UPC CFI 50/2024 – Yellow Sphere Innovations GmbH and Erwin Härtwich v Knaus Tabbert AG

Expert Commentary

Full Decision Text

1 Local Chamber Düsseldorf UPC CFI 50/2024 Decision of the Court of First Instance of the Unified Patent Court pronounced on April 10, 2025 concerning EP 3 356 109 B1 LEADERSHIPS: 1. Product-by-process claims are characterized by the fact that the technical content of the invention regularly does not consist in the process as such, but in the technical properties to the product by the process. The decisive factor is how the person skilled in the art understands the information on the manufacturing process and what conclusions he draws from this with regard to the nature of the product according to the invention. 2. Any financial compensation due to the use of the published EP application also falls within the jurisdiction of the Unified Patent Court (Art. 32(1)(f) UPCA). Since such compensation is neither regulated in the UPC Regulation nor in the UPCA, the court must apply the provision of Art. 67 EPC on the basis of Art. 24 para. 1 lit. c) UPCA, which grants the member states leeway with regard to the structure. As there is currently no uniform regulation on the issue of compensation, it is initially up to the claimant seeking compensation to set out the conditions for compensation for the individual member states in question. KEYWORDS: Product-by-process claims; production route; compensation claims; limitation period 2 Plaintiff: 1. Yellow Sphere Innovations GmbH, legally represented by its managing director, Mr. Guido Endert, Schmiedhofsweg 1, 50769 Cologne, Germany 2. Erwin Härtwich, Äuleswiesen 34, 71573 Allmersbach, Germany represented by: Attorney Dr. Dirk Jestaedt, Krieger Mes & Graf von der Gro- eben Partnerschaft mbB, Bennigsen-Platz 1, 40474 Düsseldorf, Germany Electronic address for service: info@krieger-mes.de Third party defendant: Alexander Christ, Schmiedhofsweg 1, 50769 Cologne represented by: Attorney Dr. Dirk Jestaedt, Krieger Mes & Graf von der Gro- eben Partnerschaft mbB, Bennigsen-Platz 1, 40474 Düsseldorf, Germany Electronic delivery address: info@krieger-mes.de contributor: Patent attorney Rüdiger Bals, Bals & Vogel Patentanwälte PartG mbB, Konrad-Zuse-Straße 4, 44801 Bochum, Germany Defendant: Knaus Tabbert AG, Helmut-Knaus-Straße 1, 94118 Jandelsbrunn, represented by: Attorney Dr. Rüdiger Pansch, Attorney Dr. Simon Klop- schinski, Rospatt Rechtsanwälte PartGmbB, Emanuel- Leutze- Straße 11, 40547 Düsseldorf, Germany Electronic delivery address: pansch@rospatt.de Contributing: Patent attorney Dr. Oliver Schneider, attorney Eugen Tuscherer, advotec. Patent- und Rechtsanwaltspartnerschaft Tappe mbB, Georg-Schlosser-Straße 6, 35390 Gießen, Germany STREITPATENT: European Patent No. EP 3 356 109 B1 SPRUCHKÖRPER/KAMMER: Panel of the Düsseldorf Local Chamber 3 CONTRIBUTING JUDGES: The decision was pronounced with the participation of Presiding Judge Thomas as the judge, the legally qualified judge Dr. Thom, the legally qualified judge Brinkman and the technically qualified judge Ashley. LANGUAGE OF PROCEDURE: German SUBJECT MATTER: Action for infringement and action for annulment ORAL NEGOTIATION: February 13, 2025 BRIEF DESCRIPTION OF THE FACTS: 1. The plaintiffs are suing the defendant for infringement of the European patent EP 3 356 109 B1 (hereinafter: patent in suit). 2. The patent in suit was filed on January 25, 2017, claiming the priority of DE 10 2016 101 274 of January 25, 2016, by the plaintiff 2) and the third-party defendant in the German language of the proceedings. The notice of grant of the patent was published on March 9, 2022. The patent in suit is in force in Germany, France, Ireland, Italy and Slovenia. No opposition against the grant of the patent in suit was with the European Patent Office. The opt-out declared on May 15, 2023 in relation to the patent in suit was withdrawn on February 2, 2024. 3. On December 30, 2022, the parties, including the third-party defendant, entered into a "Declaration of sale and transfer for the property right complex for the German priority application DE 10 2016 101 274 entitled 'Frame for a vehicle with at least one structural part made of foam resin and manufacturing process therefor'". With regard to the content of this agreement, reference is made to Annex K 1. 4. The patent in suit is entitled "Frame for a vehicle with at least one structural part made of foam resin and manufacturing method therefor". Its claims 1, 3, 4, 7 and 9 are as follows: Protection claim 1: "Frame (11) for a vehicle (10) having at least one structural part (15), the structural part (15) being produced as a cast part (52) in a mold (50), and the mold (50) reproduces the three-dimensional outer shape of the structural part (15), the structural part (15) being formed by a self-swelling foam resin (20), characterized in that that the structural part (15) is at least partially coated on the outside with a protective layer (19), whereby the existing structural parts (15) a load-bearing part of the frame (11)." Protection claim 3: "Frame (11) according to claim 1 or 2, 4 characterized in that that at least one insert element (16) is provided in the structural part (15), which is at least partially cast in." Protection claim 4: "Frame (11) according to claim 3, characterized in that in that the insert element (16) is a reinforcing element (17) and improves the mechanical strength, in particular the tensile and/or compressive strength, of the structural part (15), wherein the reinforcing element (17) is formed of at least glass fibers, carbon fibers, reinforcing mat, sandwich structure, inner core, metallic reinforcing element or a combination thereof and/or that the insert element (16) is a connecting element (18), whereby the structural part (15) can be connected to other parts, in particular to the frame (11) of the vehicle (10)." Protection claim 7: "Frame (11) according to any of the preceding claims, characterized in that in that the foam resin (20) has a density of between 100 and 300 kg/cbm, preferably between 130 and 200 kg/cbm and particularly preferably between 140 and 180 kg/cbm and/or in that the foam resin (20) has a thermal conductivity of between 0.1 and 0.015 W/(m*K), preferably between 0.08 and 0.02 W/(m*K), particularly preferably between 0.05 and 0.021 W/(m*K) and/or the structural part (15) has a tensile strength of between 15 and 25,000 N/mm, preferably between 30 and 10,000 N/mm, particularly preferably between 45 and 2,000 N/mm, and between 100 and 1,600 N/mm." Protection claim 9: "Frame (11) according to any of the preceding claims, characterized in that that a free space (11.1) between at least two structural parts (15) can be filled by a filling element (12), wherein in particular the filling element (12) is designed as a wall (12.1) and/or roof element (12.2), and wherein in particular at least one recess (12.3) for a window or a door can be provided." 5. Figures 1, 4 and 5 below show preferred embodiments of the invention. Figure 1 is a three- dimensional view of a structural part with indicated insert elements: 5 6. Figure 4 shows a frame for a caravan with the structural parts in a three-dimensional view, whereby the frame in Figure 5 has additional filling elements: 7. Plaintiff 2) is, inter alia, the owner and managing director of Freitec Kunststoffe GmbH and Freitec Technologies GmbH. In the past and even before the application for the patent in suit was filed, he concluded a development agreement with the defendant together with the third defendant (and together with their companies), which was also implemented over a certain period of time. This development involved the implementation of the invention according to the patent in suit for caravans or mobile homes of the defendant and specifically the development of a lightweight caravan with the "frame concept" for such mobile homes or caravans, as is the subject matter of the patent in suit. 8. Together with the third-party defendant, plaintiff 2) built a test model on the basis of the development contract, whereby the required characteristics were confirmed in a test. The defendant marketed this model under the name "Travelino" and then commissioned a further concept for a "Deseo" caravan. Plaintiff 2) and the third-party defendant also created this concept and provided the production data for this model. The parties did not conclude an agreement granting rights of use. There was no feedback on this upon request. 9. The defendant subsequently commissioned plaintiff 2) and the third-party defendant with a concept in which fewer molds were required for the individual frame components. This concept was also drawn up by plaintiff 2) together with the third-party defendant, whereby 6 This concept was also handed over to the defendant. Without any feedback and without an agreement on the granting of rights of use, the defendant brought the "Azur" model onto the market on this basis. After further contact, the defendant stated that it assumed that no patent would be granted. Subsequently, both the plaintiff 2) (by agreement) and the third-party defendant terminated the development agreement. 10. The defendant advertises the technology it uses as "state-of-the-art Fibre FRAME technology". It uses this technology in both its "DESEO" caravan and its "AZUR" caravan (hereinafter: attacked designs). This is stated on the defendant's website, among other things (cf. Annex K 5): "Thanks to state-of-the-art fiber frame technology, we have succeeded in making the DESEO even more flexible and spacious. The variable room layout and pioneering design ensures the perfect balance between usable and living space, so that even two fully-fledged motorcycles be transported. At its destination, the DESEO then transforms into a fully equipped, comfortable caravan. Pretty practical, isn't it?" "Progressive design language through innovative construction: The future looks this good. Our DESEO. A real storage space miracle with corners and edges. Even though most of them are actually round - and of course particularly practical, they protect everything we have packed into the exterior." [...] "The self-supporting fiber frame not only more flexibility in the floor plan and room design, but also supports the progressive design language." 11. In addition, the following explanation can be found on the website of the German "Caravaning-Institut" (see Annex K 6): "Fibre Frame is a high-strength fiberglass frame that ensures a rigid, self-supporting structure and also allows uncompromising ultra-lightweight construction with increased crash safety. The plus points: - bonded panel elements with continuous sealing level - will enable completely new approaches to floor plan design and furniture placement in the future (such as variable floor plans or freely positionable elements) - The frame manufacturing process opens up new possibilities for the implementation of "multi-dimensional" elements in design creation - Automated production, further processing and finishing of the frame and the surface elements on the production line are in preparation and will be integrated as part of the modernization of the production lines - Theoretically, functions (such as cable ducts) can be integrated into the frame during production. - Extended loads (roof) are possible" 12. Finally, a press release of the defendant (Annex K 7) states: "The pioneering frame technology is based on fiber frame parts that are automatically glued together to form a stable frame and therefore do not require any screw connections at all. The self-supporting and high-strength frame ensures optimum stability and durability 7 as well as significantly greater flexibility in terms of layout and room design compared to conventional caravan construction." 