UPC CFI 363/2024 – N.J DIFFUSION SARL v GISELA MAYER GmbH

Court
Local Division Paris
Date
Outcome
Claims for direct and equivalent infringement rejected; costs fixed as liability in insolvency proceedings.
Sector
Mechanics
Decision Type
DECISION ON THE MERITS

Expert Commentary

Full Decision Text

1 Paris Local Division UPC CFI 363/2024 DECISION ON THE MERITS of the Court of First Instance of the Unified Patent Court issued on 01/08/2025 ABSTRACT 1- The scope of protection of the teachings of the patent : It does not matter that the descriptive part still contains the superimposed embodiment, what matters is the scope of protection as delimited by the claims, which are expressly limited to the "edge-to-edge" mode. The Court also noted that the addition of the words "placed edge to edge" in claim 1 should have led, at the grant stage of the patent, to the deletion of the "superimposed" mode of implementation of the invention mentioned in the description, as this mode does not fall within the scope of protection of the teachings of the patent as finally retained in the claims. (cf Agfa v Gucci, Hamburg LD of 30 April 2025, UPC CFI 278/2023, Headnote 3: "Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim"). 2- Admissibility of a late alleged claim : In the present case, the Court considers that the claim for infringement by equivalence which arises just after the statement of defence is not out of time (at the stage of the reply statement), because that claim does not change the nature of the claimant's procedural strategy, which is merely adapted in the light of the arguments developed in the defence, and the defendant was able to respond to it in its rejoinder. For these reasons, the claim for infringement by equivalence is admissible in this case. 3- Indirect infringement within the UPC (Art. 26 UPCA and Art. 69 EPC and its proto-school of interpretation): In the light of the case law of the UPC (cf Mannheim UPC LD, 6 June 2025 - 471/2023- Headnote3 ; Brussels UPC LD, 17 January 2025, para. 98 - CFI 376/2023), this Division considers, on the one hand, that it is appropriate to adopt the most harmonised interpretation possible within the UPCA when ruling on infringement claims by equivalence and, on the other hand, that in all cases, in view of the different tests practised within the contracting Member States of the UPCA, it is appropriate to answer first of all a question which is the lowest common denominator and which constitutes the first criterion for the assessment of equivalence: Do the modified (or substitute) means perform essentially the same function in order to achieve essentially the same effect?2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 2 KEYWORDS Scope of the patent, eligibility, late application, infringement by equivalence, Art. 26 UPCA, Art.69 EPC and its interpretation protocol. APPLICANTS N.J DIFFUSION SARL 44 Rue Paul Valéry 75016 - PARIS - FR Me Vincent BLOCH, in his capacity as receiver of the company N.J. DIFFUSION SARL with a mission of assistance, Me Florence DAUDE, in her capacity as judicial representative of the company N.J. DIFFUSION SARL, Represented by Catherine MATEU DEFENDANT GISELA MAYER GmbH Litzelsdorfer Straße 3 87700 - Memmingen - DE Represented by Frédéric PORTAL PATENT IN SUIT Patent number Owner EP2404516 NJ DIFFUSION SARL2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 3 COMPOSITION OF THE CHAMBER - PLENARY CHAMBER President and Judge-Rapporteur Camille Lignières Legally qualified Judge Carine Gillet Legally qualified judge Stefan Schilling LANGUAGE OF PROCEEDINGS: French DECISION THE PARTIES TO THE PROCEEDINGS 1. N.J Diffusion ('NJ'), the applicant in the main proceedings, is a French company specialising in replacement hair, extensions, hairpieces and hair care products. The company has a network of national and European retail partners. It holds European patent EP 2 404 516 (hereinafter "EP'516"). 2. GISELA MAYER ("GM"), the defendant in the main proceedings, is a German company specialising in wigs and hair accessories. 3. Both companies are SMEs and are competitors on the European market. FACTS AND PROCEDURE 4. On 1 July 2024, NJ brought an infringement action against GM in respect of patent EP'516 before the Paris Local Division of the Unified Patent Court (hereinafter "UPC"). This case is registered under number ACT 39091/2024. 5. No preliminary objections have been raised by the defendant, in particular concerning the jurisdiction of the Unified Patent Court and the internal jurisdiction of the Paris Local Division. 6. The defendant has contested the alleged infringement but has not filed a counterclaim challenging the validity of the patent relied on in support of the main infringement action. A warranty claim under R. 158 RoP by GM was rejected first by the Judge-Rapporteur and then by the panel under R. 333 RoP by order of 30 April 2025. Finally, an exchange of supplementary briefs was authorised by the Judge-Rapporteur, however NJ's last supplementary brief was partially inadmissible at GM's request in the following terms: "The Judge-Rapporteur orders that the following elements in the brief submitted by N J DIFFUSION SARL on 17 February 2025 be excluded from the debates as inadmissible on the basis of rules 9.2, 12.5 and 36 RoP:2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 4 With the exception of paragraphs 175 to 183, 216 to 231, 336 to 340 and paragraphs 342 to 346 of section 7.2. By judgment of 5 June 2025, the Paris Business Court opened receivership proceedings against NJ. The bodies involved in the receivership proceedings have agreed to continue the present proceedings and have intervened voluntarily in the proceedings. (Statements of 13 and 16 June 2025). GM was heard on this intervention at the status meeting on 17 June 2025, and GM provided evidence that it had cleared its claim to the tune of 50,000 euros with the mandataire judiciaire, the creditors' representative (Royal Decree of 16 June 2025). The voluntary intervention of the procedural bodies on behalf of the claimant was therefore admitted to the present proceedings. By procedural order of 19 June 2025, the request for a postponement of the oral hearing scheduled for 20 June 2025 was rejected, the proceedings on the merits initiated by NJ before the present court were declared to be continuing, and the application for a guarantee from GM made after NJ's receivership was declared inadmissible. THE PARTIES' CLAIMS 7. In its last statement (statement in intervention dated 12 June 2025), N.J. DIFFUSION asked the Court to : Acknowledge the receivership of NJ DIFFUSION, Declare Mr Vincent BLOCH admissible in his voluntary intervention as administrator of NJ DIFFUSION, Declare Me Florence DAUDE admissible in her voluntary intervention as court-appointed agent representing the creditors of NJ DIFFUSION. 8. This application to intervene is made in support of all the claims made by NJ DIFFUSION against GISELA MAYER. 