element 2, 3, but spaced apart from the connecting end of the other tape 1, which in turn is ordered overlapping with the connecting element 2, 3, without the connecting elements being assignable to one or the other tape, let alone as a component.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 24 II. Inventive step of claim 1 74. The subject matter of claims 1 to 11 is based on inventive step in relation to the prior art cited in the proceedings, Art. 65(2) UPC Agreement in conjunction with Art. 138(1)(a) and Art. 56 EPC. 1. Legal standard for assessing inventive step 75. According to Art. 56 EPC, an invention is considered to involve an inventive step if it is not obvious to a person skilled in the art from the prior art. 76. Even though it is not absolutely necessary to choose a single starting point, and it is conceivable in the context of examining inventive step to examine whether an invention is based on inventive step starting from different starting points, this examination still requires at least one starting point in order to understand whether the invention was obvious to a person skilled in the art based on the prior art. There must also be a justification as to why the skilled person would consider the selected part of the prior art to be a realistic starting point. This is the case if its teaching would have been of interest to the skilled person at the relevant priority date when faced with the task of developing a product or process similar to that disclosed in the prior art, which has a similar underlying technical problem to the claimed invention. In general, a second step is then required, namely an incentive or suggestion to pursue the path of the invention starting from the starting point (see in particular Central Chamber, Munich, decision of 16 July 2024, UPC CFI 1/2023, p. 24 ff.). The use of a particular means may, in exceptional cases, also be suggested without any specific prompting or suggestion if, by its nature, it is a general means that can be considered for a variety of applications, the use of the functionality in question is objectively appropriate in the context to be assessed, and no special circumstances can be identified that would make its application appear impossible, difficult or otherwise impractical from a technical point of view (cf. LD Mannheim, decision of 2 April 2025,2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 25 UPC CFI 359/2023, para. 121 with reference to BGH, judgment of 15 June 2021 – X ZR 58/19, GRUR 2021, 1277 para. 47 – guide rail arrangement). 77. The statements made by the first defendant in the counterclaim for annulment do not reveal the starting point for its considerations. Apart from that, it does not show why the skilled person had reason to arrive at the subject matter of the invention protected by claim 1 in its considerations. 2) Inventive step based on LS 7 78.Assuming, in its favour, that the first defendant considers LS 7 to be the starting point in its nullity action (which it cites as the only document relating to the generic term "edging for flower beds and grassland areas"), its submission in the counterclaim for annulment lacks any explanation as to why it should have been obvious to the skilled person, based on LS 7, to further develop the band-shaped border for plantings described in LS 7 in such a way that • it exhibits feature 2.2 (feature 1.3 in the parties' outline), which is not identified by the first defendant in the counterclaim for annulment in LS 7 itself, according to which the bleached strips have longitudinal sides and are at least hemmed on these sides; • it exhibits feature 2.3.2 (feature 1.6 in the parties' classification), which was not identified by the first defendant in the counterclaim for annulment in LS 7 itself, according to which a connecting end is designed as a tongue; • which exhibits features 2.3.3 and 2.3.4 (feature 1.7 in the parties' outline) not identified by the first defendant in the counterclaim for annulment in LS 7, according to which a receiving slot is arranged at the opposite end of the connection and the tongue engages in the receiving slot. 79. However, such an argument would have been necessary in order to cast doubt on the inventive step underlying the subject-matter of claim 1, because the first defendant did not refer to any of the above features in LS 7 in its statement of defence. 80. Contrary to the approach taken in the counterclaim for annulment (para. 84 et seq.), it is also not sufficient, according to the above-mentioned requirements for demonstrating obviousness, to prove the2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 26 features of the claim individually in separate documents of the prior art without showing why the skilled person had reason to combine the publications in a manner corresponding to the subject matter of the patent at issue or, exceptionally, why no specific reason is required. 81. It can be left open whether the supplementary submission in the reply NWK (para. 94 to 191) is to be regarded as belated, as it does not justify a different outcome. There, the first defendant makes it clear for the first time that it bases its considerations regarding inventive step on LS 7. 82. Contrary to the statements made by the first defendant in its Reply NWK (para. 94 to 110), the LS 7 does not in itself suggest the subject matter of claim 1. 83. As explained above with regard to novelty, depending on the embodiment, feature 2.1 (connectable at the front) or 2.3.1 (connecting ends mutually overlapping and inserted into each other) is initially missing. The defendant's submission does not reveal how the skilled person should have arrived at the design features missing in LS 7 in an obvious manner. 