13. This press release also shows that the described frame concept is also used in the contested embodiments. 14. The plaintiffs ordered a structural part in the form of an A-pillar of the frame for a caravan from the defendant and had it tested by the Gesellschaft für Werkstoffprüfung mbH (GWP). With regard to the content of the test report, reference is made to Annex K 15. The examined structural part is shown below: 15. In cross-section, the component the following components labeled by the plaintiff: 16. Below is a figure of the defendant on the "Fiber Frame System", from which the structure of the frame, consisting of the various structural parts, can be seen: 8 MOTIONS BY THE PARTIES: Lawsuit: 17. The plaintiffs finally apply, I. order the defendant to pay the costs, 1. to refrain from producing frames for a vehicle with at least one structural part, wherein the structural part is produced as a cast part in a mold and the mold reproduces the three-dimensional outer shape of the structural part, wherein the structural part is formed by a self-swelling foam resin, in the territory of the Federal Republic of Germany, the French Republic, Italy and Slovenia to manufacture, place on the market, offer, use and/or import, export and/or possess for the aforementioned purposes, if the structural part is at least partially coated from the outside with a protective layer, whereby the existing structural parts form a load-bearing part of the frame; (claim 1 of EP 3 356 109) 2. in the event of an infringement of the order pursuant to I. 1. to pay the court a penalty payment of up to EUR 250,000 for each case of infringement; 3. to provide the plaintiffs with information about the acts of infringement that have occurred since September 8, 2018 pursuant to I. 1. stating a) the origin and distribution channels of the infringing products; b) the quantities produced, manufactured, delivered, received or ordered and the prices for the infringing products, and c) the identity of all third parties involved in the manufacture or distribution of the selling products; 4. the products referred to in I. 1. which have delivered since April 9, 2022, within a period of 30 days after service of the notification within the meaning of R. 118 (8) sentence 1 of the Regulation and, if applicable, the certified translation at the defendant's expense a) from the distribution channels by informing the third parties from whom the infringing products are to be recalled of the recall. 9 that this Court has found that the products infringe European Patent EP 3 356 109, whereby the defendant must give a binding undertaking to the third parties to reimburse the costs incurred, to bear the packaging and transport costs incurred, to reimburse the customs and storage costs associated with the return of the products and to take back the products and b) permanently remove the products from the distribution channels by requiring the defendant, on the basis that this Court has found that the products infringe European patent EP 3 356 109, to require third parties who are commercial customers but not end users in respect of the products referred to in I. 1. to cancel all orders relating to the products referred to in I. 1. and to notify the Court and the plaintiffs within the said period of 30 days from the service of the notice within the meaning of R. 118 (8) (a) and (b). S. 1 VerfO and, if applicable, the certified translation, written proof of the measures taken; 5. to destroy the products directly and/or indirectly and/or owned by the defendant in accordance with I. 1. or to hand them over to a bailiff to be appointed by the plaintiffs for the purpose of destruction at the defendant's expense; II. order the defendant to compensate the plaintiffs for all damages they have suffered and will suffer as a result of the acts referred to in I. 1. in the period since April 9, 2022; III. order the defendant to pay the plaintiffs reasonable compensation for the period from September 8, 2018 to April 8, 2022 for actions pursuant to I. 1; IV. order the defendant to pay the plaintiffs an amount of EUR 100,000 as provisional damages; V. order the defendant to pay the costs. 18. With regard to the wording of the "in particular if" claims, reference is made to the statement of claim. 19. The defendant requests, I.1. dismiss the infringement action; I.2. in the alternative: 10 a) order the third-party defendant to transfer its legal position as current licensor of the rights of use in favor of the defendant under the development agreement for the French, Italian and Slovenian parts of the European patent EP 3 356 109 (hereinafter: patent in suit) to the plaintiff 1); b) dismiss the infringement action. I.3. further in the alternative: to stay the proceedings pursuant to R. 266 (5) sentence 1 of the Brussels Convention and to refer the following questions to the ECJ for a preliminary ruling pursuant to Art. 21 UPCA in conjunction with Art. 267 TFEU: a) Does the Union legal order require the UPCA to be applied and interpreted in accordance with the principles of treaty application and interpretation codified in the 1969 Vienna Convention on the Law of Treaties and recognized by customary international law? b) Does it follow from Article 15(d) Rome II Regulation that the UPC, which under the UPCA has no procedural powers with regard to patent infringements under national law, cannot in this respect issue orders for injunctive relief, remedies, information and the award of damages? c) Is the first sentence of Article 11 of the Enforcement Directive to be interpreted as meaning that a final injunction may not be issued if only an imminent infringement is established? d) Is the first sentence of Article 11 of the Enforcement Directive to be interpreted as meaning that only the continuation of the infringing act found to have been committed can be prohibited, e.g. in the case of a finding of infringement by offering, the continuation of offering, whereas infringing acts which have not been found to have been committed cannot be prohibited? e) Are the first sentence of Article 3(2) of Regulation (EU) No 1217/2010 and Article 3(2) and (3) of Regulation (EU) No 2023/1066 to be understood as requiring a research and development contract to be interpreted in such a way that, in cases of doubt, it must be assumed that the contract grants the parties unrestricted access to the final results of the joint research and development, including the intellectual property rights and know- how arising therefrom? f) Does the freedom of movement of goods under EU law preclude the UPC from exercising its procedural powers under Art. 56 et seq. UPCA against the defendant in an infringement action who can rely on a contractual right of use of the patent in suit granted to him by the original co-owner of the patent in suit, who has failed in breach of contract to notify the acquirer of the share in the patent in suit. 11 patent in suit, who is now proceeding as plaintiff against the defendant under this patent, to transfer his legal position as licensor in favor of the defendant? g) Does the doctrine of implied powers under EU law require an interpretation of Article 32(1)(a) UPCA according to which a "counterclaim in respect of licenses" may also be directed against a person not previously involved in the infringement proceedings (third-party counterclaim)? h) Does the case law of the ECJ on EU-wide exhaustion apply accordingly to the right of prior use, e.g. pursuant to Section 12 of the German Patent Act? i) Does EU law, in particular Article 9(3) EUTMR, require that Article 25(a) UPCA is to be understood as an exhaustive regulation of the acts of use reserved to the patent proprietor? j) Does EU law, in particular Article 9(3)(e) EUTMR, require that Article 25(a) UPCA be interpreted as meaning that advertising is not an offer within the meaning of Article 25(a) UPCA? II. in the strongest alternative: a) to make the enforcement of the judgment in the event of a conviction of the defendant subject to the provision of a security or equivalent guarantee ensuring adequate compensation for any damage caused by the enforcement if the judgment is subsequently amended or set aside (Art. 82 para. 2 UPCA and R. 354 para. 2 sentence 1 RP); b) insofar as the enforcement proceedings are subject to the law of the Contracting Member States (Art. 82 para. 3 sentence 1 UPCA), to reserve the legal remedies and possibilities to avert enforcement to which the defendant is entitled under the respective national law; III. order the applicants to pay the costs. 20. The applicant claims that the Court should, 1. dismiss the counterclaim against the plaintiffs 1) and 2) and the third-party defendant; 2. dismiss the application for referral to the ECJ; 3. reject the application for security for the enforcement of the decision. Action for annulment: 21. The defendant finally applies, 12 I. declare the European patent EP 3 356 109 invalid in its entirety with effect for the Federal Republic of Germany, the French Republic, the Italian Republic and the Republic of Slovenia. II. in the strongest alternative: a) to make the enforcement of the judgment in the event of a conviction of the defendant subject to the provision of a security or equivalent guarantee ensuring adequate compensation for any damage caused by the enforcement if the judgment is subsequently amended or set aside (Art. 82 para. 2 UPCA and R. 354 para. 2 sentence 1 RP); b) insofar as the enforcement proceedings are subject to the law of the Contracting Member States (Art. 82 para. 3 sentence 1 UPCA), to reserve the legal remedies and possibilities to avert enforcement to which the defendant is entitled under the respective national law; III. order the applicants to pay the costs. 22. The plaintiffs request, 1. dismiss the action for annulment; 2. order the defendant to pay the costs of the action for revocation. Applications for amendment of the patent: 23. The plaintiffs request, 1. Dismiss the counterclaim for a declaration of nullity or, in the alternative, dismiss the counterclaim for a declaration of nullity to the extent of auxiliary requests 1 to 17, whereby the auxiliary requests are submitted in the order 1 to 17; 2. order the defendant to the extent claimed in the statement of claim, but in each case in relation to the maintained version of the claim in accordance with the auxiliary request. 24. With regard to the wording of auxiliary requests 1 to 17, reference is made to annex K 22. 25. The defendant has opposed the requests for amendment of the patent in suit because 1. the proposed changes are either not permissible from their point of view or 2. the patent in suit could not be maintained as requested or 3. the patent in suit not infringed. 13 KEY PROCEDURAL STEPS: 26. Insofar as the plaintiffs initially also sought orders in relation to the sovereign territory of the Republic of Ireland in their statement of claim, they withdrew the action in their reply to the infringement proceedings of July 10, 2024. The defendant agreed to this partial withdrawal of the action for infringement in its reply of 10 September 2024 and asked the court to admit it in accordance with R. 265 para. 1 sentence 2 of the Code of Procedure, to issue the decisions and orders in accordance with R. 265 para. 2 of the Code of Procedure and, in particular, to make a decision on costs against the plaintiffs. 