9. In its statement of claim, NJ DIFFUSION seeks the following measures from the Court: PRIMARILY Declare GISELA MAYER inadmissible and at the very least ill-founded with regard to all of its claims and consequently reject them, Hold that by manufacturing, having manufactured, exporting, importing, holding, stocking, placing on the market, offering for sale and selling in France, Belgium, Spain, Italy and Portugal for use wigs reproducing the characteristics of European Patent No. 2 404 516 B1, and in particular claims 1 to 4 and 7 to 9, GISELA MAYER has committed acts of literal infringement within the meaning of Article 25 of the Unified Patent Court Agreement,2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 5 CONSEQUENTLY, Order GISELA MAYER to pay N.J. DIFFUSION the sum of 300,000 euros in provisional damages, SUBSIDIARILY Hold that by manufacturing, having manufactured, exporting, importing, holding, stocking, placing on the market, offering for sale and selling in France, Belgium, Spain, Italy and Portugal with a view to their use wigs reproducing the characteristics of European Patent No. 2 404 516 B1, and in particular claims 1 to 4 and 7 to 9, the company GISELA MAYER was guilty of acts of infringement by equivalent within the meaning of Article 69 of the European Patent Convention, CONSEQUENTLY, Order GISELA MAYER to pay N.J. DIFFUSION the sum of 300,000 euros in provisional damages, IN ANY EVENT Order the communication of all accounting documents concerning each model of wigs reproducing patent EP'516 manufactured, had manufactured, exported, imported, held, stored, placed on the market, offered for sale and sold in France, Belgium, Spain, Italy and Portugal by the company GISELA MAYER or on its behalf by its suppliers, partners and distributors, as well as the turnover resulting from the sale of these wigs and the margins achieved in these countries, subject to a fine of 2.000 per day of delay from the date of service of the forthcoming decision, Order the communication of information concerning the identity of the manufacturer(s) and supplier(s) of each wig model reproducing patent EP'516 of which GISELA MAYER has knowledge. Prohibit the company GISELA MAYER from using the process, having the process manufactured, manufacturing, exporting, importing, holding, stocking, placing on the market, offering for sale and selling in France, Belgium, Spain, Italy and Portugal models of wigs reproducing the characteristics of claims 1 to 4 and 7 to 9 of European patent no. 2 404 516 B1, subject to a fine of 2,000 euros per day of delay and per infringement recorded from the date of notification of the decision to intervene, Order GISELA MAYER, within 15 days of notification of the decision to intervene and subject to a fine of 2,000 euros per day of delay and per infringement found: - To recall or have recalled all the offending wigs in circulation in France, Belgium, Spain, Italy and Portugal, as well as all stocks held by its distributors and partners in these countries, - To destroy or have destroyed, at its own expense, the wigs thus recalled and those remaining in its possession.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 6 Order the company GISELA MAYER, within 15 days of service of this decision and subject to a fine of 2,000 euros per day of delay, to provide proof of the withdrawal and destruction of the wigs in question, Order publication of the decision in five French or foreign newspapers or periodicals chosen by N.J. DIFFUSION within 15 days of delivery of the decision, subject to a fine of €2,000 per day's delay, at the expense of GISELA MAYER, Order the publication of the operative part of the decision in legible characters on the home page of the www.gisela-mayer.com website within 48 hours of delivery of the decision, subject to a penalty of €15,000 per day of delay, at the expense of GISELA MAYER, Declare that the Court reserves the right to liquidate the astreintes thus ordered, Order the company GISELA MAYER to pay the company N.J DIFFUSION the sum of €56,000 by way of reimbursement of legal costs, Order the company GISELA MAYER to pay the company N.J DIFFUSION the sum of 30,000 euros as an advance on costs if the decision relating to costs were to be the subject of separate proceedings, order GISELA MAYER to reimburse N.J. DIFFUSION for all costs of the proceedings. 10. GM, defendant in the main action, in its last statement of defence dated 18 June 2025 (in response to the voluntary interventions on behalf of the plaintiff), made the following requests: I. To declare inadmissible, or at least unfounded, the infringement action brought by NJ DIFFUSION SARL against GISELA MAYER GmbH on the basis of the claims of European patent EP 2 404 516 B1, in particular claims 1 to 4 and 7 to 9; to dismiss it; II. Declare inadmissible, and in any event unfounded, all the pleas, ends, submissions and claims of N.J. DIFFUSION SARL and the voluntary interveners; dismiss them; III. Order the company N.J DIFFUSION SARL and the voluntary interveners, in their capacity as such, to bear all legal costs and other expenses incurred by the company GISELA MAYER GmbH, and to pay it, at the very least, an amount of recoverable costs that will not be less than the applicable ceiling; IV. Order in solidum the company N.J DIFFUSION SARL and the voluntary interveners, ex officio, to pay the company GISELA MAYER GmbH an advance on costs of 50,000 euros (fifty thousand euros). V. In the ̀ alternative, in the event that the Court considers that the claim cannot benefit from the preferential treatment provided for by Article L. 622-17 of the French Commercial Code, to order the fixing of this claim as a liability of the company GISELA MAYER GmbH in the amount of €50,000 (fifty thousand euros) unless perfected.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 7 VI. In the further alternative : To make the execution of any decision or order of the Court in favour of the Plaintiff subject to the provision by the Plaintiff and by the voluntary interveners, ex officio, of a guarantee (by way of deposit of funds or bank guarantee) in favour of GISELA MAYER GmbH in the total amount of at least three hundred thousand (300,000) EUR, according to the breakdown below: - Injunction : One hundred and eighty thousand (180,000) EUR, or at least 60% of the value of the dispute ; - Damages : One hundred and twenty thousand (120,000) EUR, or at least 40% of the value of the claim; - Court costs, legal fees and other expenses: 110% of the amount to be enforced; Limit the amount of damages to the sum of four thousand five hundred and sixty-three (4,563) Euros; Limit the amount of any penalty to the sum of one hundred (100) Euros per day of delay. GROUNDS FOR THE DECISION Admissibility of NJ's infringement action 11. Rule 13.1 (n) of the UPC Rules of Procedure provides that: "1. the claimant shall file a statement of claim with the division of his choice [Article 33 of the Agreement], which shall contain : (...) n) the reasons why the facts relied upon constitute an act of infringement of the patent re- claims, including legal grounds and, where appropriate, an explanation of the proposed interpretation of the claims;" 12. GM maintains that NJ's infringement action is inadmissible because it does not meet the conditions laid down in Rule 13.1(n) RoP, in that the statement of claim is allegedly devoid of any claim interpretation and the plaintiff does not provide any reasoning justifying the infringement (§12 of the statement of defence). 