84. The same applies to the submission in the reply NWK on further prior art in connection with LS 7 (Annexes LS 4 to LS 6, LS 8 to LS 11). 85. There (para. 122 to 130), the defendant first discusses feature 2.1 (feature 1.2 in the parties' outline). However, it does not show how, in the embodiment according to Fig. 7 of LS 7, in which this feature is missing, one of the other publications cited could instruct the skilled person to redesign the connection shown there between the upper longitudinal side of the sheet metal strip and the end of the (assumed to be a sheet metal strip) ground spike 7 in such a way that two sheet metal strips would be connected to each other at the front end. 86. In paragraphs 149 to 157 of the NWK Reply, the first defendant comments on feature 2.3.1 (feature 1.5 of the parties' outline). However, it does not show how, in the embodiment of LS 7 with connecting elements 2,3, in which this feature is missing, one of the other publications cited could instruct the skilled person to abandon the spacing of the connecting ends of the sheet metal strips 1 shown in this embodiment2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 27 of the LS 7 to abandon the spacing of the connecting ends of the sheet metal strips 1 shown there and to execute their connecting ends in a mutually overlapping manner. 87. Irrespective of the above, the embodiments of LS 7 with and without connecting elements 2,3 also lack feature 2.3.6, according to which the receiving slot can be attached to the tongue at the other connecting end in a direction perpendicular to the longitudinal extension of the sheet metal strip. The strips are pushed into each other parallel (and not perpendicular) to their longitudinal extension using a spring-groove system (see Figs. 1, 3, 4, 8, 9, 11, 12). Similarly, the separate connecting elements 2, 3 are pushed into the upper and lower hems of the strips parallel to their longitudinal extension (Figs. 5, 6, 10). Again, the submission of the first defendant does not reveal how the skilled person, starting from LS 7, in particular the referenced Fig. 3, should arrive at a design exhibiting feature 2.3.6 in an obvious manner. In one embodiment (Fig. 7 and probably also Fig. 13 for ground pegs 7 and 10, but not Fig. 14 for ground peg 11), the ground peg 10 is pushed onto the strap 1 or 9 to be anchored from above, so that the upper hook 7b, 10a of the ground spike 7, 10 can be pushed onto the spring element 1c, 9c of the strap 1, 9, which may be regarded as a tongue but is not located at the front end, or the groove element 9b of the strap 9 from above. However, it is not apparent (nor otherwise evident) why a specialist would take the design of the ground nails as an opportunity to modify the tongue and groove system of the strips so that the strips are no longer pushed into each other parallel to their longitudinal extension, but rather one strip is attached to the other from above. 88. The submission by the first defendant (Reply NWK, margin numbers 185 to 189) on further prior art in connection with feature 2.3.6 (in its structure feature 1.9) does not reveal why it should be obvious to a person skilled in the art to modify the specific embodiments of LS 7 with and without connecting elements 2, 3, in particular Fig. 3 referred to, in such a way that a receiving slot perpendicular to the longitudinal extension of the sheet metal strip could be attached to the tongue at the other connecting end.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 28 III. Legal validity of subclaims 2 to 11 89. The novelty of the subject matter of subclaims 2 to 11 already results from their reference to and further development of the new subject matter of claim 1. The same applies with regard to the inventive step. D. PATENT INFRINGEMENT 90. At least two composite lawn and design edges of the contested embodiment implement the teaching of claim 1 of the patent in suit (see I.). The implementation of the further features from the "in particular" additions to the claims is irrelevant (see II.). Through the contested actions, the first defendant infringes the patent in suit literally and directly in Austria, Germany and Luxembourg. However, the second and third defendants are not jointly liable for the patent infringement ( see III.). This results in the legal consequences pronounced (see IV.). I. Realisation of the features of claim 1 of the patent in suit 91. At least two lawn and landscaping edges of the contested embodiment, assembled in accordance with their intended purpose, realise the features of claim 1 of the patent in suit. This is not disputed between the parties on the basis of considerations applicable under patent law with regard to features 2, 2.1, 2.2, 2.3, 2.3.3, 2.3.5 and 2.3.6, but also applies also applies to the disputed features 2.3.1, 2.3.2, 2.3.4 and 2.3.6. 1) Feature 2.3.2 – Tongue 92. In the contested embodiment, one connecting end is designed as a tongue (feature 2.3.2, feature 1.6 in the parties' outline). This tongue has been highlighted by the claimant with a red box in the illustration on page 9 of the statement of claim (left-hand illustration), which is reproduced below.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 29 93. The design is not actually disputed between the parties. Insofar as the defendants come to a different conclusion (see, in particular, the statement of defence, paras. 