27. With regard to the action for annulment, the defendant explained in its submission of February 10, 2025, that in its action for annulment of February 23, 2024, the application also concerning the Republic of Ireland was made in the event that Ireland had become a Contracting Member State at the time of the decision of the Local Chamber on the action for annulment. Since this is not the case, it clarifies that the above application, which does not include the Republic of Ireland, is made in relation to the nullity counterclaim. At the hearing, the defendant applied for leave to intervene in the event that the applications now made were linked to a partial withdrawal of the action for annulment. The plaintiffs and the third-party defendant consented to such a partial withdrawal of the action for annulment at the oral hearing, while being cautioned against the burden of costs. FACTUAL AND LEGAL ISSUES: A. Objection 28. With its opposition filed on March 12, 2024, the defendant complains about the lack of international jurisdiction of the Unified Patent Court with regard to Ireland. 29. Furthermore, the defendant is of the opinion that the Unified Patent Court lacks jurisdiction for the period before the UPCA entered into force, taking into account the prohibition of retroactive effect under international law standardized in Art. 28 of the Vienna Convention on the Law of Treaties (hereinafter: Vienna Convention on the Law of Treaties, VCLT). B. Action for infringement 30. According to the plaintiffs, the structural elements manufactured and marketed by the defendant make use of the technical teaching of the patent in dispute. They are of the opinion that, according to the invention, the mold reproduces the three-dimensional outer shape of the structural part. The structural part must be produced in such a way that it is suitable for being produced in a mold which reproduces the three-dimensional outer shape of the structural part. This is case with production using a foamed 2-component polyurethane, as in the challenged embodiments. This is usually produced in a mold, in that the mold provides the shape for the structural part to be produced. Furthermore, a 2- component polyurethane is also a self-swelling foam resin. Moreover, in the attacked embodiments, the structural part is also at least partially coated on the outside with a protective layer, which is referred to as the "outer skin" in the cross-section shown above. This outer skin also consists of a 2-component polyurethane resin, which is not in the form of a foam structure, but as a molded, non-molded polyurethane resin. 14 foamed material. Finally, the existing structural part forms a load-bearing part of the frame. It is from the defendant's explanations of its "frame technology" (Annex K 6) that the structural parts of interest here form a frame and are therefore the load-bearing parts of the frame. The defendant describes its frame as a "self-supporting fiber frame". 31. The defendant disputes the legitimacy of the plaintiff 1). The latter bases its alleged co- ownership of the patent in suit on the agreement submitted as Annex K 1. Even if the Rules of Procedure do not contain any provision for a transfer of the patent in suit prior to the proceedings, R. 312 (1) of the Rules of Procedure must also apply accordingly in this respect. Therefore, from the outset, the new proprietor of the patent in suit can only as plaintiff to the extent that the patent and the claims asserted in the proceedings have been transferred to him. The extent to which claims already arising from the infringement of an acquired European patent are transferred to the acquirer of rights is determined by the national legal systems applicable to the individual national parts of a European patent on the basis of the country of protection principle. However, the agreement submitted as Annex K 1 does not contain any assignment of the third party defendant's shares in allegedly already arisen (quod non) claims for information and accounting, damages and compensation from the German part of the patent in suit to the plaintiff 1). The mere mention of "claims" was not sufficiently specific. Therefore, the shares in claims against third parties for use of the teaching of the patent in suit not transferred to the plaintiff 1) in accordance with the applicable German law. This was therefore not entitled according to R. 312 para. 1 VerfO. Furthermore, in their infringement action, the plaintiffs had also not argued with regard to France, Italy and Slovenia why the plaintiff 1) should be able to demand information, damages and compensation for acts of use occurred before the transfer according to Annex K 1 of December 30, 2022, although it was obliged to do so under, inter alia, R. 13 (1) lit. f) VerfO. In the absence of any contrary submission by the plaintiffs, the presumption pursuant to R. 8 para. 5 lit. c) VerfO was therefore rebutted. 32. Apart from that, the challenged embodiments did not make use of the technical teaching of the patent in suit. 33. Insofar as the structural part is to be produced as a cast part in a mold according to the invention, a structural part only complies with the teaching of the patent in suit if it actually been produced as a cast part in precisely one mold. The patent in suit is based on WO 2017/129589 A1. According to claim 1 therein, the structural part must only be producible as a casting in a mold. After this feature had been criticized for lack of clarity in both the international phase and the European phase of the grant procedure, it had been amended to the effect that the structural part produced as a cast part in a casting mold. A corresponding manufacture was therefore mandatory for the realization of the claimed technical teaching. 34. Furthermore, the structural part must also be coated on the outside with the protective layer during production in a mold. 35. Insofar as the structural part according to the invention is to be at least partially coated on the outside with a protective layer, this is to be understood to mean that the protective layer is at least partially on the outside and not covered by a further layer. On the one hand, this is intended to achieve material savings and simplify production. 15 be simplified. On the other hand, a sophisticated and attractive surface should also be provided directly as a visible surface in the vehicle exterior. Against this background, the protective layer must in any case be in contact with the outside in the area that forms the surface as a visible surface in the vehicle exterior. A structural part whose protective layer is completely covered on the outside in these areas by a further layer is therefore not covered by the claim. 36. The method included in patent claim 1 describes a total of four advantageous properties of the structural part: Firstly, the protective layer has a uniformly controlled thickness. Secondly, push-through spacers are avoided. Thirdly, the protective layer can be made particularly thin, which enables a particularly lightweight component. Finally, fourthly, the foam core and the protective layer are particularly closely bonded to each other. 37. On the basis of such an understanding of the scope of protection, the technical teaching protected by patent claim 1 was not realized by the embodiments attacked. 38. In the manufacture of the contested embodiments, not just one but two molds would be used. 39. Furthermore, the coating of the side part with a protective layer is not carried out in the same mold in which the side part itself is produced, but in a second mold. For this additional work step, hook-shaped spacers are required, which remain in the end product. The additional work step required by the second mold makes series production more difficult. Furthermore, due to the second casting mold and hook-shaped spacers, among other things, there can be no question of material-saving production. Since the hook- shaped spacers do not disappear, but remain visible after the second process step (flooding with a 2-component polyurethane resin), it is also necessary to apply a layer of lacquer on the outside in a third process step. 40. Finally, the contested structural part is not partially covered from the outside with a protective layer. Rather, the protective layer is completely covered from the outside by another layer of paint in the areas that form the surface in the visible area of the vehicle. 41. In addition, there was a lack of sufficient submissions by the applicants on acts of use that met the requirements of the UPCA and the Rules of Procedure. According to R. 13(1)(I) VerfO, the infringement action must contain one or more instances of alleged or threatened acts of infringement, stating the date and place of the respective act and the designation of the alleged patent claims. For the period before the 1. Therefore, the plaintiffs would have to present specific alleged acts of use in the individual countries for Germany, France, Italy and Slovenia and explain to what extent these alleged acts of use infringe individual patent claims of the respective national parts of the patent in dispute in accordance with the applicable national patent law. 42. The present infringement action does not these requirements. It does not contain any concrete submission on alleged acts of use before June 1, 2023 in Germany, France, Italy and Slovenia. 16 43. The test purchase mentioned in the infringement action was ruled out as an act of use from the outset, since the intended delivery was made with the consent of the plaintiffs. 44. The advertising submitted as Annexes K 5 to K 7 and K 18 did not constitute an offer pursuant to Art. 25(a) UPCA. Annex K 18 was also introduced late in the proceedings, which is why this annex could not be taken into account from the outset. In all authentic language versions, the term "offer" has in common that the offer sufficiently specifies the conditions of the grant so that it can be accepted by the offeree with a simple "yes". An objective observer would only assume the intention or willingness of the offeror to the presented subject-matter to the offeree and thus assume an offer within the meaning of Art. 25(a) UPCA if the offer was formulated in such concrete terms that it could be readily accepted by the offeree vis-à-vis the offeror. 45. The plaintiffs countered this argument. In particular, the defendant expressly pointed out in out-of-court settlement discussions that it had sold almost 600 motorhomes of the "Deseo" model by the end of 2023. With regard to the "Azur" model, the defendant had, according to its own statements, sold just under 70 units by the end of 2023. C. Counterclaim and third-party counterclaim in relation to a license 46. The defendant invokes a right of use based on a license, which, in its opinion, is to be asserted as a counterclaim in relation to a license pursuant to Art. 32 (1) (a) UPCA. The Unified Patent Court has temporal jurisdiction for such an action in the present case, since the rights of use asserted here originate from the period before June 1, 2023, but continue to the present day. 47. The counterclaim is well-founded as the defendant can invoke contractual rights of use against the plaintiff. The defendant is therefore acting with the consent of the plaintiffs within the meaning of Art. 25 UPCA, which is why the rights from the patent in suit are exhausted pursuant to Art. 29 UPCA. Therefore, the plaintiffs are not entitled to a prohibition right under the patent in suit. 48. A right of use from a termination agreement exists vis-à-vis the plaintiff 2). The following agreement exists between the plaintiff 2) and the defendant with regard to the German patent application DE 10 2016 101 274.2 and the subsequent application WO 2017/129589, from which the patent in dispute also arose: "Should a patent or utility model arise from the patent application (DE 10 2016 101 274.2) mentioned in the development contract or a subsequent application from this patent application (e.g. WO 2017/129589), HÄRTWICH undertakes not to assert any rights from such a patent or utility model against KTG or a company affiliated with KTG." 49. HÄRTWICH refers, inter alia, to plaintiff 2), whereas KTG is the defendant. Plaintiff 2) had expressed with the above clause that the defendant was allowed to use the teaching of the patent in suit. 50. In addition, the defendant is entitled to a right of use vis-à-vis both plaintiffs under a development agreement concluded between the third-party defendantplaintiff 2) (and their respective companies) and the defendant, the content of which is set out in Exhibit 10. This contract of use is comprehensive, 17 free of charge and irrevocable rights of use to the teaching of the patent in dispute. 