13. However, in §61 and 62 of its statement of claim, the applicant sets out its arguments to prove its allegations of infringement, relying on a commentary of close-up photographs taken of the inside of the cap of one of the wigs marketed by GM and alleged to be infringing. This presentation, although succinct, is sufficient for the Court to consider that the reasons why the facts relied on constitute an act of infringement of the patent claims have been set out by the applicant, as required by Rule 13.1(n) RoP. 14. Moreover, the Court notes that the explanation of the proposed interpretation of the claims is not required by Rule 13.1(n), but may be provided "where appropriate". In the present case, the applicant considered that the interpretation of the terms of the opposing claims was not2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 8 not necessary because it considered that those terms did not have any particular meaning in the technical field of hairpieces that would differ from their common meaning and that the description of the patent did not give them any special meaning either (reply brief §98, §120 and 121). 15. Consequently, NJ's infringement action is admissible. The merits of the infringement action Presentation of the patent at issue 16. Patent EP'516 (NJ's exhibit 3), which NJ owns, is the result of an application filed on 7 July 2010 in French and was granted on 24 January 2018. It is entitled "Perruque et son procédé de fabrication". 17. This patent is in force at the time of NJ's infringement claim in the following contracting Member States: Belgium, Spain, France, Italy and Portugal (NJ Exhibit 3). 18. EP'516 relates to a wig and also to the process for manufacturing the same ([0001] of the Patent). 19. With regard to the technical field relating to hairpieces, the descriptive part of the patent explains that, nowadays, the use of wigs has increased considerably due to hair loss affecting all sections of the population and resulting from therapeutic treatments applied to combat certain serious illnesses (cancer, alopecia, etc.) ([0004] of the patent). 20. In the prior art, it is known that the cap or internal support of the wig consists, on the one hand, of a tulle or fine mesh fabric intended to cover the frontal, temporal and occipital areas and, on the other hand, of a monofilament intended to cover the vertex area ([0006] and Fig. 1 of the Patent). The Court notes that in the prior art, the connection zones between the cap and the monofilament are connected by a seam forming a fold (tucked or hemmed) on the reverse side of the selvedge ([0008] and Fig.1) and that these connection zones are covered by sewing and gluing flexible anti-slip strips [0010]. 21. Prior art wigs have disadvantages when it comes to sewing the monofilament to the edges of the tulle delimiting the vertex region to form a connection zone. These connection zones are made up of numerous overlapping fabrics: - Which is uncomfortable for the user (itching, trauma), - Which also detracts from aesthetics insofar as they can be visible, - In addition, the various connections require long and meticulous work to make the wig, which affects the cost price ([0012] to [0015] of the Patent). 22. Patent EP'516 proposes to overcome these difficulties by disclosing a lightweight, wearable wig, which also improves aesthetics because the connection areas are practically undetectable ([0020] to [0021]).2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 9 23. The patent at issue comprises 9 claims, including independent product claim 1 and its dependent claims 2 to 6, as well as independent process claim 7 and its dependent claims 8 and 9. 24. Claim 1 in French reads, according to the breakdown of the features proposed by the defendant and not contested by the plaintiff, and which the Court adopts as follows: "1.1 A wig comprising an internal support or cap (1) on which natural or artificial hair is implanted, 1.2 this cap (1) consisting of the assembly of at least two pieces of light, fine-mesh fabric(s) (2, 3) 1.2 a shaped to cover the different cranial zones of a user's head, 1.3 at least one of these pieces of fabric(s) consisting of a transparent fabric (3) called "monofilament", 1.4 characterised in that the adjacent selvedges (4, 5) of the monofilament piece (3) and of the parts (2) of the cap (1) joined by means of a thin strip 1.4a of a flexible and transparent or translucent material (6) 1.4 b covering and overlapping said selvedges (4, 5) forming a substantially flat joining area (7), 1.5 [characterised] in that the outer surface of the flexible joining strip (6) comprises an anti- slip film or coating, and 1.6 [characterised in that the adjacent selvedges (4, 5) of the monofilament piece (3) and of the parts (2) of the cap (1) contiguous with said monofilament piece (3) are placed edge to edge and 1.6a the flexible, transparent joining strip (6) covers and overlaps said selvedges (4, 5) " 25. Claim 7 in French reads, according to the breakdown of the features proposed by the defendant and not contested by the plaintiff, and which the Court adopts as follows: " 7.1. Method of manufacturing a wig according to any one of claims 1 to 6, 7.2. comprising an internal support or cap (1) consisting of the assembly of at least two pieces of light, fine-mesh fabric(s) (2, 3) shaped to cover the various cranial zones of a user's head, at least one of these pieces of fabric(s) consisting of a transparent fabric called a monofilament (3), characterised in that the adjacent edges (4, 5) of the monofilament piece (3) and of the parts (2) of the cap (1) contiguous with the said monofilament piece (3) are joined together by means of a thin strip (6) of a flexible and transparent or translucent material, the outer surface of which has an anti-slip film or coating, which is attached to the outer surface of the cap (1) by means of a thin strip (6) of a flexible and transparent or translucent material, the outer surface of which has an anti-slip film or coating, which is attached to the outer surface of the cap (1) by means of a thin strip (6).2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 10 skid-resistant film or coating, which is placed overlapping and overlapping on the said selvedges (4, 5) so as to form a practically flat assembly area (7)". 26. According to the applicant, the invention protected by the patent at issue makes it possible to overcome the disadvantages of the prior art associated with discomfort and lack of aesthetic appeal thanks to the configuration of the wig cap, in that the thin, flexible, transparent or translucent band covers and overlaps the adjacent edges (4 and 5) of the parts of the wig, forming a virtually flat assembly zone (§46 of the application). The applicant adds that the flexible assembly strip (6) intended to come into contact with the skin of the skull advantageously comprises an anti-slip film or coating (§48 of the application). This operation is described in [0028] of the patent and illustrated by Figures 4A and 4B: Interpretation of the disputed terms of the claims The person skilled in the art 27. The characteristics of the claims must be interpreted with regard to the person skilled in the art. In the present case, the Court adopts the definition proposed by GM relating to the person skilled in the art, which the applicant does not contest and which is appropriate to the present case: the specialist in the manufacture of wigs (page 23 of the statement of defence).2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 11 Principles of interpretation 28. In accordance with Article 69 of the European Patent Convention (EPC) and the Protocol on its interpretation, this Court adopts the standard of patent interpretation established by the Court of Appeal of the UPC in two orders (UPC CoA 335/2023 and UPC CoA 1/2024). 1) The patent claim is not only the starting point, but also the basis for determining the scope of European patent protection. 