26 to 28), this is based on an incorrect understanding of feature 2.3.2. As discussed above, the claim allows the connecting end, which is designed as a tongue, to be narrower than the width (height) of the sheet metal strip (see Fig. 9 of the patent specification). In particular, the fact that the connecting element, which is to be regarded as a tongue, is clearly separated from the sheet metal strip as such in the contested embodiment, as the defendant argues (statement of defence, para. 27), does not therefore preclude the realisation of this feature. 2) Feature 2.3.1 – Connecting ends mutually overlapping and inserted into each other 94. When assembled, the connecting ends of the damaged lawn and design edges are inserted into each other in an overlapping manner (feature 2.3.1, feature 1.5 in the parties' outline). 95. With the two images copied below from page 9 of the statement of claim, which show the front sides of the metal strips on the left that have not yet been assembled and on the right that have been assembled as intended, the claimant has demonstrated that the tongue (outlined in red in the left-hand image) engages in the receiving slot (outlined in green in the left-hand image) when the contested lawn and landscaping edges are assembled and thus ends up in a position that can be deduced by a specialist from the right-hand image, in which the tongue2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 30 opposite connecting end, on which the receiving slot is located, mutually overlap. 96. Once again, the defendants did not dispute this finding in fact. Insofar as they arrive at a different conclusion (see, in particular, the statement of defence, paras. 23 to 25), this is based on an incorrect understanding of feature 2.3.1. They are of the opinion that the connecting end must extend across the entire width (height) of the front surface of the sheet metal strip and consider only its edge with the area next to it facing away from the tongue to be the connecting end of the lawn and design edge on the side of the tongue. Therefore, as discussed in the oral proceedings, they conclude that the connecting ends of the contested lawn and design edges do not overlap when assembled, but rather lie edge to edge. 97. However, as explained above, claim 1 does not require that the connecting end formed as a tongue extend across the entire width (height) of the front side of the sheet metal strip. The same applies to the connecting end on the other front side that interacts with the tongue. The connecting end of the contested embodiment formed by the tongue is thus limited to the tongue outlined in red in the above figure, which, when assembled, is inserted into the opposite connecting end in a mutually overlapping manner. 98. Even if one were to consider the entire width (height) of the front end as the connecting end, the tongue outlined in red in the above illustration would not be able to interlock with this2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 31 still overlap, since, as discussed, a certain degree of overlap is not required. Apart from that, claim 1, as also discussed, excludes neither a further connecting end on the one end face next to the connecting end designed as a tongue nor a multi-member tongue. If the two projections of the lock shown in the blue border of the above figure are also regarded as connection ends of one end face, the degree of overlap is even greater if the entire width (height) of the other end face in the connection area were to be regarded as the connection end there. 3) Feature 2.3.4 – Tongue engages in the receiving slot 99. When assembled, the element of an attached lawn and design edge, which can be regarded as a tongue, engages in the part of the flange that is slightly raised by the sheet metal strip and thus in the receiving slot of another lawn and design edge (feature 2.3.4, in the parties' outline part of feature 1.7). Again, the defendant's differing understanding is not based on a difference in fact, but on a different understanding of the tongue. II. Realisation of the features of the "in particular" additions 100. It is not necessary to determine whether the features of the "in particular" additions are realised. The features do not further limit the scope of a conviction under claim 1. Apart from that, the claimant has clearly only asserted them for the (unlikely) event that the patent in suit is partially revoked in the granted version and upheld in the corresponding auxiliary version. III. Patent-infringing acts 1) Applicable substantive law 101. The substantive law of the UPC Agreement applies to the contested acts committed after the UPC Agreement came into force on 1 June 2023, as will, in principle, the substantive law of the UPC Agreement Member State in question apply to acts commenced before that date and continued thereafter, whereas acts committed before 1 June 2023 and already completed on that date will be governed by national substantive law. For further details, reference is made to the2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 32 decisions of the local division in Mannheim of 11 March 2025 (UPC CFI 159/2024, UPC CFI 162/2024, Hurom v. NUC Electronics et al.). 2) Actions of the first defendant Austria 102. The first defendant offered the contested embodiment on its Austrian websitewww.windhager.eu/at in Austria after 1 June 2023. The parties do not dispute that the screenshots submitted by the claimant authentically reproduce the websites and date from 2024. 