51. The notice of termination issued by the plaintiffs in the letter of termination dated October 16, 2023 (Annex rop 12) was ineffective. It was terminated for good cause in accordance with Section 7 (2) of the development agreement. According to this provision, a remedy period must have been set in advance for such a termination without success. This was not the case here. Furthermore, there was also no good cause justifying the extraordinary termination. The alleged use of the patent in dispute cited by the plaintiff was permitted to the defendant under the contract and was not a breach of duty. An alleged failure to continue the development is not substantiated by the plaintiffs. 52. The contractual right of use exists vis-à-vis both plaintiffs and in particular also vis-à-vis plaintiff 1). With regard to the German part of the patent in suit, there is protection by assignment following its pro rata transfer. In this respect, Section 15 (3) of the German Patent Act applies, according to which a transfer of rights or the granting of a license does not affect licenses previously granted to third parties. 53. With regard to the French, Italian and Slovenian parts of the patent in suit, the Unified Patent Court lacked the procedural authority in relation to the plaintiff 1) after its pro rata transfer. Also with regard to these national parts, the defendant could counter the infringement action with regard to the plaintiff 1) with a right of use to which it was entitled under the development agreement, irrespective of whether the applicable law provided for succession protection. The UPCA does not for any claims within the meaning of Sec. 194 para. of the German Civil Code, but only procedural powers under Art. 56 et seq. UPCA, on the basis of which the UPC can pronounce legal consequences at its discretion. When exercising its procedural powers and applying its discretionary powers, the UPC must ensure fairness and equity by taking into account the legitimate interests of the parties and must take into account the fact that Section 11 (5) of the Development Agreement obliges the parties to impose their obligations arising from the agreement on their legal successors. This obligation also applies to the third-party defendant. In the present proceedings, it could not be to the disadvantage of the defendant that the third- party defendant had not fulfilled this obligation in breach of contract. , in exercising its discretion and its procedural powers, the court must place the defendant in the same position as if the third-party defendant had complied with its obligation under Section 11 (5) of the development agreement. 54. Moreover, in exercising its discretion, the Unified Patent Court had to respect the freedom of movement of goods under primary law to be given priority pursuant to Art. 20, 24 (1) (a) UPCA and in particular the prohibition of quantitative import restrictions and all measures having equivalent effect between the EU Member States (Art. 34 TFEU). The exhaustion effect resulting from the granting of a right of use under the development agreement to the patent in suit cannot be revoked simply because the third party defendant, in breach of its obligation under Sec. 11 (5) of the development agreement, failed to transfer its share in the patent in suit to the plaintiff for the benefit of the defendant as licensor of the rights of use under the development agreement to the French, Italian and Slovenian parts of the patent in suit. 1). The Unified Patent Court had to place the defendant in the same position in relation to the plaintiff 1) as if the third-party defendant had fulfilled its obligation under Section 11 (5) of the development agreement, also on the basis of the freedom of movement of goods under primary law. 18 55. The third-party counterclaim is also well-founded, since the third-party defendant is obliged under the development agreement to transfer its legal position as current licensor of the rights of use in favor of the defendant under the development agreement to the French, Italian and Slovenian parts of the patent in suit to the first defendant. Alternatively, in a first step, it should be ordered that the third-party defendant transfers its legal position as the current licensor of the rights of use in favor of the defendant from the development contract for the French, Italian and Slovenian parts of the patent in suit to the plaintiff 1). In a second step, the action for infringement should be dismissed. 56. In the opinion of the plaintiff, the settlement agreement referred to by the defendant (Annex K 20) does not contain any right of use. The agreement relates exclusively to the "Travelino" model. The provision referred to by the defendant cannot be found in the settlement agreement. 57. Nor could the defendant derive a right of use from the development agreement (Annex rop 10). This agreement only stipulates that the defendant may use the model. may continue to use "Travelino". For all other developments, it had been made clear that a right of use required a separate agreement. According to the contract, the parties had assumed and had also expressly stipulated that the right of use could arise from the license agreement and existed for the duration of the license agreement. The defendant had never contacted the plaintiffs with a request to conclude a license agreement. When the plaintiffs asked for a license agreement, the defendant pointed out in discussions that it did not want to conclude such a license agreement. It assumed that the patent in dispute would not be granted. After the development of the "Travelino" model, there had been orders for the development of frame concepts for the "Deseo" and the "Azur". The plaintiffs also developed the frame design for these models and presented this development to the defendant. For this purpose, the plaintiffs built sample caravans and them to the defendant. The plaintiffs also presented drawings of all frame components which they had developed for these models. The frame construction for the "Deseo" as well as for the "Azur" had been developed independently. This was neither based on the "Travelino" nor did it correspond to it. It was also not a joint development. 58. Furthermore, the development contract also effectively terminated. Although the plaintiffs had submitted the framework concepts commissioned by the defendant, including the drawings, the plaintiffs did not receive any feedback as to whether the defendant intended to implement them, even after repeated queries. Neither did the defendant comply with the request to conclude a license agreement nor did the defendant inform the plaintiffs that it had actually started production of the "Azur" and "Deseo" models. The defendant had not made any requests for orders in a period of six months prior to the termination. The termination was therefore justified. According to the contract, there was no need to set a deadline in the event of a six-month absence of adequate order inquiries. Furthermore, the termination was also justified because the defendant questioned the protectability of the patent in dispute. 59. The third-party counterclaim is subject to a condition and is therefore already inadmissible. Nor could the defendant successfully rely on Article 32(1)(a) UPCA in this respect. This concerns a right to use the patent in dispute. However, the third-party counterclaim is based on the idea that there no such right of use. It is normal contractual dispute which is to be settled before the national courts. The Unified Patent Court lacks jurisdiction for disputes relating to license agreements. 19 60. Apart from that, the third-party counterclaim is directed at a nullum. The third party counterclaimant is neither the owner of the patent in dispute nor the rightful user. Irrespective of this, the third-party defendant is also not obliged to grant any rights. The Unified Patent Court already had no jurisdiction over the objection of breach of contract raised by the defendant. 61. The defendant has countered this. In particular, the "settlement agreement" submitted as Annex K 20 is not the termination agreement mentioned in the statement of claim. The settlement agreement dates from 2020, while the termination agreement was concluded in 2018 according to the plaintiffs' notices of termination. While the termination agreement was concluded with plaintiff 2) according to the submission in the complaint, the settlement agreement submitted as Annex K 20 was only concluded with Freitec Kunststoffe GmbH. Finally, the termination agreement mentioned in the statement of claim to the development agreement. This is not provided for in the settlement agreement according to Annex K 20. Instead, Freitec Kunstoffe GmbH merely retracts from alleged claims against the defendant in the amount of EUR 181,392.70 and agrees with the defendant on a settlement amount of EUR 50,000 (Annex K 20, recital 3). D. Right of prior use 62. Insofar as the defendant continues to a right of prior use, it is of the opinion that such a right is to be vis-à-vis the infringement action as an action in connection with a right of prior use pursuant to Art. 34 (1) (g) UPCA. The Unified Patent Court also has temporal jurisdiction for such an action pursuant to Art. 32 para. 1 lit. g) UPCA, since the right of prior use asserted here originates from the period before June 1, 2023, but continues to the present day. 63. The defendant was entitled to a right of prior use in the matter. 64. The defendant presented its Eurostar caravan to the public for the first time during the Ca- ravan Motor Touristik (CMT) trade fair in January 2013 and won the "Red Dot A- ward" for it. During the trade fair in Stuttgart, the defendant's "Caravans" catalog was distributed, the contents of which are set out in Exhibit 14. From the same date, the defendant distributed the "Grande Puccini" caravan. In this respect, reference is made to the catalog submitted as Annex rop 15. A technical drawing prepared by an employee of the defendant on February 1, 2012 and amended on March 1, 2012 depicts a long fiber injection front part with window (Annex rop 16). The bow part shown, to which reference is made in annexes rop 14 and rop 15, was used from model year 2013 onwards. With regard to the properties of the bow part shown, the following can be found in Annex rop 16: "LFI molded part Outer skin: Thermoformed part made of ABS- PMMA RAL9023 3 mm thick with PE protective film Backing foam with glass fiber/polyurethane mixture Density 0.5kg/dm3 20 Surface with outer skin incl. window area 445 dm2 Volume complete incl. window area 88 dm3 Thermoforming and foaming tools and trimming according to 3D data" 65. In addition, the defendant refers to the German patent application DE 10 2013 008 364 A1 with regard to the properties of the bow part. 66. A bar chart submitted as annex rop 17 shows the quantities of LFI front and rear parts with and without windows supplied by the company (hereinafter: ) has supplied the defendant with LFI front and rear parts with and without windows for the Grande Puccini caravan (W23), the Eurostar caravan (W03) and the Tabbert Supreme caravan (W29) since 2012. The LFI front and rear parts supplied to the defendant by also included the front part for the Grande Puccini caravan ("front wall with window W23-13, item no. R 10132223) shown in Exhibit 16. The LFI front parts supplied by to the defendant for the Eurostar caravan ("front wall with window "W03-13", item no. R 10132417) are identical to the LFI front part for the Grande Puccini caravan (item no. 10132223) except for the exterior color. The same applies to the LFI front parts supplied by to the defendant for the Tabbert Supreme caravan (front wall with window W29-13, item no. 10132293). 