2) The interpretation of a patent claim does not depend solely on the strict and literal meaning of the terms used. On the contrary, the description and drawings must always be used to help interpret the patent claim and not just to resolve ambiguities in the patent claim. 3) However, this does not mean that the patent claim serves only as a guideline and that its subject matter may extend to what, taking into account the description and drawings, the patent owner had envisaged. 4) The patent claim must be interpreted from the point of view of a person skilled in the art. 5) In applying these principles, the aim is to combine adequate protection for the patentee with sufficient legal certainty for third parties. 29. With regard to claim 1, certain terms are discussed between the parties for the interpretation of the claimed subject matter. 30. The terms "light fabric", "fine mesh" : 31. GM points out that the patent in question does not define these concepts at all, even though the bonnet comprises at least two of these "light" "fine mesh" fabrics, and that tulle and monofilaments are examples of such a fabric (§73 of Gisela Mayer's statement of defence of 11 October 2024). 32. NJ points out that, under the terms of the patent, the word "tulle" is to be taken as equivalent to any light fabric formed of a network of fine meshes, more or less elastic, and that the word "monofilament" or "monofilament" is to be taken as equivalent to any light fabric formed of a network of fine meshes, more or less elastic. "monofilament" or "microskin" means a light, transparent or translucent fabric with very fine meshes, made by means of a particular weave (with reference to characteristic 1.a,b,c [0038]), NJ concludes that tulle and monofilament are therefore two types of light fabric with fine meshes (§116 of the reply brief). 33. The Court notes that the parties do not ultimately disagree on these terms. 34. The words "fine band" in claim 1 characteristic 1.4 : 35. NJ maintains that this qualifier has no special meaning in the technical field of hairpieces, which would differ from their common meaning, and that the description of the patent does not give them any special meaning either (reply brief §98). According to NJ, the characteristic that the assembly strip is "thin" is understood as having "very little thickness", according to the Larousse dictionary. 36. GM argues, on the contrary, that the term "thin" is subjective because its meaning depends on the context of the patent; in this case, the assembly strip must be sufficiently thin for it to provide2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 12 the function claimed in the patent, namely to form a "substantially flat" assembly area. According to GM, the patent indicates and claims (claim 5) a thickness of 0.05 mm to 0.15 mm [0054], and the defendant asserts that outside this range of values, it is impossible for a person skilled in the art to determine what thickness is sufficiently thin to provide a feeling of comfort to the wearer of the wig. Moreover, according to GM, the figures in the patent which help to interpret the patent indicate that the thickness of the assembly strip is similar to that of tulle or monofilament fabrics (see figures 4A and 4B for example above), so that the assembly area is virtually flat (pages 30 and 31 of the reply brief). 37. The Court follows GM's reasoning when it maintains that the strip is thin in order to allow the assembly area to be virtually flat, but does not follow it to the end in its reasoning when it deduces that the thickness of this strip necessarily measures between 0.05 mm to 0.15 mm because, as NJ points out in § 120 of its reply, claim 1 does not protect precise measurements relating to the thickness of the strip, and only dependent claim No. 5 proposes to fix the thickness in figures by taking the measurement margin as mentioned in the description of the patent. 38. The terms "edge to edge" (feature 1.6): 39. NJ points out that, whereas the embodiment in which the pieces of fabric are placed edge to edge "eliminates any excess thickness" ([0051], the embodiment in which the pieces are superimposed means that the excess thicknesses "are practically reduced" ([0025] compared with the prior art (§141 to 144 of the reply brief). NJ therefore submits that these are two embodiments which should be neither opposed nor distinguished, since they achieve the same end, which is to effectively reduce the disadvantage of excess thickness. 40. GM argues, on the contrary, that feature 1.6, which indicates an "edge-to-edge" assembly, cannot be equated with an "overlapping" assembly (§103 of the statement of defence), pointing out that without this express limitation to the method of achieving an "edge-to-edge" assembly, it would be impossible to distinguish between the two. "In view of the exchanges between NJ and the EPO during the grant phase, the patent would not have been granted by the EPO (§105 of the statement of defence). (see exhibits 5 to 7, and in particular GM's exhibit 6 entitled "BP6-EPO PROCEDURE - AMENDMENT OF CLAIMS"). The Court considers, as GM maintains, that the patent indicates in the description two distinct embodiments for ensuring the connection between the fabrics, either "edge to edge" or "superimposed" positioning, but that however only one embodiment is mentioned in claim 1, with the aim of limiting the scope of the invention. 41. The terms "transparent or translucent" (claim 1, features 1.4 a and 1.6 a): 42. NJ explains that the term "translucent" refers to a body "which allows diffuse light to pass through, without allowing objects to be distinguished through it" (cnrtl.fr in §121 of the reply brief) whereas "transparent" allows objects to be distinguished through it. NJ adds that the patent protects a material that can be either transparent or translucent in an equivalent manner.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 13 43. On the contrary, GM maintains, with regard to feature 1.6a, that the thin strip can only be "transparent", as opposed to "translucent", arguing that otherwise this feature would not add anything (§112 of the statement of defence). 44. The Court accepted NJ's reasoning that feature 1.6a does not preclude the assembly band from being translucent as opposed to transparent in that the properties of the assembly band are explicitly set out in feature 1.4a and that 1.6a refers to the assembly band only to explain the positioning of the adjoining selvages in relation to the other elements of the cap. The materiality of the infringement alleged by NJ A) Direct infringement (article 25 UPCA), principally 45. NJ asserts that GM's wigs in the "ELITE PREMIUM" range infringe its EP'516 patent. To this end, in its statement of claim (§61, page 21), the plaintiff analyses a photograph of one of GM's wigs (the subject of the online purchase report in NJ exhibit 8.9) on which, according to the claimant, it is possible to see the reproduction in particular of the characterising part of claim 1, namely: the adjacent selvedges of the pieces of fabric making up the cap are held edge to edge (in a contiguous position) by means of a thin strip of a flexible and translucent material covered with an anti-slip film, the said strip covering and overlapping the said selvedges (f) : NJ concludes that the reproduction of said characterising part is made evident in particular by the use of thin, flexible and translucent strips for the connection of the parts of2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 14 fabric making up the cap, which gives a flat connection zone compared with the prior art (§ 111 of the statement of claim and §62 of the statement of defence). 