103. These websites advertise the contested embodiments for purchase and thus offer them in accordance with Article 25(a) of the UPC Agreement. Whether an act constitutes an offer in this sense depends on its declaratory value, which must be determined from an objective point of view of the relevant public, taking into account all the circumstances of the individual case. 104. In the case in dispute, the fact that the contested embodiments, described as lawn and landscaping edging, are shown individually in large format does not preclude them from being offered. It does not follow from this that the offer would be limited to the sale of individual lawn and landscaping edging. Rather, it is clear from the context that the supplier is offering several lawn and design edging elements for the customer to assemble. Reference is made, for example, to the screenshots copied below:2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 33 (Exhibit K3.2) (Exhibit K3.1)2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 34 (Exhibit K3.3) (Exhibit K3.4) 105. These show not only two lawn and landscaping edging elements assembled to form a corner border (preview image in Exhibit K3.2, enlarged view in Exhibit K3.4).2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 35 Rather, the emphasis is on the fact that the variable lawn and design edging is easy to install, can be extended as required and offers individual design options (e.g. Annex K3.1, K3.4) or that the extendable lawn edging ("whether angular, straight or round, no problem for the flexible lawn edging") enabled an endlessly extendable lawn border (e.g. Annex K3.3, K3.5). These circumstances are sufficient to attribute to the offer the explanatory content that the lawn and design edging are not only offered individually. It is therefore not necessary at this point to consider in more detail whether an offer limited to the sale of a lawn and design edge as a single item constitutes an offer within the meaning of Article 25(a) of the UPC Agreement (see IV.1 below). 106. The fact that the screenshots submitted as Annexes K3.1 to K3.10 may not reveal all the patent-infringing features, as the defendant claims, is irrelevant. The defendant do not dispute that these offers relate to the same contested embodiment that was the subject of the claimant's test purchase in Germany and for which the claimant submitted the photographs discussed above. 107. Against this background, the claimant was entitled to assert, without this being regarded as an insignificant statement made at random, that after 1 June 2023, defendant 1 also delivered several lawn and landscaping edging products of the contested embodiment to a customer in Austria and thus placed them on the market there (Art. 25(a) UPC Agreement). The defendants did not substantially dispute this in fact. In particular, they did not claim that after 1 June 2023, the first defendant had only sold the lawn and landscaping edging individually in Austria and had refused orders for more than one lawn and landscaping edging. 108. For the direct patent infringement, it is irrelevant that the lawn and landscaping edging is apparently only offered and delivered to customers in Austria in an unassembled state. Claim 1 only covers edging composed of at least two lawn and landscaping edging strips. However, as features 2.1 and 2.3.6 in particular show, the design according to the invention is specifically designed so that the sheet metal strips can be easily assembled at their place of use without the addition of further objects (see also paragraphs [0011] to [0014]). In any case, in such a case, the mere offering and distribution of all components of a patent- infringing product, which are2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 36 a modular system at the place of use by the customer without the addition of further objects, constitutes a direct patent infringement within the meaning of Article 25 of the UPC Agreement. Germany 109. It can also be assumed that the product will be offered and marketed in Germany after 1 June 2023. The claimant has asserted this in a remarkable manner, given that the contested embodiment is available on the market in Germany, as evidenced by the test purchase from 2024 (Annex K4, K5), and the first defendant provides a contact form on its website for contact enquiries from business partners as new customers, which includes Germany in the country selection (see reply in the infringement proceedings, p. 12 et seq.). The defendants have not substantially disputed this assertion. In particular, the complaint that there is no evidence of infringing acts and that the test purchase cannot be attributed to the first defendant is not sufficient. Rather, the defendants should have specifically asserted that the contested embodiment is not made available for distribution by business partners in Germany, in particular that the source of the test purchase in Germany is not (indirectly) supplied by the first defendant, and that orders from end users in Germany are not accepted, which is ensured by the internal organisation of the first defendant. Luxembourg 110. Finally, patent infringement in Luxembourg after 1 June 2023 can also be assumed. Although the claimant does not offer Luxembourg as an option in the contact form for business partners, it had good reasons to claim delivery and offering for Luxembourg as well, since the first defendant had requested a licence for Luxembourg in the pre-trial licence negotiations. Against this background, the defendant should have explicitly stated that orders from Luxembourg would not be processed and how this was ensured by their internal work organisation. Furthermore, they should have explained that, and if applicable, why the request for a licence for Luxembourg was not based on deliveries already made or preparations for imminent deliveries to Luxembourg.