UPC_CFI_479/2025_Sep17_Service – Washtower v IBG

Court
Local Division The Hague
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

PI proceedings Facts The applicants started preliminary injunction (“PI”) proceedings against the defendants claiming infringement of their patent relating to a cabinet for a washing machine. The defendants argued that the patent is invalid for added matter and lack of inventive step. The defendants further argued that they do not infringe because their L-shaped retaining member is made of plastic and not (as the claim requires) from metal. Lastly, they argued that the case was not urgent. The Court The defendants argued that the L-shaped retaining member was added during prosecution and constitutes added subject-matter (basically arguing intermediate generalization). The Court observes that during prosecution at the European Patent Office (“EPO”), the examining division had held the same, but that on appeal the Board of Appeal ruled that there was no added subject-matter and thus no violation of Art. 123 (2) of the European Patent Convention (“EPC”). The Court rules that this finding in itself already means that it is not more likely than not that the patent is invalid. However, the Court further develops why there is no added matter. The defendants argued that D1 is the closest prior art. The Court tends to agree with the applicants that D1 is not a realistic starting point despite the fact that the EPO used D1 as the closest prior art. The Court states that it does not matter, as no combination with D1 would make the invention obvious. The Court discusses the different combinations and also inventive step starting from D8. On infringement, the Court considers the plastic L-shaped retaining member as an equivalent to the metal L-shaped retaining member. The Court applies (as proposed by the parties) the equivalence test used in The Netherlands which it had already applied in Plant-e v Arkyne. The Court justifies this decision in the absence of guidance from the Court of Appeal. It also points to the need for a harmonized approach among Contracting Member States and observes that in all UPC countries a finding of infringement always requires that the variant performs essentially the same function as the element recited in the claim, with essentially the same result. Protection also cannot extend to what is not new or inventive over the prior art. Similarly, legal certainty for third parties and a fair protection for the patentee usually return in the doctrines of equivalence in some way or form as developed in the case law of the UPC Contracting Member States. The Court finds necessity and urgency (a two-month “delay” can still fulfill the urgency requirement). The Court grants the injunction against security (€ 25,000 for enforcing the injunction, € 75,000 for enforcing the recall) and an interim award of costs of € 62,000. The Court fixes penalty sums for non-compliance and orders the defendants to give information (origin, distribution channels, identity of producers or distributors). Comment The Court rules that, as the Board of Appeal of the EPO had already decided on the added matter attack, it is not more likely than not that the patent is invalid. I think that, indeed, if the Board of Appeal has already decided on an invalidity objection identical to a defence in PI proceedings, this defence should not be successful. Moreover, the Court itself gives a convincing reasoning. As noted earlier, it seems that the Court of Appeal of the UPC has a somewhat more liberal view than the EPO on “intermediate generalization”. Accordingly, if the Board of Appeal has already ruled that there is no intermediate generalization then it is very unlikely that this can succeed in the UPC. As I have said before, I am not a big fan of the Dutch equivalence test, and it would be better to adopt the function-way-result test as applied in the United States. The test applied by the Local Division is not applied in any other country of the UPC. The Dutch Supreme Court has only ruled that this test is not contrary to Art. 69 EPC, without deciding that it is the only possible test. In my opinion, the test allows the Court to reach the result it wants to achieve, by referring to the fair protection for the patentee and legal certainty of third parties. In other words, the test offers insufficient guidance to the parties and makes the outcome too unpredictable. However, in the circumstances of this particular case, clearly the result would have been the same also under the function-way-result test.

Full Decision Text

UPC_CFI_479/2025 ACT_25599/2025 Final Order of the Court of First Instance of the Unified Patent Court delivered on 17/09/2025 CLAIMANTS 1) Washtower IP B.V. Represented by Peter van (Applicant) - Enschedesestraat 300 - 7552 CN - Schijndel Hengelo - NL 2) Washtower B.V. Represented by Peter van (Applicant) - Enschedesestraat 300 - 7552 CN - Schijndel Hengelo - NL DEFENDANT/S 1) Wasombouw B.V. Withdrawn (Defendant) - Frankrijkstraat 3 – 5171 PR - Kaatsheuvel - NL 2) INDUSTRIEBETEILIGUNGS- UND BERATUNGS Represented by Volkmar Henke GMBH (Defendant) - Pyrmonter Straße 78 - 32676 - Lügde - DE 3) BEGA CONSULT INTERNATIONALE Represented by Volkmar Henke HANDELSAGENTUR GMBH & CO. KG (Defendant) - Siemensstraße 2 - 32676 - Lügde - DE 1 4) BEGA BBK SP. Z O.O. SP. K.UL. Represented by Volkmar Henke (Defendant) - Poznańska 113A - PL 62-052 - Komorniki - PL 5) NEG NOVEX WHOLESALE COMPANY FOR Represented by Volkmar Henke ELECTRICAL AND BUILDING SERVICES ENGINEERING GMBH (Defendant) - Chenover Straße 5 - 67117 - Limburgerhof - DE PATENT AT ISSUE Patent no. Proprietor/s EP3522755 Washtower IP B.V. No SPC details provided Patent no. SPC details SPC ID National Designations No SPC Holders provided Patent SPC National Holders no. ID Designations DECIDING JUDGE Presiding judge Edger Brinkman Judge-rapporteur Edger Brinkman LANGUAGE OF PROCEEDINGS: English 2 SUBJECT-MATTER OF THE PROCEEDINGS Provisional measures GROUNDS FOR THE ORDER Following the order of 11 September 2025, rendered by this Court in the above-referenced matter, applicants indicated they wish to enforce: (a) the injunctions given in part I.B and I.C of the operative part of the Order; (b) the order to render information in part II of the operative part of the Order; (c) the penalty sums in part IV of the operative part of the Order; (d) the costs award in part V of the operative part of the Order; The Court has received the security deposits as mentioned in the order to the amount of (2x€ 25,000=) € 50,000. This means service and enforcement may proceed. In their reply of 16 September 2025, defendants 2-5 kindly indicated that service may be performed electronically using the email address of the registered representative mentioned above. Hence, electronic service of the final order is to proceed pursuant to R. 276.1 juncto R. 271.1.c RoP and Art. 19.1.b Service Regulation. Defendants 2-5 also indicated they do not require translations into German and/or Polish, so the English original version will suffice. ORDER The Court: - orders the Registry to proceed with electronic service on defendants 2-5 by email to the above-mentioned representative at Henke@bardehle.de, - stipulates that applicants have indicated they wish to enforce: (a) the injunctions given in part I.B and I.C of the operative part of the Order; (b) the order to render information in part II of the operative part of the Order; (c) the penalty sums in part IV of the operative part of the Order; (d) the costs award in part V of the operative part of the Order; ORDER DETAILS Order no. ORD_36945/2025 in ACTION NUMBER: Not provided UPC number: UPC_CFI_479/2025 Action type: Not provided Related proceeding no. Application No.: 25599/2025 Application Type: Application for provisional measures (RoP206) Edger Frank Digitally signed by Edger Frank Brinkman BRINKMAN BRINKMAN Date: 2025.09.17 11:58:42 +02'00' Larissa Donata Digitally signed by Larissa Donata Hageman On behalf of the registry Hageman Date: 2025.09.17 12:10:57 +02'00' 3

Key Holdings

  • Service of judgment ordered via Registry.
  • Representatives consented to accept service.
  • Enforcement security posted.

Tags

  • Enforcement
  • Judgment
  • Security for Costs
  • Service

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