46. GM contests NJ's allegation, arguing firstly that the plaintiff does not rely on any evidence, since the mere reference to a photograph would be insufficient to prove infringement, and secondly that there is no evidence of infringement of NJ's patent by the marketing of the wig in the "ELITE PREMIUM" range. 47. With regard to the lack of evidence, the defendant is correct when it points out that it is not relevant to compare the allegedly infringing product with NJ's product, but that this comparison analysis must be carried out by comparing the allegedly infringing product with the re-sales of the opposing patent. This is what the plaintiff then does in its reply brief. 48. In particular, GM contests the absence of inclusion of the following features of claim 1 of the EP'516 patent, arguing that it is impossible to know from the simple photograph produced by NJ whether : (page 41 of the statement of defence §164): -(i) the adjacent selvedges of the pieces of fabric making up the cap are held edge to edge; -(ii) the band is thin; -(iii) the strip is made of a flexible, transparent material; -(iv) the connection area is flat compared to the prior art. 49. More specifically, the defendant argues that characteristic 1.6, which provides that: "the adjacent edges (4, 5) of the piece of monofilament (3) and of the parts (2) of the bonnet (1) contiguous with the said piece of monofilament (3), are placed edge to edge" because it is impossible visually to discover the positioning of the selvedges of the monofilament and the contiguous parts of fabric (§191 of the statement of defence). GM's ELITE PREMIUM wigs challenge the reproduction of features 1.4, 1.4a, 1.5, 1.6a and 1.6 of claim 1 of NJ's patent 50. GM contests the materiality of the infringement alleged by NJ, arguing that claim 1 is not reproduced in its features 1.4 ("fine"), 1.4 a (flexible) and 1.6a (trans-parent) and 1.5 (non-slip film or coating) by its wigs in the "ELITE PREMIUM" range (and more particularly "ELITE PREMIUM ULTRA LONG", "ELITE PREMIUM LONG", "ELITE PREMIUM MEDIUM LARGE", "ELITE PREMIUM MEDIUM", "ELITE PREMIUM BASIC CAP" and "ELITE PREMIUM SHORT"). (§293 R.36 of NJ + exhibits 7.4, 7.5, 7.6, 7.7, 7.8 and 7.9 of NJ) In addition, GM disputes the reproduction of feature 1.6 of claim 1.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 15 51. Reproduction of feature 1.4: Feature 1.4 reads: "the adjacent selvages (4, 5) of the monofilament piece (3) and of the parts (2) of the cap (1) contiguous to the monofilament piece (3) are joined by means of a thin strip of a flexible and transparent or translucent material (6) covering and overlapping the said selvages (4, 5), forming a substantially flat joining zone (7)". NJ asserts that a 1mm thick band would be "thin" compared to the anti-slip wig bands sold on the market (Reply brief 120) and a person skilled in the art would not consider this to be a significant difference. GM submits that the ELITE PREMIUM wig has an overlap and overlap of the tulle and monofilament selvedges by the assembly band means that the surface of the assembly band is placed above the surface of the fabric selvedges, that this forms a perceptible protrusion, that this does not correspond to the thin band within the meaning of the patent, i.e. it must be thin enough to form a virtually flat assembly area within the meaning of feature 1.4. The Court notes that claim 1.4 does not specify the thickness that can be described as thin, but points out that the thinness of the strip must make it possible t o achieve an assembly zone that i s "The Court also noted that, in the description part of the patent, the room for manoeuvre is limited to between 0.05 and 0.15 mm [0032 and 0054]. The Court also noted that, in the description part of the patent, the margin for manoeuvre is limited to between 0.05 and 0.15 mm [0032 and 0054], whereas in the alleged infringement product, the assembly strip is between 1 and 2 mms (see booklet page 18), which is far from the margin proposed in the patent. However, only dependent claim 5 gives precise figures. This is why the Court considers that the scope of claim 1 cannot be limited to this precise thickness margin of between 0.05 and 0.15 mm. In view of the allegedly infringing wig produced in the file, the Court notes that the strip of 1mm is thin enough for that the assembly zone appears as "virtually flat". 52. Therefore, the reproduction by the ELITE PREMIUM wig of feature 1.4 is demonstrated. 53. On the reproduction of feature 1.4a: Feature 1.4a reads: "of a flexible and transparent or translucent material". According to GM, the assembly band of the allegedly infringing wigs gives a certain rigidity to the fabric forming the wig so that it supports and predefines the shape of the skull (rejoinder §146 and 147). GM adds that NJ does not show that the assembly band is transparent. However, GM's arguments are not convincing. First of all, the Court notes from the handling of the ELITE PREMIUM wig submitted in evidence that it is2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 16 made of a soft material in that it can be bent and deformed easily and is flexible. As for the terms "transparent or translucent", as already stated above (cf. § 44), claim 1 considers these two terms to be equivalent: the band can be either transparent or translucent. And the term The word "transparent" in line 54 must be interpreted as either one or the other, and this is supported by the description in [0047]: "a flexible and transparent or translucent material". The Court can see from the products in evidence that the band of the ELITE wig is flexible and translucent. The "flexible and translucent" characteristic of claim 1.4a is therefore reproduced by the band of the ELITE wig. 54. Reproduction of feature 1.5 Feature 1.5 reads as follows: "the outer surface of the flexible assembly band (6) has an anti-slip film or coating". GM argues that the fact that it is possible to feel that the tape is non-slip by touching it does not show that it has a coating or film. (§149, rejoinder). However, the Court found that the touch of the band of the wig alleged to be infringing precisely demonstrates the presence of such a film or coating, the function of which is to act as a grip between the skull and the wig and is therefore non-slip. 55. Reproduction of feature 1.6a Feature 1.6a reads as follows: "the flexible and transparent assembly strip (6) covers and overlaps the said selvedges (4, 5)". It is sufficient that this band is not rigid and can easily be deformed to fit the shape of the skull, which is the case with the band of the ELITE wigs submitted for trial. This feature is therefore reproduced. 