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 37 3) Actions of defendants 2 and 3 111. In contrast, no liability on the part of defendants 2 and 3 for the patent-infringing actions of defendant 1 as its managing director has been demonstrated. Applicable law 112. Whether a company's management body is subject to its own patent claims due to a patent infringement is determined in principle by the substantive law applicable to the patent infringement in question in accordance with the relevant country of protection principle, which also determines the scope of protection of patent law with regard to the acts to be assessed. Whether, in addition, liability may arise in individual cases under the applicable company law and whether the UPC Agreement's jurisdiction under Article 32 UPC Agreement extends to claims based on company law, for which a patent infringement is merely a preliminary question, does not need to be decided in the present case, because it is not apparent that the claimant is appealing such liability on the part of defendants 2 and 3, which would constitute a different subject matter of the dispute than patent infringement by defendants 2 and 3. Acts of infringement after 1 June 2023 113. According to the UPC Agreement, the position of managing director of a company is not sufficient in itself to assume that the managing director has infringed a patent. In this respect, the same applies as for liability under Art. 63 (1) sentence 1 UPC Agreement as an intermediary, for which the mere function of managing director is also not sufficient (cf. Court of Appeal, order of 29 October 2024, GRUR-RS 2024, 29496 marginal no. 66). Rather, the managing director must at least be involved in the specific patent infringement in question. 114. The claimant's submission is limited to the assertion that the acts considered to be patent infringing "are carried out under the control of the managing directors of the first defendant, whereby the second and third defendants are also to be sued before the local chamber." Since, due to the statutory power of control, all actions of a company are carried out under the control of the managing directors, this submission does not go beyond the mere assertion of liability by virtue of the position of managing director, which, according to the above, is not sufficient.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 38 115. It can be left open whether the involvement of the managing directors can be assumed under certain circumstances, as such circumstances have neither been presented nor are otherwise apparent. According to the defendant's submission, which has not been significantly disputed, the product portfolio comprises a wide range of goods in the areas of gardening, insect protection, pest control and sun protection (statement of defence, para. 10). In the extract from the website of the first defendant submitted as evidence LS 1, the range comprises more than 7,000 items. Against this background, it is not apparent in particular that the contested embodiment is of such importance in the business operations of the first defendant that decisions on its design and its inclusion in the product range in this specific form are not usually made without the involvement of the management. Similarly, in the absence of any evidence, it can be left open whether managing directors are liable for patent infringement even without specific involvement in the distribution of a patent-infringing product if they are at fault in the organisation of business operations, resulting in the company failing to properly examine and observe the patent law situation. 116. No argument has been put forward to suggest that the pre-trial settlement negotiations and the pre-trial and judicial claims against defendants 2 and 3, in addition to defendant 1, would justify a different assessment. Infringements prior to 1 June 2023 117. Insofar as German, Austrian or Luxembourg law may be applicable to acts committed before 1 June 2023, this does not lead to a different result. 118. Insofar as national German, Luxembourg and Austrian law is applicable to acts prior to 1 June 2023, the claimant, which bears the burden of proof, has also failed to demonstrate the basis for the liability of defendants 2 and 3. Such an explanation would have been necessary and reasonable, if only because it cannot be assumed that a local division is familiar with the law of all UPC Agreement member states (see Local Division Mannheim, decisions of 11 March 2025, UPC CFI 159/2024, UPC CFI 162, para. 101 and 105 – Hurom v NUC Electronics et al.).2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 39 IV. Legal consequences 119. In light of the foregoing, the action against defendants 2 and 3 is dismissed. The legal consequences ordered result from the established patent infringement by defendant 1. 1) Injunction 120. The injunction claim against defendant 1 is based on Art. 25(a) in conjunction with Art. 63(1) sentence 1 of the UPC Agreement. 121. The injunction also extends to the act of manufacturing, since defendant 1 claims to also be active as a manufacturer (statement of defence, p. 3) without disputing the manufacture of the contested embodiments in the territory of the UPC Agreement countries relevant here. In any case, there is a serious risk of manufacturing in these countries. The same applies to use, at least for demonstration purposes, especially since the website also shows assembled lawn and design edging (see, for example, Annex K3.4), and to possession for the aforementioned purposes. Insofar as the lawn and landscaping edging is not manufactured in Germany, Austria or Luxembourg, it has been imported there for the aforementioned purposes or there is a serious risk of this happening. Against this background, it is irrelevant whether the mere act of offering and placing on the market justifies an extension to the other acts of use. Since acts of infringement have been established in all three UPC Agreement member states (see paragraphs 101 to 109 above), it is also irrelevant whether, in the context of main proceedings, the infringement established in a UPC Agreementcontracting state automatically results in an injunction in all UPC Agreement contracting states in which the patent in suit is in force (see, on territorial extension in the case of an application for interim measures, Court of Appeal, order of 13 August 2025, UPC CoA 446/2025, 520/2025, para. 91 – Boehringer v. Zentiva; order of 3 March 2025, UPC CoA 523/2024, para. 103 et seq. – Sumi Agro et al. v. Syngenta). Accordingly, it can remain open whether Article 34 UPC Agreement generally requires such an extension or whether it is merely to be understood as a provision in connection with Article 71d sentence 2 of the Brussels Ia Regulation.