67. A glass fiber-reinforced polyurethane foam compound (LFI) is also used in the contested embodiments. The Eurostar, Tabbert Supreme and Grande Puccini caravans, including LFI bow parts as shown in Exhibit rop 16, had already been sold by the defendant in Germany and France, among other countries, before the priority date of the patent in suit (see Exhibits rop 19-1, rop 19-2 and rop ZA2). The bow part shown in Annex rop 16 realizes all features of patent claims 1, 3, 4, 7 and 9 of the patent in suit. Thus, the defendant was in possession of the invention on the priority date of the patent in suit. 68. The German right of prior use also extends to the other countries in question due to the free movement of goods pursuant to Art. 28 et seq. TFEU, the German right of prior use also extends to the other countries in question. 69. The plaintiff disputes the defendant's submission on the right of prior use with ignorance. This also applies in particular in view the fact that the components shown in Annex rop 16 realize the features of the patent in suit, were used in the caravans listed and were actually in caravans at the priority date of the patent in suit. 70. The component shown in the aforementioned annex is obviously a front or rear part and relates to the outer wall of the caravan. It is not a frame part of the caravan and in particular not a structural part of the frame, but a filling element, as additionally described in the patent in suit, and thus a component of the outer skin which has nothing to do with the frame. It is also not apparent from the defendant's statements that the component is produced in a mold. Appendix WK 15 shows that it is a deep-drawn part. This is produced by deep-drawing the outer contour. In a further step, the deep-drawn part is filled with a glass fiber-polyurethane mixture on the inside. It is also not produced in a casting mold. DE '364 could not be used to justify the right of prior use as it did not the actual nature of the component. In the 21 Moreover, it is also apparent from the patent specification that it is a component of the outer skin. Furthermore, a right of prior use would also be spatially limited. E. Action for annulment 71. In the opinion of the defendant (plaintiff in the revocation counterclaim), the patent in suit must be declared invalid in its entirety, since the ground for invalidity of lack of practicability within the meaning of Art. 138 (1) (b) EPC is given. According to patent claim 1 of the patent in dispute, a vehicle frame with at least one structural part is to be protected, whereby the existing structural parts are defined in the characterizing part of this claim to the effect that they form a load-bearing part of the frame. In order to be able to determine the scope of protection of the patent claim, it is first essential to define the term "vehicle frame". Based on Wikipedia, the frame or chassis of a vehicle refers to the load-bearing parts of a vehicle that have the function of supporting the drive, the body or the payload. Accordingly, the frame consists of the load-bearing parts. According to the claim, the existing structural parts should form a "load-bearing part" of the frame. Accordingly, non- load-bearing parts of the frame must also exist. However, it remains completely unclear what the load-bearing and non-load-bearing parts of the frame should be. 72. In addition, the teaching of the patent in suit protected by claim 1 is based in each case on DE 198 98 026 A1 (Annex WK3), DE 10 2015 111 421 A1 (Annex WK3), DE 10 2015 111 421 A1 (Annex WK3) and DE 10 2015 111 421 A1 (Annex WK3). WK 4), DE 10 2013 006 300 A1 (Annex WK 5), DE 10 2014 204 369 A1 (Annex WK 7), EP 0 670 357 A1 (Annex WK 26), DE 10 2013 008 364 A1 (WK 31), a tech- The applicants' drawing of February 1, 2012 (Annex WK 15) and a product catalog of the company Fendt-Caravan of August 2014 (Annex WK 19) are not new (Art. 24 para. 1 lit. c) UPCA in conjunction with Art. 138 para. 1 lit. a), Art. 54 EPC). 73. Finally, the defendant asserts a lack of inventive step (Art. 24 (1) (c) UPCA in conjunction with Art. 138 (1) (a), Art. 56 EPC). Art. 138 para. 1 lit. a), Art. 56 EPC). In this context, the defendant on a combination DE 10 2013 215 933 A1 (Annex WK 6) with the general knowledge or Annexes WK 3, WK 4 and WK 5 as well as EP 1 484 150 A2 (Annex WK 11), EP 1 212 189 (Annex WK 25) in conjunction with the skilled person's activity.in conjunction with the expert knowledge and annexes WK 3, WK 4, WK 5, WK 11 and annex WK 31 in conjunction with annexes WK 3 to WK 7, WK 15 and WK 26. 74. With regard to the lack of legal validity of the sub-claims from the defendant's point of view, reference is made to the submissions in the context of the action for annulment. 75. The plaintiffs and the third-party defendant defend the patent in suit as granted. In the alternative, they assert a total of 17 auxiliary requests, the wording of which is set out in Annex K 22. F. Legal consequences 76. In the opinion of the defendant, the Unified Patent Court has no powers with regard to acts of use before June 1, 2023. According to Article 56(1) UPCA, the powers of the Unified Patent Court are limited to the powers expressly mentioned in the UPCA. When exercising the procedural powers of Art. 56 et seq. UPCA as lex fori, other provisions of the UPCA are also to be classified as lex fori, z. e.g. Art. 25 et seq. UPCA, are decisive for the determination of a patent infringement. National 22 law could only be applied, for example, in the context of a preliminary question under contract law. As a result, the Unified Patent Court lacks procedural powers that would allow it to order legal consequences resulting from a patent infringement under national law. Therefore, the Unified Patent Court could not issue orders with regard to Germany, France, Italy and Slovenia for acts of use from the time before the UPCA came into force. The lack of procedural powers with regard to patent infringements under national law would have the additional consequence in the present case that the Unified Patent Court already lacks jurisdiction under Article 32(1)(a) UPCA. Instead, the national courts would be responsible for this. 77. Furthermore, the Unified Patent Court does not have jurisdiction under Article 32(1)(a) UPCA to decide on the infringement action insofar as it relates to the period during the opt- out of the patent in suit from May 15, 2023 to February 2, 2024. 78. Insofar as the plaintiff seeks a final injunction under Art. 63 (1) sentence 1 UPCA, this requires a finding of patent infringement after June 1, 2023, which is lacking here. The plaintiffs had not yet demonstrated any specific acts of infringement either for the period after June 1, 2023 or for the period before. Acts of use from the period before June 1, 2023 could also not justify a final injunction as imminent patent infringement. Apart from that, an injunction could only be demanded for those alternative actions in respect of which a patent infringement had actually been established. 79. Furthermore, the Unified Patent Court lacks jurisdiction insofar as compensation is sought for acts of use prior to June 1, 2023. Since Art. 67 EPC only partially harmonizes the right to compensation, the respective national requirements and legal consequences under national law must also be observed in each case. The Unified Patent Court can only award compensation under the respective national law if the plaintiffs prove that the conditions required in the individual EPC contracting states are met. There was a lack of plaintiff submissions in this regard. 80. Furthermore, the defendant raises the plea of the statute of limitations. The development agreement between the parties had been since 2016. Consequently, the plaintiffs or their legal predecessors had aware of all of the defendant's actions since September 8, 2018 or should reasonably have been aware of them. As a result, the requests of the infringement action filed with service on February 24, 2024 in connection with all forms of financial compensation are in any case excluded for the period prior to February 24, 2019 pursuant to Art. 72 UPCA. With regard to Germany, the shorter limitation period of three years (Sections 195, 199 BGB) applies pursuant to Art. 72, 24 (2) and (3) UPCA. 81. With regard to the requested order of recallremoval from the distribution channels and destruction, it should be taken into account in the present case, in particular, that the defendant and the plaintiffs or their legal predecessors were in a development cooperation and that the present legal dispute ultimately resulted from the fact that the plaintiffs had rejected an out-of-court settlement offer for an exclusive license for objectively incomprehensible reasons. The present infringement action constitutes a gross breach of the fiduciary duties arising from the development cooperation. 23 is. Secondly, it should be borne in mind that the plaintiffs, if they had developed a suitable product (quod non), wanted to supply it to the defendant at an average selling price of EUR 650, whereas the list price of the caravans at issue here was EUR 28,100 and EUR 41,400 respectively, and thus many times higher. The plaintiffs' price expectations with regard to their own product would therefore prove that the teaching of the patent in dispute was only a very subordinate aspect of a caravan. Therefore, the recall, the removal from the distribution channels and the destruction of the defendant's caravans would be completely disproportionate to the infringement claimed by the plaintiffs. 82. With regard to the provisional damages also claimed by the plaintiffs, the defendant argues that the out-of-court settlement offer made by the defendant without acknowledging any legal obligation in the amount of a one-off payment of EUR 100,000 for an exclusive license is not a suitable basis for awarding provisional damages. The introduction of the settlement offer submitted by the defendant before the court into the court proceedings is also a violation of R. 11 para. 3 of the Rules of Procedure and leads to a prohibition of exploitation. 83. The plaintiffs have countered this. 84. With regard to the requested injunction, it should be taken into account that the plaintiff had also submitted acts of use after June 1, 2023, which undisputed. 85. Insofar as the defendant invokes the statute of limitations, there is a lack of submission on its prerequisites. In the present case, the plaintiffs had obtained knowledge of the infringing acts by a component of the defendant inspected. The reports from August 2023 were commissioned in July 2023. The defendant's objection to the statute of limitations is therefore not comprehensible. The development cooperation did not give rise to any knowledge of the patent infringement. 