56. On the reproduction of feature 1.6 Feature 1.6 reads: "the adjacent selvedges (4, 5) of the monofilament piece (3) and the parts (2) of the cap (1) contiguous to said monofilament piece (3), are placed edge to edge". According to the defendant, this characteristic is not reproduced by the wig. GM claims that, in view of the photograph presented by NJ as the sole basis for the reasoning of the statement of claim, it is impossible visually to discover the positioning of the selvedges of the monofilament and the contiguous parts of the fabric, whereas characteristic 1.6 requires that the said selvedges be placed edge to edge. GM states that this feature is essential in the patent in question. (Statement of defence page 47). In addition, GM produced in evidence a magnification of the photographs of the wig alleged to be infringed by NJ (exhibits BP 8) showing that the monofilament and tulle fabrics were superimposed (page 55 of the statement of defence).2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 17 of the statement of defence). This overlapping area is hatched by the defendant (GM's photo- graph 8.6 on page 56 of the statement of defence) as follows : 57. GM concludes that for the ELITE PREMIUM wigs, the selvages of the monofilament and tulle fabrics are not placed edge to edge. 58. In its reply, NJ points out that although GM states that it implements the "superimposed" embodiment, it is indicated in the description "However, it is stated in the description [0025] of the patent that it is envisaged in this embodiment that the excess thicknesses are practically reduced compared with the prior art, yet handling the ELITE PREMIUM wigs leads to the conclusion that there is no tangible excess thickness in the connection areas. NJ therefore concludes that feature 1.6, which provides for edge-to-edge placement of the pieces of fabric, is necessarily reproduced literally. (Reply brief at pages 45 to 47). 59. However, as GM rightly points out (page 25 of the rejoinder), it is not contested that selvedges placed in superimposition are not claimed and are therefore excluded from the scope of the patent in question, since the patent relates only to wigs with adjacent selvedges edge to edge. Indeed, even if the description of the patent mentions a superimposed embodiment, this embodiment is not included in the claims, which delimit the perimeter of protection that the patentee can assert against its competitors. 60. NJ contests the fact that the ELITE PREMIUM wig uses superimposition. However, the Court notes that it is apparent from the enlarged photographs produced by GM (GM booklet no. 13A, no. 13B, 13C) and from the observations made at the hearing following the handling of the ELITE wigs produced, that the two types of fabric are superimposed under the assembly band. However, this procedure is not covered by claims 1 and 7 (which is constructed as a mirror image of claim 1). However, this "edge-to-edge" feature is essential. Indeed, this feature of the invention makes it possible to achieve the aims pursued by the patent at issue, and to overcome the disadvantages of the wigs of the prior art from the aesthetic point of view and from the point of view of the "edge-to-edge" feature.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 18 comfort. Moreover, this reference to "on board" was suggested during the grant procedure before the EPO and enabled the patent to be granted in this version by limiting its scope (see EPO exchanges in GM exhibits 5 and 6). The patent itself describes two distinct embodiments (0024 and 0028), the person skilled in the art will understand in the context of the patent that "edge to edge" is distinct from "superposition". It does not matter that the descriptive part retains the superimposed embodiment; what matters is the scope of protection as delimited by the claims, which are expressly limited to "edge to edge". The Court also noted that the addition of the words "placed edge to edge" in claim 1 should have resulted, at the grant stage of the patent, in the deletion of the "superimposed" method of making the invention referred to in the description, as this method does not fall within the scope of protection of the teachings of the patent as finally adopted in the claims. (cf Agfa v Gucci, Hamburg LD of 30 April 2025, UPC CFI 278/2023, Headnote 3: "Specifications in the description that are not con-sistent with the granted claims cannot serve as a basis of a broad interpretation of a claim"). 61. In the present case, the fact that the selvages in the ELITE wigs are superimposed instead of being "placed edge to edge" demonstrates the absence of reproduction of feature 1.6. NJ therefore failed to prove the materiality of the alleged infringement. 62. In conclusion, the Court dismissed all of NJ's claims for direct infringement of claim 1 by the ELITE PREMIUM wigs. The dependent claims (Nos. 2 to 4) opposed by NJ 63. Claims 2 to 4 are dependent claims of claim 1 and therefore include the same limitations in that they require, in particular, that the edges of the monofilament (3, red) and the contiguous parts of the cap (2, blue) be placed edge to edge. It follows that, for the same reasons as those set out to show that claim 1 is not reproduced, there is no infringement of dependent claims 2 to 4. Concerning process claim 7 and dependent claims (8 and 9) 64. The main process claim 7 is constructed as a mirror image of product claim 1. Accordingly, the arguments developed in relation to feature 1.6 are also relevant to the process claim in that it has not been shown that the ELITE PREMIUM wigs reproduce the process whereby the selvedges are placed edge-to-edge, since they are superimposed, in view of the infringing product on file. 65. For the same reasons, there is no infringement of the two dependent claims 8 and 9 of the patent at issue. 66. Consequently, NJ has failed to demonstrate infringement of GM's ELITE PREMIUM wigs under article 25 UPCA and will be dismissed of all its subsequent claims.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 19 B) Infringement by equivalence (Art. 26 UPCA), in the alternative Admissibility of the claim 67. GM raises the inadmissibility of the claim for infringement by equivalence on the ground that it is out of time. 68. In its statement of claim, NJ made claims based solely on Art. 25 UPCA, i.e. on direct infringement. The claim based on Art. 26 UPCA was only raised in the alternative at the reply stage, after GM's statement of defence. 69. NJ contests the belated nature of the proceedings, relying on point 7 of the Preamble to the Rules of Procedure (§161 Reply), which allows the evolving nature of the proceedings to be taken into account, and refers to an order made by the UPC Brussels Local Division (8 July 2024, DL de Bruxelles, 8 July 2024, ORD 37783/2024), which stated: "the rights of the defence therefore allow a party to adapt or supplement its arguments (whether or not supported by new documents) and its claim in the way it considers necessary". The Court noted that the case-law of the UPC's Court of First Instance cited above was relevant, since the Brussels Local Division had ruled in that way in the context of a motion to declare inadmissible a new infringement argument based o n equivalence, the Judge-Rapporteur having dismissed that motion on the ground that the proceedings were ongoing, that if the other party had the opportunity to respond (respecting the adversarial principle and the rights of the defence) to this new request, the other party had the right to evolve in its procedural strategy if this did not modify its nature but was only an amendment to it. This order was appealed to the Court of Appeal of the UPC, which rejected the appellant's arguments on the grounds that "the CFI has a certain discretion" (21 November 2024, UPC CoA 456/2024, APL 44633/2024). 