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 40 122. The injunction also covers the offering and marketing of individual lawn and landscaping edging. If a patent-infringing product consists of at least two identical, coordinated components which, according to their patented design, are intended to be assembled in accordance with the patent without the addition of further objects to the patent-protected product, the individual sale of such a component generally constitutes a direct patent infringement within the meaning of Art. 25(a) UPC Agreement if the possibility of assembly is indicated or is otherwise obvious. In the absence of any indications to the contrary, it can then be assumed that the individual component serves to extend the patent-infringing product by a further component in accordance with the patent. This is the case here. The lawn and design edging are components which, according to the websites of defendant 1, are also sold individually for the extension of existing edging (cf. "can be extended as required", in particular Annex K3.1, K3.3, K.3.4). 123. As can be seen from claim I.2 and its explanation in the document of 7 July 2025, the claimant also objects to the individual sale of the contested lawn and landscaping edging. The fact that it regards such a sale as an indirect patent infringement is irrelevant. 124. Since, according to the above, the individual sale of a lawn and landscaping edging is also a direct patent infringement under the circumstances established, it is covered by the operative part of the judgment without the need for separate details in the operative part. 2) Recall, removal, destruction 125. The right to recall, remove from distribution channels and destroy arises for the first defendant from Art. 63(2)(b)(d) and (c) of the UPC Agreement. 126. It has not been demonstrated, nor is it otherwise apparent, that the aforementioned measures would be disproportionate. The first defendant, which bears the burden of proof in this regard, neither asserts disproportionateness nor does it point to any circumstances in this regard. In particular, it does not assert any other means of removal other than destruction.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 41 127. For those copies of the contested embodiments that were placed on the market before 1 June 2023, a claim for recall and removal from the distribution channels can also be assumed, insofar as German, Luxembourg or Austrian national law applies to them. The claimant has not presented any legal basis for this. However, a claim for recourse and removal follows from Article 10(1) of the Enforcement Directive, which must be implemented in all EU Member States, since the defendants do not assert that Austria or Luxembourg or Germany, insofar as this would be permissible under the Directive, have implemented only one of the two measures. 3) Information 128. The right to information against the first defendant arises from Article 67(1) UPC Agreement. It also covers periods prior to the entry into force of the UPC Agreement on 1 June 2023 (see Local Division Mannheim, decisions of 11 March 2025, UPC CFI 159/2024, UPC CFI 162, para. 103 and 107 – Hurom v. NUC Electronics et al.). No explicit deadline for providing the information has been set because the claimant did not request such a deadline. Even without an explicit deadline, the first defendant is obliged to provide the information immediately after the judgment has become final or after the claimant has requested it to do so. 4) Determination of the obligation to pay damages 129. The determination of the defendant's liability for damages is based on Article 68(1) UPC Agreement. The defendant acted negligently in any case. If it had exercised due care, it should have recognised, in the absence of any indications to the contrary, that the contested embodiment makes use of the teaching of the patent in suit. A temporal restriction or breakdown of the finding with regard to actions subject to national German, Luxembourg or Austrian law is not necessary. Rather, the particularities of the national law of the UPC Agreement member states that may be applicable to the past prior to 1 June 2023 only concern aspects of the calculation of the amount of damages, which can only be conclusively assessed on the basis of the information still to be provided and are therefore reserved for separate proceedings to determine the amount of damages pursuant to R. 125 ff. RoP (see local division Mannheim, decisions of2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 42 11. March 2025, UPC CFI 159/2024, UPC CFI 162, para. 104 and 108 – Hurom v. NUC Electronics et al.). 