86. The "average sales price" of the defendant of EUR 650, which the defendant claims in connection with the defendant's objection of the disproportionality of the recall, the removal from the distribution channels and the destruction, is disputed by the plaintiffs with ignorance. In this context, the defendant does not take into account that the selling price for a single component (A-pillar on the right) of the frame is EUR 1,187.63. There are approximately 20 such frame components in a caravan. It should also be taken into account that the present invention is a functional further development which results in a caravan having an independent supporting structure. In contrast, in the prior art, the strength and structure of the caravan were achieved by the fixtures inside. 87. The award of provisional damages in the amount of EUR 100,000 was appropriate, taking into account the acts of infringement already admitted. Insofar as the defendant invokes confidentiality with regard to the out-of-court settlement discussions and a resulting violation of R. 11.3 VerfO, it did not point out at any time that the data and information may not be passed on to third parties. Above all, the defendant did not dispute that it had sold a total of 600 caravans of the "Deseo" model and 70 caravans of the "Azur" model (by the end of 2023). This alone justifies the amount of damages claimed. 24 LEGAL ASSESSMENT: 88. Insofar the action initially also included the territory of the Republic of Ireland, the partial withdrawal of the action declared in this respect was to be admitted in accordance with R. 265 (1) sentence 2 of the German Constitution after hearing the other party. The defendant's submission in the action for annulment can be understood to mean that the Republic of Ireland should only be covered by the action for annulment if it has become a Contracting Member State at the time of the decision on the action for annulment. Since this is not the case, the defendant (plaintiff in the counterclaim) is not seeking a decision with regard to the Republic of Ireland. It was therefore unnecessary to admit the partial withdrawal of the action for annulment, which the defendant (plaintiff in the counterclaim) had only declared in the alternative. A. Decision on the objection: 89. The objection is admissible. In particular, it was lodged within one month of service of the statement of claim (R. 19.1 VerfO). 90. Since the plaintiffs do not (or no longer) seek a decision in relation to the Republic of Ireland, the question of the international jurisdiction of the Unified Patent Court for the infringement action in relation to the Republic of Ireland no longer needs to be decided. 91. Otherwise, the opposition is unfounded. The Unified Patent Court has jurisdiction for the action without time limit pursuant to Art. 32(1)(a) UPCA, Art. 2(g), Art. 3(c) UPCA. 92. Pursuant to Art. 32(1)(a) UPCA, the Unified Patent Court has, inter alia, exclusive jurisdiction over actions for actual or threatened infringement of , whereby this subject- matter jurisdiction under Art. 2(g) UPCA also exists for infringement proceedings relating to a European patent which, pursuant to Art. 3(c) UPCA, had not yet lapsed at the time the UPCA entered into force. The jurisdiction of the Unified Patent Court with regard to the subject matter is therefore in principle established in the present case. The plaintiffs are asserting claims for (alleged) use of a European patent that had not yet expired on June 1, 2023. The opt-out initially declared by the plaintiffs in relation to the patent in dispute was withdrawn by the plaintiffs before the relevant date for the delimitation of jurisdiction between the national courts and the Unified Patent Court when the action was brought before the Unified Patent Court, which is why the present proceedings fall within the jurisdiction of the Unified Patent Court (cf: UPC CoA 30/2024, APL 4000/2024, order of 16.01.2025, para. 82 - Fives ECL v. REEL; UPC CFI 342/2024 (LK Munich, Panel 2), order of 10.02.2025, para. 32 - 36 - Phoenix Contact v. Industria Lombarda Materiale Electrico; UPC CFI 15/2023 (LK Munich, Panel 1), decision of 15.11.2024, p. 23 - Edwards Lifesciences v. Meril; UPC CFI 358/2023 (LK Paris), decision of 13.11.2024, para. 210). 93. The jurisdiction of the Unified Patent Court covers the entire period asserted in the action. The dispute is also assigned to the Unified Patent Court for decision insofar as the action asserts claims for (alleged) acts of use June 1, 2023 (entry into force of the UPCA) and before February 2, 2024 (withdrawal from the opt-out). This does not a violation of Art. 28 VCLT. With regard to jurisdiction, there is already no retroactive effect. To avoid repetition, reference is made in this respect to the statements of the Munich Local Chamber in the order of February 10, 2025 (UPC CFI 342/2024, Panel 25 2, para. 38 - 46 - Phoenix Contact v. Industria Lombarda Materiale Electrico), which the Chamber shares. B. Admissibility of the action for annulment 94. There are no concerns with regard to the admissibility of the action for annulment. 95. Since the defendant is not (or no longer) challenging the Irish part of the patent in suit with its revocation counterclaim, the Unified Patent Court has international jurisdiction for the revocation counterclaim. Pursuant to Article 32(1)(e) UPCA, the Unified Patent Court has exclusive jurisdiction for counterclaims for revocation of (European) patents. As there is currently no opt-out (Art. 83 (3) UPCA) from the exclusive jurisdiction of the court in relation the patent in dispute in force, the Unified Patent Court - as the common court of the member states of the UPCA - has international jurisdiction for the present counterclaim pursuant to Art. 24 (4), 71a (2) (a), 71b (1) of Regulation (EU) No. 1215/2012. C. Active legitimation 96. As the proprietors of the patent in suit, the plaintiffs are entitled to appeal to the court, Art. 47 para. 1 UPCA. 97. The defendant has rightly not denied that the patent in suit was effectively transferred from the third party defendant to the plaintiff 1) with regard to the countries still at issue in the infringement action, i.e. Germany, France, Italy and Slovenia. Apart from that, the plaintiffs are entered in the register as proprietors of the patent in suit (see Annex K 3), so that there is a rebuttable presumption in their favor that they are entitled to be registered as proprietors of the patent in suit (R. 8.5 lit. a) and c) VerfO). 98. The analogous application of R. 312 VerfO to assignments in the run-up to the proceedings, as advocated by the defendant, lacks both the same interests and an unintended regulatory gap. If a patent or a patent application is to another party after the proceedings have been initiated, the question arises as to whether and, if so, how the new proprietor can be included in the proceedings. On this basis, R. 312 para. 1 of the Rules of Procedure the court to authorize the new proprietor to join the proceedings as a party or to take the place of a party in accordance with R. 305 of the Rules of Procedure, insofar as the patent and the claims asserted in the proceedings have been transferred. If, on the other hand, the patent or the patent application has already been assigned prior to the proceedings, no such authorization to join is required. In this case, the new proprietor is authorized pursuant to Art. 47 para. 1 UPCA in conjunction with R. 8 para. 5 lit. R. 8(5)(a) and (c) RPIP, the new proprietor is entitled to initiate proceedings from the outset. 99. Contrary to the opinion of the defendant, the declaration of sale and transfer submitted as Annex K 1 also transferred claims for information, damages and compensation from the period prior to December 30, 2022 to the plaintiff 1). It states, among other things: "The share of Mr. Alexander Christ from 50679 Cologne (DE) in the property right complex with all rights, obligations and claims, also from the past, is hereby transferred exclusively to the purchaser, the 26 Company Yellow Sphere Innovations GmbH represented by the GF Mr. Guido Endert [...] transferred. (emphasis added) 100. Since all (and thus all) rights, obligations and claims are to be expressly assigned for the past as well, there are no objections to the agreement from the point of view of certainty, at least according to the applicable German law (Section 398 BGB) (see: Palandt/Grüneberg, 80th ed., Section 398 para. 14 f.). Likewise, contrary to the opinion of the defendant, there is no reason to assume that the relevant provision should be interpreted to mean that only claims in the internal relationship between the contracting parties and not against third parties should be covered. Based on the wording of the agreement, it is clear that the plaintiff 1) is to take the place of the third-party defendant in full with regard to the patent in dispute and the rights and obligations arising therefrom. 101. The declaration of sale and transfer also refers to the complex of property rights defined in the preamble. It therefore also covers the French, Italian and Slovenian parts of the patent in dispute. Therefore, there is no reason to doubt the legitimacy of the plaintiff 1) for these countries. The defendant has not substantially denied the validity of the assignment under French, Italian and Slovenian law, but only referred to the alleged, but actually non-existent ineffectiveness of the assignment in Germany. 102. Since the plaintiffs have already sufficiently demonstrated the legitimacy of the plaintiff 1) with reference to the agreement submitted as Annex K 1 to the file, the question raised by the defendant as to whether later submissions can be taken into account does not require further discussion at this point. D. Relevant expert 103. In the opinion of the Chamber, the relevant skilled person is a graduate in mechanical engineering (FH) with knowledge in the field of vehicle construction, in particular in the field of manufacturing vehicle structural parts made of plastic, especially foamed polyurethane. E. Scope of protection of the patent in suit 104. The patent in suit relates to a frame for a vehicle with at least one structural part made of foam resin and a manufacturing method therefor. 105. As the skilled person will gather from the introductory remarks in the patent in suit, various structural parts are known from the prior art, in particular for vehicle construction. For example, filling elements of a frame structure are used as wall elements, particularly in the motorhome sector. These filling elements generally have a plate-like structure, i.e. they have more or less two parallel outer planes, between which an intermediate layer is arranged (para. [0002]). 27 106. Such filling elements can be used with reinforced sandwich components. For example, a manufacturing process and the comparable filling element are known from the publication DE 10 2013 114 770 A1, which is recognized as prior art in the patent in suit. Such filling elements are pressed together inside the tool in order to create a connection. It is also known in the vehicle sector to manufacture the frame parts from metal bar profiles and/or plastic bar profiles in order form the load-bearing part of the vehicle. Such bar profiles are usually produced by extrusion, so that the resulting parts have a more or less linear extension. In addition, the linear extension of the frame parts also gives the vehicle a more or less square basic shape (para. [0003]). 107. Furthermore, DE 10 2013 215 933 A1 discloses a structural component for a vehicle with a mechanical reinforcement. These structural components have no concrete surfaces and are unsuitable in the visible area. EP 0 670 257 A1, mentioned in the patent in suit as prior art, also discloses a vehicle with prefabricated, inherently rigid body elements, including a foam core. However, these body elements do not form a frame of the vehicle (para. [0004]). 