70. In the present case, the Court considers that the claim for infringement by equivalence which arises just after the statement of defence is not out of time (at the stage of the reply statement), because that claim does not change the nature of the plaintiff's procedural strategy, which it is merely adapting in the light of the arguments developed by GM in its defence, and the defendant was able to respond to them in its rejoinder. For these reasons, the claim for infringement by equivalence is admissible in this case. The merits 71. NJ argues that GM would have achieved the same result of no extra thickness in the connection areas while changing the arrangement of the adjacent selvedges of the fabric pieces sufficiently to avoid literal reproduction. (§164 Reply brief) 72. In order to support the existence of infringement by equivalence by the ELITE PREMIUM wig on which the adjacent selvedges are superimposed and not placed edge to edge, NJ invokes Article 69.1 of the EPC, in order to maintain that account must be taken of the description2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 20 and drawings of the patent to interpret the claims and notes that the superimposed embodiment is mentioned therein. Legal background : 73. According to Article 24 UPCA, the sources of substantive law for deciding disputes before the UPC include the EPC. 74. Article 2 of the Protocol interpreting Article 69 EPC - which supplements the first article of the Protocol - states: "In determining the scope of protection, due account shall be taken of any element equivalent to an element indicated in the claims." 75. However, this does not mean that the description and drawings can be used to extend the scope of patent protection. 76. In support of its claim, NJ sets out the French law applicable to infringement by equivalence. However, in the absence of an agreement between the parties to apply a particular national law on this point, the case law on equivalence as developed within the UPC should be applied here. To date, a decision on the equivalence test has been handed down by the Local Division of The Hague (22 November 2024, UPC CFI 239/2023): "The test applied to the assessment of infringement by equivalence is based on the case law in various national jurisdictions, as proposed by both parties in this case. This entails that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative. 1) Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context? 2) Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee? 3) Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally? 4) Is the allegedly infringing product novel and inventive over the prior art?" 77. The Court notes that this equivalence test, which is an application of the case law developed by the Dutch national courts, was adopted by the Local Division of The Hague following an agreement between the parties on this type of test, which is not the case in the present dispute. (§88 of the decision of the Local Division of The Hague) 78. On the other hand, the decision of the Mannheim Local Division of 6 June 2025 (CFI 471/2023) refers to a harmonised approach within the UPC and proposes criteria resulting from a compromise between the different doctrines within the Member States, which the Paris Local Division adopts because this proposal is in line with the spirit of the UPC Agreement which aims to reduce, as indicated in its recital no. 2, "the fragmentation of the patent market and the significant variations between Member States".2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 21 the fragmentation of the patent market and the significant variations between national jurisdictional systems", which "are detrimental to innovation, in particular for small and medium-sized enterprises, which have difficulty enforcing their patents and defending themselves against unfounded actions and actions relating to patents which should be annulled". 79. This decision of the Mannheim Local Division states in its "Headnotes" (free English translation of the original German version): -According to all doctrines of equivalence or equivalence tests of the UPC contracting member states, equivalent patent infringement is ruled out if there is no technical-functional equivalence of the substitute means in the sense that the modified means do not fulfil essentially the same function in order to achieve essentially the same effect. If the same function is not taken as a basis, at least essentially the same effect is taken as a basis (following the Brussels UPC LD, 17 January 2025, para. 98 CFI 376/2023)". 80. In its decision of 17 January 2025 (CFI 376/2023), the Brussels Local Division did not rule on the equivalence test to be adopted, but indicated that under the two tests proposed by the applicant, it was necessary for at least the function to be reproduced and that in the absence of such reproduction, there would in any event be no reproduction by equivalence. Headnotes 3 and paragraph 98 of the decision state: "In the absence of functional equivalence, there can be no infringement in equivalence (whatever equivalence test is applied)". In the present case : 81. In the light of this UPCA case law, the present Division considers, on the one hand, that it is appropriate to adopt the most harmonised interpretation possible within the UPCA when ruling on infringement claims by equivalence and, on the other hand, that in all cases, in view of the different tests practised within the contracting UPCA Member States, it is appropriate to answer first of all a question which is the lowest common denominator and which constitutes the first criterion for the examination of equivalence: Do the modified (or substitute) means perform essentially the same function to achieve essentially the same effect? 82. In the present case, in view of the allegedly infringing wigs produced and the explanations given by the parties at the oral hearing when handling the said products, the Court finds that the essential function of the translucent strip on the ELITE product is not that of joining the two fabrics (the function taught in the patent at issue) since the two fabrics are joined by the two seams which are positioned on the anti-slip strip, but has, in reality, the function of covering the seams for greater comfort for the user. 83. In the absence of the same function as that taught in the patent, infringement by equivalence cannot be upheld. 84. Consequently, infringement by equivalence is not established, as NJ has failed to prove it.2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 22 Legal costs (Article 69 UPCA): Primarily, 85. GM is seeking an order in solidum against NJ and the voluntary interveners, ex officio, to pay an advance on costs in the amount of 50,000 euros. GM is seeking an order for payment against NJ, a debtor in receivership, on the grounds that this claim would benefit from the preferential treatment provided by article L. 622-17 of the French Commercial Code. NJ is contesting this claim for payment. 86. The applicable law is the law of the Member State in which the insolvency proceedings are opened (Art. 7 of EU Regulation no. 2015/848 of 5 June 2015 known as the "Insolvency Regulation"), i.e. French law in this case. - With regard to NJ's situation, Article L.622-7 of the French Commercial Code, applicable by reference from Article L. 631-14 to receivership proceedings under the same code, determines the principle of prohibition of payments to prior creditors and subsequent creditors with the exception of claims covered by Article L. 622-17 of the same code. 87. In order to determine the fate of the claim, it is necessary to determine whether the claim arises after the commencement of the proceedings and whether it is relevant to the proceedings. In accordance with the established case law of the French Court of Cassation, claims for costs are based on the non-contractual liability of the parties to the proceedings in progress. They are generated by the decision determining their existence and amount and imposing an order (Cass. 3e civ., 7 Oct. 2009, no. 08-12.920; Cass. com., 21 Jan. 2003, no. 99- 21.560; Cass. soc., 12 Feb. 2003, no. 99-42.985). The claim for which GM is seeking payment is therefore a claim arising after the date on which the collective proceedings were opened. 