5) Publication of judgments 130. There is no right to publication of judgments pursuant to Art. 64 (1) and Art. 80 of the UPC Agreement. Based on the general principle of proportionality (cf. Art. 42 of the UPC Agreement), the publication of judgments must not be disproportionate. Since the decisions of the EPG are in principle publicly accessible and are published on its website, special justification is required as to why, in addition, separate publication is necessary as a measure pursuant to Art. 64 (1) or Art. 80 UPC Agreement (cf. local division Mannheim, decisions of 11 March 2025, UPC CFI 159/2024, UPC CFI 162, para. 130 and 134 with further references – Hurom v. NUC Electronics et al.). The claimant has not demonstrated such special circumstances in the present case. 6) Threat of a penalty payment 131. The threat of a penalty payment is based on Article 63(2) of the UPC Agreement for the injunction and on Article 82(1) for the provision of information and the measures of recall, removal from distribution channels and destruction. (4) UPC Agreement, R. 354.3 RoP. The requested threat of an upper limit does not raise any concerns. In the event of an infringement, the penalty payment will be set at a specific, appropriate amount, taking into account the circumstances of the individual case and the principle of proportionality. E. Security 132. Art. 82(2) UPC Agreement, R. 118.8 RoP grants the court discretion to make any order subject to security. In doing so, the applicant's interest in the effective enforcement of its property right must be weighed against the defendant's interest in the effective enforcement of possible claims for damages in the event of a subsequent revocation of the order, taking into account the circumstances of the individual case. 133. The enforcement of potential claims for damages against a claimant may be jeopardised by their financial situation, their unwillingness to compensate the defendant, or by difficulties at the locations where potential claims for damages must be enforced, which make enforcement impossible or unreasonably difficult. Whether and to what extent such factors exist must be determined on the basis of the information provided by2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 43 examine the facts and arguments presented by the parties according to the same standards as in the case of an application for security pursuant to Rule 158 RoP. Since the order for security for costs serves to protect the defendant, it is initially up to the defendant to explain and justify (and, if necessary, prove) why it appears appropriate in the specific case to subject the order or measure to security in accordance with Rule 118.8 RoP. It is then incumbent on the claimant to contest these facts with reasons, especially since the claimant usually has knowledge and evidence regarding his financial situation. Furthermore, it is incumbent on the claimant to explain and justify (and, if necessary, prove) why, despite the reasons put forward by the defendant, his interest in the enforceability of the order or measure without security outweighs the defendant's interest (see Local Division Düsseldorf, decision of 31 October 2024, UPC CFI 373/2023, p . 26; local division Mannheim, decisions of 11 March 2025, UPC CFI 159/2024, UPC CFI 162, paras. 132 and 137 – Hurom v NUC Elec- tronics et al.). 134. In the present case, no arguments have been put forward and no other circumstances are apparent that would jeopardise the enforcement of any claims for damages in the event of the judgment being set aside at a later date. F. Decision on costs 135. The decision on costs is based on Art. 69 (1) UPC Agreement, R. 118.5 RoP. Since the action has been largely successful and the counterclaim for revocation has been unsuccessful, the Panel exercises its discretion to impose the costs of the proceedings in full on the defendant. The unsuccessful claim against defendants 2 and 3 alongside defendant 1 as its managing director is not of significant importance. In particular, it is not apparent that they would have any economic significance alongside the claim against defendant 1. According to Annex LS 1, the second defendant is the founder of the first defendant and the third defendant is his son. In this situation, there was never any serious possibility that the second and third defendants could commit patent infringement outside their activities at the first defendant as their family business, so that the action against the second and third defendants cannot be considered to have any significant economic significance of its own. Nor is it apparent that the second and third defendants would have incurred significant expenses of their own, which2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 44 they would not be reimbursed by the first defendant. In the absence of any indications to the contrary, it must rather be assumed that the first defendant also bears the legal defence costs of the second and third defendants internally, because they are being sued in their capacity and on the basis of their activities as their managing directors. G. Amount in dispute 1. The claimant has stated the value in dispute for the infringement action as EUR In the absence of better information, the Chamber therefore sets the value in dispute for the infringement action and the counterclaim for annulment at EUR 1,500,000 each 1,500,000, and thus the value in dispute for the entire proceedings at EUR 3,000,000. A surcharge on the value in dispute of the counterclaim for annulment in comparison to the infringement action was not appropriate. There is no evidence of any economic significance that goes significantly beyond the present proceedings and would justify a total value in dispute of more than EUR 3,000,000. ORDER: I. 1. The first defendant is ordered to refrain from manufacturing, offering, placing on the market, using