108. Based on this, the patent in suit according to the description of the patent in suit is based on the task (the technical problem) of providing a frame for a vehicle with a structural part and a method for manufacturing the structural part, whereby the disadvantages of the prior art are at least partially overcome. In particular, it is a task of the present invention to obtain a mechanically rigid structural part for the frame of a vehicle as well as the frame itself, which also manages without additional thermal insulation. Furthermore, it is desirable that series production of the structural part as well as the frame for a vehicle with the structural part can also be achieved. The aim is to achieve material-saving use so that little superfluous material is wasted during production (para. [0005]). 109. To solve this problem, patent claim 1 of the patent in suit protects a frame for a vehicle which is characterized by a combination of the following features: 1. Frame (11) for a vehicle (10) with at least one structural part. 2. The structural part (15) is produced as a casting (52) in a mold (50). 2.1. The mold (50) reproduces the three-dimensional outer shape of the structural part. 3. The structural part (15) is formed by a self-swelling foam resin (20). 4. The structural part (15) is at least partially coated on the outside with a protective layer (19). 5. The existing structural parts (15) form a load-bearing part of the frame (11). 110. According to Art. 69 EPC in conjunction with the Protocol on its interpretation, the patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. The interpretation of a patent claim does not solely on its exact wording in the linguistic sense. Rather, the terms 28 The description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline and that its subject matter also extends to that which, after examination of the description and drawings, appears to be the patent proprietor's request for protection (UPC CoA 335/2023, order of 26.02.2023 in conjunction with order of Order of 11.03.2024, GRUR-RS 2024, 2829, headnote 2. and para. 73 - 77 - 10x Genomics v. NanoString; UPC CFI 452/2023 (LK Düsseldorf), order of 09.04.2024, p. 13, GRUR-RS 2024, 7207, para. 49 - Ortovox v. Mam- mut; see also UPC CFI 7/2024 (LK Düsseldorf), decision of 03.07.2024 - Franz Kaldewei v. Bette; UPC CFI 239/2024 (LK Den Haag), decision of 22.11.2024 - Plant-e v. Arkyne (Bioo)). 111. Having said this, a few features need to be explained: 112. Patent claim 1 protects a frame for a vehicle and thus a product. The frame is initially characterized in that it has at least one structural part (feature 1.), with the existing structural parts forming a load-bearing part of the frame (feature 5.). 113. For its part, the structural part is characterized in that it is formed by a self-swelling foam resin (feature 3.) and is at least partially coated on the outside with a protective layer (feature 4.). In addition, the structural part is to be produced as a cast part in a casting mold (feature 2.), with the casting mold reproducing the three-dimensional outer shape of the structural part. 114. Insofar as the structural part is to be coated on the outside with a protective layer in accordance with the invention, this is not to be understood, contrary to the opinion of the defendant, to mean that the protective layer must necessarily be the outermost layer. Nor does the protective layer necessarily have to be visible from the outside. Rather, the patent in suit expressly clarifies in paragraph [0014] that the protective layer can be reworked and thus in particular also be paintable. In contrast, the patent in suit only mentions visibility from the outside in the context of the discussion of the embodiment example shown in Figure 2 (see para. [0020]). However, examples of embodiments regularly do not permit a restrictive interpretation of the patent claim characterizing the invention in general, as is the case here. 115. Based on this, patent claim 1 thus defines the protected product (frame with a structural part) at least in part by the manufacturing process (production of the structural part as a casting in a mold reproducing the three-dimensional outer shape of the structural part). It is therefore a product-by-process claim. Such claims are characterized by the fact that the technical content of the invention regularly does not consist in the process as such, but in the technical properties imparted to the product by the process (see also EPO, Guidelines for Examination, Part F, Chapter IV, 4. Clarity and Interpretation, point 4.12.; see also UPC CoA 382/2024 (Court of Appeal), order of 14.02.2025, APL 39664/2024 - Ab- bott v. Sibio). In principle, the procedure serves solely to define the product. It is not itself the object of protection and does not restrict it. The process feature typically has the task of further specifying the thing that is not yet distinctively defined by the other physical and spatial features, in that the process feature included in the claim leads to a certain additional configuration of the thing, which distinguishes the thing from the known thing and distinguishes it from the product. 29 distinguishes. The decisive factor is therefore how the person skilled in the art understands the information on the manufacturing process and what conclusions he draws from this with regard to the nature of the product according to the invention. However, if the manufacturing process leads to properties in the product which can only be achieved by this route and the presence of which can be determined in the finished product, the patent is ultimately limited to products which can be manufactured by this route. 116. Insofar the plaintiff initially took the view that the structural part only had to be designed in such a way that it was suitable for being produced in a mold which reproduces the three- dimensional outer shape of the structural part (see statement of claim, p. 16, c), this does not do justice tothe character of a product-by-process claim described in detail above. The decisive factor is which specific features of the product are "encoded" by the process steps included in the patent claim. In the present case, it is therefore decisive which physical properties of the structural part the skilled person derives from the fact that the structural part is to be produced as a cast part in a mold which reproduces the three-dimensional outer shape of the structural part, taking into account the description of the patent in suit. 117. Even if patent claim 1 amended in the grant procedure to the effect that the structural part is no longer to be "producible as a cast part in a mold", but is now to be "produced as a cast part in a mold", this alone does not a limitation of protection to a specific manufacturing process, irrespective of the question not yet conclusively clarified by the Court of Appeal as to whether and to what extent such processes can be taken into account in the grant procedure in the context of patent interpretation. Rather, the decisive factor is whether there are indications in the patent specification which justify the conclusion that the use of the process described in feature group 2. is mandatory for technical reasons in order to achieve certain features of the product. However, as will be shown in detail below, this is not the case. 118. Insofar as the defendant has relied on the fact that the specification of the specific manufacturing method (as a cast part in a mold) defines properties of the structural part which can only be produced by this manufacturing method, namely to produce a frame with a stable structural part made of foam resin with a particularly high-quality surface (emphasis added), there is no evidence for the latter in the patent in suit. It is true that the patent in suit mentions in paragraph [0014] a sophisticated and attractive surface which can also used directly as a visible surface in the vehicle area. However, these considerations are related to the incorporation of the protective layer of the structural part into the mold. In contrast to process claim 10 (step a) there), patent claim 1 does not address the issue of applying the protective layer. Rather, as explained, it is a product-by- process claim which protects a frame with at least one structural part and thus a product. According to the invention, this must be coated with a protective layer, however applied (feature 4.). This applies all the more since the protective layer is also only to be cast with the foam resin according to sub-claim 2. 119. Nothing else follows from the production of the structural part in a mold reproducing the three-dimensional outer shape of the structural part as described in feature group 2. On the one hand, the mold can also reproduce the outer shape of the structural part if a protective layer not applied until after the casting process. What is required is the reproduction of the three-dimensional outer shape of the structural part, but not, 30 that the internal dimensions of the mold correspond to the external dimensions of the structural part. Apart from this, a structural part can also be produced in a mold if the protective layer is applied in a further process step. Patent claim 1 does not deal with the question of how the protective layer is applied. In particular, unlike process claim 10, it also does not require that the casting mold be at least partially lined with a protective layer before the pourable foam resin is filled into the casting mold. The manner in which the protective layer is applied is thus at the discretion of the skilled person, as long as it is only present in the end product, the structural part. The protective layer can therefore applied during the pouring of the foam resin or in another mold in a further process step. Likewise, any other form of applying the protective layer is covered by the scope of protection of patent claim 1. 120. Nothing to the contrary follows from fact that paragraph [0005] of the patent in suit mentions material conservation as a task of the invention. The corresponding reference refers to the avoidance of wasting superfluous material (see para. [0005]), but not to a possible saving of material by using as few working materials as possible and thus in particular casting molds. Insofar as para [0012], on the other hand, emphasizes the reuse of the casting mold, this is to be read in connection with the process described in para [0009]. Accordingly, the contact surfaces present between the mold and the foam resin are at least partially lined with a protective layer with which the structural part is later lined. Due to this (prior) installation of the protective layer, the casting mold can be reused without any problems (para. [0012]). In contrast to patent claim 10, however, such a lining with a protective layer is not mentioned in patent claim 1. 121. The fact that the patent in suit (also) intends to enable series production of the structural part (para. [0005]) does not compel a different assessment. As the skilled person understands from para. [0012], the casting mold is intended to be reusable due to the insertion of the protective layer, which is why identical structural parts can be produced in small and medium-sized series in a simple manner. The above remarks on material savings therefore apply accordingly here, to which reference is made in order to avoid repetition. Apart from this, it is also neither submitted nor apparent that such a series production can be produced solely with the use of a (single) casting mold. 122. There is no indication in the patent in suit that the patent in suit, as represented by the defendant, seeks a uniform thickness of the protective layer, which can only be realized with the method described in patent claim 1. The patent in suit is concerned with the provision of a mechanically rigid structural part for the frame of a vehicle which does not require additional thermal insulation (see paragraphs [0005] and [0011]). Since a protective layer of the structural part is already incorporated into the casting mold during the manufacturing process, the structural parts are given a sophisticated and attractive surface that can also be used directly in the vehicle exterior (para. [0014]). It is not apparent that this requires an exactly uniform thickness of the protective layer. 