88. However, it is necessary to determine whether the subsequent claim for which GM is seeking payment falls within the scope of Article L. 622-17 of the French Commercial Code, i.e. whether it constitutes a subsequent, regular and useful claim. In this case, the parties did not contest the regular nature of the claim, given the intervention of the insolvency administrator in the proceedings. 89. It remains for the Court to determine whether the subsequent and valid claim is useful, in other words, whether it arose "for the purposes of the [insolvency] proceedings or the provisional maintenance of the business authorised pursuant to Article L. 641-10 or in consideration of a service provided to the debtor during such maintenance of the business". According to established case law of the Cour de cassation, claims for costs do not constitute a claim relevant to the insolvency proceedings, given that such claims have only an incidental temporal link with the collective proceedings (Cass. 3eciv., 8 July 2021, no. 19-18.437; Cass. com., 9 Dec. 2020, no. 19-17.579). In this case, the Court noted that the costs were only useful for improving the economic activity of the debtor in receivership. 90. Consequently, the subsequent claim not covered by the preferential right under Article L. 622-17 of the French Commercial Code remains subject to the discipline of collective proceedings. As the debtor2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 23 ordered to pay a claim (Cass. com., 11 May 1993, no. 91-11.951). - With regard to the situation of the voluntary participants, it is requested that they be ordered in solidum. As court-appointed administrators and court-appointed representatives of the collective proceedings, i.e. "insolvency practitioners" within the meaning of EU Regulation no. 848/2015, their liability is subject to the lex concursus in accordance with Article 7(c) of that Regulation. However, the French Cour de cassation has repeatedly stated that the liability of insolvency practitioners is a special liability regime that requires proof of serious and independent fault. Such a fault is established, for example, if the court-appointed administrator decides to continue with the proceedings in progress when the company's situation is irretrievably impaired and he does not request the cessation of business or the liquidation of the company (Cass. com., 18 Jan. 2000, no. 98-19.692; Cass. com., 26 Nov. 2002, no. 01-11.437). 91. In the present case, the Court noted that GM, which merely pointed out that the bodies of the collective proceedings had chosen to continue the proceedings in progress (§18 of GM's last pleading), had in no way demonstrated the existence of fault, even though that power was vested in them in accordance with Article L.622-22 of the French Commercial Code. 92. Consequently, the Court finds GM inadmissible in its principal claim for an order for payment of provisional costs against NJ, and ill-founded with regard to the voluntary interveners. -In the alternative 93. GM asks the Court to order the fixing of the same claim and for the same value as NJ's liabilities. 94. In accordance with the applicable national law, the Court must set the amount of the claim so that it is included in the liabilities of the debtor that is the subject of the collective proceedings (Cass. com., 24 Apr. 2007, no. 05-17.452). Accordingly, the Court declares that GM's request to fix an indemnity claim by way of provision for its representation costs in accordance with article 69 UPCA so that this claim can be added to NJ's liabilities is well- founded, and fixes it at 50,000 euros, an amount that appears reasonable and proportionate in the light of the case, and justified by the certificate produced by GM as exhibit 26. 95. The Court adds that it is not necessary to rule on GM's claim in warranty made in the very alternative, when NJ's claims have all been rejected. FOR THESE REASONS, The Court of First Instance of the UPC :2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 24 1- Acknowledges the voluntary interventions of the bodies involved in the collective proceedings and the resumption of the proceedings after GISELA MAYER's claims have been declared to the creditors' representative, 2- Holds that the infringement action brought by NJ DIFFUSION, assisted by its insolvency administrator, against GISELA MAYER is admissible, 3- Rejects all the claims of NJ DIFFUSION assisted by its receiver against GISELA MAYER for infringement, direct or by equivalence, based on the European patent EP 2 404 516, as well as all subsequent claims, 4- Holds that NJ DIFFUSION, assisted by its insolvency administrator, must bear the entire costs of the present proceedings, rejects the request for an order for payment in this respect and sets the claim as a liability of the collective proceedings opened against NJ DIFFUSION at the amount of 50,000 euros in respect of the provision due for GISELA MAYER's representation costs, 5- Holds that this decision may be appealed in accordance with rule 220.1 (a) RoP. Delivered in Paris, on 1stAugust 2025. C. LIGNIERES, Presiding Judge and Judge-Rapporteur, Date: 2025.08.01 10:59:38 +02'00' C. GILLET, legally qualified judge, 2025.07.31 14:47:36 +02'00' S. SCHILLING, legally qualified judge, Stefan Schilling Digital unterschrieben von Stefan Schilling Datum: 2025.07.31 12:36:48 +02'00'2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 25 C. FERHAT, Registrar, CHARLOTTE CAMILLE Digital signature of CHARLOTTE CAMILLE CLAIRE FERHAT CLAIRE FERHAT Date: 2025.07.31 15:00:04 +02'00' DETAILS OF THE ORDER Order nº ORD 69410/2024 in ACTION Nº: ACT 39091/2024 UPC nº : UPC CFI 363/2024 Type of action: Infringement action2025-08-01 LD Paris UPC CFI 363-2024 ACT 39091-2024 ORD 69410-2024 en-GB.pdfDeepL machine translation provided by www.veron.com

Key Holdings

  • The scope of patent protection is delimited by the claims, not by broader descriptions of embodiments not included in the claims (e.g., 'edge-to-edge' vs. 'superimposed' modes).
  • A claim for infringement by equivalence, introduced at the reply stage after the statement of defence, is admissible if it adapts the claimant's procedural strategy without changing its fundamental nature and the defendant has an opportunity to respond.
  • The lowest common denominator for assessing infringement by equivalence across UPCA Member States is whether the modified means perform essentially the same function to achieve essentially the same effect.
  • In the absence of functional equivalence (i.e., the modified means not performing the same function as taught in the patent), infringement by equivalence cannot be upheld.
  • Claims for legal costs arising after the commencement of insolvency proceedings do not constitute 'useful' claims relevant to the insolvency proceedings under French law, as they have only an incidental temporal link.

Tags

  • Claim Construction
  • Costs
  • Direct Infringement
  • Doctrine of Equivalence
  • Late Submissions
  • Scope of Protection

Related Rules

Related Cases