or importing or possessing for the aforementioned purposes a product with the following characteristics in the territory of the UPC Agreement member states Germany, Austria and Luxembourg: Borders for flower beds and grassland areas consisting of at least two sheet metal strips that can be connected to each other at the front, which are flanged at least on the upper longitudinal side and form connecting ends (2, 3) which are inserted into each other in an overlapping manner, one connecting end being designed as a tongue (4) which engages in a receiving slot (16) arranged in the opposite connecting end, characterised in that a receiving slot (16) arranged in the flange of one connecting end (3) can be inserted onto the tongue (4) at the other connecting end (2) in a direction perpendicular to the longitudinal extension of the sheet metal strip (6). 2. The first defendant is ordered to recall a. recall the products referred to in point 1 from the distribution channels; b. to permanently remove the products referred to in point 1 from the distribution channels; c. to destroy the products referred to in point 1. 3. The first defendant is ordered to provide the claimant with information about:2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 45 a. the origin and distribution channels of the products referred to in point 1 and b. the quantities produced, manufactured, delivered, received or ordered and the prices paid for the products referred to in point 1, and c. the identity of all third parties involved in the manufacture or distribution of the products referred to in point 1. 4. It is hereby determined that defendant 1 shall compensate claimant for all damages incurred and yet to be incurred as a result of the actions described in section 1. 5. In all other respects, the action for infringement is dismissed. 6. For each case of infringement by defendant 1 against the orders and measures pursuant to clauses 1 to 3, it shall be subject to a penalty payment of up to EUR 250,000. II. The counterclaim for annulment brought by the first defendant is dismissed. III. The defendants shall bear the costs of the legal dispute. IV. The value in dispute is set at EUR 3,000,000. Issued in Mannheim on 12 September 2025 NAMES AND SIGNATURES2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 46 Presiding Judge Prof. Dr Tochtermann Legally qualified judge Böttcher Legally qualified judge Kupecz Technically qualified judge Tilmann For the Deputy-Registrar: Kranz, Clerk LD Mannheim Information on the appeal: Any party whose applications have been rejected in whole or in part may appeal against this decision within two months of its notification to the Court of Appeal (Art. 73(1) UPC Agreement, R. 220.1(a), 224.1(a) RoP). 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 shall be issued by the Deputy-Registrar on the application of the enforcing party, Rule 69 RegR.2025-09-12 LD Mannheim UPC CFI 338-2024 CC 65106-2024 ORD 69435-2024 en-GB.pdfDeepL machine translation provided by www.veron.com

Key Holdings

• The mere offering or supplying of all components of a patented product, specifically designed for easy assembly at the place of use without additional objects, constitutes a direct patent infringement under Art. 25(a) UPC Agreement.
• The individual sale of a component of a patent-protected product, consisting of at least two identical, coordinated components intended for assembly into the patent-protected product, generally constitutes a direct patent infringement under Art. 25 UPC Agreement if assembly is indicated or obvious.
• The granted version of European Patent No. EP 2 223 589 B1 is legally valid, and the asserted grounds for annulment (lack of novelty and inventive step) are unfounded.
• The position of a managing director of a company is not sufficient in itself to assume patent infringement; specific involvement in the infringement is required.
• International jurisdiction for infringement proceedings is based on Art. 31 UPC Agreement, Art. 4(1), Art. 63(1) Brussels Ia Regulation, and for counterclaims for annulment on Art. 32(1)(e) UPC Agreement.

Tags

• Counterclaim
• Direct Infringement
• Indirect Infringement
• Infringement
• Inventive Step
• Novelty
• UPC
• Unified Patent Court

Related Rules

• Art. 2 – Definitions
• Art. 6 – The Court
• Art. 6 – The Court
• Art. 1 – Unified Patent Court
• Art. 5 – Liability
• Art. 5 – Liability
• Art. 5 – Liability
• Art. 3 – Scope of application
• Art. 4 – Legal status
• Art. 6 – The Court
• Art. 7 – The Court of First Instance
• Art. 7 – The Court of First Instance
• Art. 7 – The Court of First Instance
• Art. 7 – The Court of First Instance
• Art. 2 – Definitions
• Art. 3 – Scope of application
• Art. 2 – Definitions
• Art. 3 – Scope of application
• Art. 3 – Scope of application
• Rule 1 – Application of the Rules and general principles of interpretation
• Art. 6 – The Court
• Art. 6 – The Court
• Art. 6 – The Court
• Art. 1 – Unified Patent Court
• Art. 6 – The Court
• Art. 6 – The Court
• Art. 6 – The Court
• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 4 – Legal status
• Art. 8 – Composition of the panels of the Court of First Instance
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Art. 8 – Composition of the panels of the Court of First Instance
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 1 – Application of the Rules and general principles of interpretation
• Art. 6 – The Court
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Art. 3 – Scope of application
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 6 – Service and supply of orders, decisions, written pleadings and other documents

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