UPC_CFI_466/2025; UPC_CFI_869/2025 – Dai Nippon v Zapp

Expert Commentary

Infringement Facts 1. The case concerns infringement and revocation actions with respect to EP 3 805 415. 2. The Court refused late-filed documents by the defendant while holding that the claimant may invoke such late-filed documents. 3. The Court described the patent and defined the skilled person. 4. After stating the principles of claim interpretation and it discussed the claim on the points where parties disagreed. The Court 1. The Court decided that claim 1 is a product claim and not a method claim. 2. The Court stated that this is not a case with unusual parameters and leaves undecided if in such cases with respect to novelty, the patentee will have (a part of) the burden of proof. 3. The Court rejected the invalidity arguments. Contrary to the opinion of defendant, the Court holds that the description sufficiently discloses how to work the invention. 4. With respect to the novelty objection the Court stated: “1. Anyone relying on "prior public use" must demonstrate and prove that a product embodying all the features of the invention was made available to the public before the priority date—that is, without the recipient being subject to any express or implied obligation of confidentiality. 2. Since the circumstances of an alleged prior public use typically fall entirely within the sphere of the party invoking it, strict requirements apply to the evidence provided: it must be proven comprehensively what was made available, when, to whom, and under what circumstances. This includes, in particular, establishing with sufficient certainty that the sample material examined corresponds to the product actually supplied (proof of identity). 3. The disclosure of a broader numerical range does not automatically anticipate—in a manner that destroys novelty—a narrower, claimed range contained within it. This applies all the more when several parameters must be met cumulatively, and the prior art does not even address some of the claimed numerical ranges.” 5. The patent is inventive: “to obtain the invention the skilled person would have do numerous tests and calculates with lots of effort. This amount to an inventive step with respect to D1”. 6. The two other inventive step attacks failed because of lack of incentive. 7. The claim interpretation leads to a finding of infringement. 8. The Court applied the German and French law on the private prior use defence and rejected that defence. With respect to Germany, the Court states that even if the defendant would have delivered planks which fall under the claim before the priority date that that does not mean that it was in possession of the invention. What is decisive is whether the technical teaching of the invention “objektiv als Fertig herausstelt hat und subjektiv als solche erkannt wurde”. 9. Also under French law “possession of the invention” is the central element of a private prior user’s right, just like in Germany. 10. The Court granted the injunction. 11. The parties had agreed on costs. Comment I think that all general considerations of the Court are correct: a. According to the general rule, the party arguing public prior use has the burden of proof. If the proof is not based on objectively verifiable facts but on facts and/or evidence in the control of the party who alleges prior use a stricter attitude, then ”it is more likely than not” is in my opinion logical and acceptable (although “up to the hill” or beyond reasonable doubt” may go too far). b. That a specific range within a broader range can be novel is certainly acceptable. c. If a product is delivered that falls under the scope of the claim but nobody realizes that it embodies an invention, then the decision that the one who has delivered such product does not possess the invention seems plausible. However, I struggle with the fact that somebody who manufactures or possesses such a product would infringe the later granted patent.

Key Holdings

• A party relying on prior public use bears the burden of proof and must strictly establish what was made available, when, to whom, and under what circumstances without confidentiality, including proof of identity of the examined sample.
• Disclosure of a broader numerical range in the prior art does not automatically anticipate a narrower claimed range contained within it, particularly where multiple parameters must be met cumulatively.
• To establish a private prior use defence under German and French law, possession of the invention is decisive, requiring that the technical teaching was objectively finalized and subjectively recognized as such.
• A technical teaching involves an inventive step over prior art where obtaining the claimed invention requires the skilled person to undertake numerous tests and calculations with substantial effort.

Tags

• Infringement
• Prior public use
• Novelty
• Inventive step
• Prior use defence

Related Cases

• UPC_ CFI_869/2025 – Dai Nippon v Zapp
• UPC_CFI_466/2025; UPC_CFI_869/2025 – Dai Nippon v Zapp