123. Nor does the skilled person find any indication in the patent in suit that the protective layer should be as thin as possible. The overall aim is to provide a very stable but lightweight vehicle (see sp. 4, line 58 - sp. 5, line 2). However, the fact that this advantage is to be achieved by a particularly thin design of the protective layer cannot be inferred from the statement of dispute. The thickness of the protective layer is not discussed in the patent in suit. Rather, the decisive factor is the formation of the load-bearing part of the frame for a 31 vehicle with structural parts made of a self-swelling foam resin. 124. Insofar the defendant further referred at the oral hearing to the fact that, when using the method described in patent claim 1, no spacers are required which violate the outer protective layer, the skilled person must include in his considerations that the structural part according to the invention is to be "at least partially" coated from the outside with a protective layer (feature 4.). An uninterrupted protective layer that completely covers the structural part is therefore not a prerequisite for the realization of the protected technical teaching. 125. It is not apparent from the patent in suit that the provision of a mechanically strong and at the same time thermally insulated component sought by the invention requires a particularly tight connection between the self-swelling foam resin of the core and the protective layer, which can only be realized by the method described in patent claim 1. 126. The creation of surfaces which do not require any further post-processing, as further addressed by the defendant, is addressed by the patent in suit solely in connection the design of the mold with a protective layer and the subsequent bonding of the swelling foam resin with the protective layer (para. [0009] or with the incorporation of a protective layer of the structural part into the mold (cf. para. [0014]). However, unlike in method claim 10 (step a) there), the laying out of the mold is not mentioned in patent claim 1. As already explained, patent claim 1 does not deal with the application of the protective layer. Rather, it is sufficient, but also necessary, that the structural part is at least partially coated with a protective layer, however applied. 127. If the person skilled in the art approaches the question of which properties are associated with the method described in feature group 2 according to the invention, he will rather the prior art described in paragraphs [0002] - [0004] in his considerations. According to this, on the one hand, plate-like filling elements of a frame structure were known, which have more or less two parallel outer planes between which an intermediate layer is arranged. In addition, it was previously known to manufacture frame parts in the form of upright profiles that form a supporting frame. These bar profiles, made of metal or plastic and manufactured by extrusion, a more or less linear extension, which is why the frame parts formed from them have a more or less square basic shape of a vehicle. 128. The components known in the prior art are therefore characterized by the fact that they are either not structurally strong (filling elements) and (therefore) do not form a load- bearing part of the vehicle frame. Or, although they have the strength required for the load-bearing parts of the frame, they only permit a very limited design language (square basic shape of a vehicle) due to the use of components manufactured by extrusion. 129. As the skilled person will further understand from paragraph [0005] of the specification of the patent in suit, the invention is intended to overcome the disadvantages existing in the prior art and to provide a mechanically rigid and load-bearing structural part for the frame of a vehicle of the frame itself. 32 130. The overcoming of the limited shape language associated with the extrusion process is taken into account by feature group 2.: If the structural part formed from foam resin is to be produced as a cast part in a mould that reproduces the three-dimensional outer shape of the structural part (feature group 2.), a more flexible shape language of the structural part can be realized; the limitations of the shape language existing in the prior art due to the linear extension of the frame parts no longer apply. Unlike in the prior art, the frame is no longer from bar profiles. Instead, the structural parts formed from self-swelling foam resin form a load-bearing part of the frame (feature 5.), whereby the structural parts not only the necessary tensile strength, but also have any design language adapted to the respective requirements of the vehicle in question. 131. Since the structural elements are formed from self-swelling foam resin (feature 3.), which can both ensure thermal insulation of the vehicle and have the necessary tensile strength (see paragraph [0015] and sub-claim 7), it a mechanically strong and load-bearing structural part for the frame of a vehicle, which can also do without additional thermal insulation. F. Action for annulment 132. The action for annulment is not successful on the merits. I. Feasibility of the invention 133. There is no doubt that the invention according to claim 1 is disclosed so clearly and completely that a person skilled in the art can carry it out and that the requirements of Art. 83 EPC are thus fulfilled. 134. The defendant argues in support of what it considers to be a lack of practicability that patent claim 1 defines a vehicle frame with at least one structural part which forms a load- bearing part of the frame. Consequently, non-load-bearing parts of a frame must also exist. It is not clear what the load-bearing parts and the non-load-bearing parts should be. However, these considerations do not concern the practicability, but at most the clarity of the claim. However, this is not a ground for invalidity within the meaning of Art. 138 EPC. The defendant's arguments in this regard are therefore not suitable from the outset to substantially deny the validity of the patent in suit. II. Novelty 135. The prior art cited by the defendant does not anticipate the technical teaching of the patent in suit to the detriment of novelty. 1. Scale of the novelty test 136. A technical teaching is new if it deviates from the prior art in at least one of the known features. Only that which is immediately apparent to a person skilled in the relevant technical field from the publication or prior use is anticipated in the prior art (see UPC CoA 382/2024 (Court of Appeal), order of 14.02.2025, APL 39664/2024 - Abbott v. Sibio). Findings that a skilled person only obtains on the basis of further considerations or the consultation of further writings or uses are not prior art (see UPC CFI 16/2024 (LK Düsseldorf), decision of 14.01.2025 - Ortovox v. Mammut; 33 UPC CFI 7/2024 (LK Düsseldorf), decision of 03.07.2024 - Kaldewei v. Bette; UPC CFI 239/2024 (LK Den Haag), decision of 22.11.2024 - Plant-e v. Arkyne (Bioo)). 2. Novelty test in individual cases 137. On this basis, the technical teaching protected by patent claim 1 proves to be new compared to the prior art cited by the defendant. a) DE 198 98 026 A1 (Annex WK 3, hereinafter: DE '026) 138. This applies first of all with regard to DE '026. 139. The citation protects a process for the production of molded plastic parts and in particular for the production of car roofs (see patent claim 1). In a first working cycle, a foam core consisting of polyurethane foam with reinforcing inserts embedded therein is produced. In a second work cycle, the foam core is provided with a coating by placing the prefabricated foam core in a mold and holding it in the mold with the side to be coated precisely spaced from a bottom of the mold. The cavity between the bottom of the mold and the foam core is then flooded with liquid polyurethane until it is completely filled. 140. There is no indication in the citation that the structural part to be produced in this way a component of a vehicle frame, nor is there any indication that the existing structural parts form load-bearing parts of the frame. Therefore, regardless of whether polyurethane is a self-swelling foam resin, there is no disclosure of features 1 and 5. b) DE 10 2015 111 421 A1 (Annex WK 4, hereinafter: DE `421) 141. DE '421 also does not disclose the technical teaching protected by patent claim 1 in a manner prejudicial to novelty. 142. The invention protected there relates to a surface element for a camping vehicle, in particular caravans, motorhomes, etc. (para. [0001]). The term "surface element" includes the side walls or sections of side walls of camping vehicles. It also includes the roof, the floor or floor sections and the rear wall or rear wall sections (para. [0002]). 143. As the skilled person will further understand from patent claim 1 and paragraph [0005] of the citation, the surface element comprises 1. a frame structure (6, 12, 20) formed from a curable material that can be dispensed from a dispenser, 2. two cover layers (4, 7; 13, 16; 17, 23) connected to the frame structure, between which the frame structure is arranged, and 3. insulating material (1, 15, 21), which at least partially fills the interstices (14) of the frame structure and is also arranged between the cover layers. 34 144. One possible design of the surface element is illustrated in Figure 4 of the opposite illustration: 145. With regard to the material of the frame structure, the person skilled in the art understands from paragraph [0010] of the disclosure that it preferably of a group consisting of (reinforced) plastic or plastic foam reinforced by rice husks. These materials would have particularly favorable physical properties and would be well suited for producing a frame structure of a panel element according to the invention, e.g. by casting. 146. As the skilled person learns from paragraph [0008] of the citation, the protected method allows any geometry of the frame structure. 147. However, there are no indications in the citation that the existing structural parts form a load-bearing part of the frame of the vehicle. In any event, feature 5 is not disclosed. c) DE 10 2013 006 300 A1 (Annex WK 5, hereinafter: DE '300) 148. DE `300 also discloses a method for manufacturing a structural component. In this process, a lightweight core provided is positioned in a mold with the aid of spacer elements in a pre- assembly position in which the lightweight core is arranged at a distance on all sides from the inner wall surfaces of the mold. A liquid, hardenable foam mass is then introduced into the mold, whereby the foam mass flows around the lightweight core on all sides. After the foam mass has hardened in the closed tool and a shell of the structural part has been formed, the tool is opened and the structural part thus formed is removed (see patent claim 1). 149. As the skilled person can see from paragraph [0061] of the citation, in an advantageous design the structural component is designed as a support element or as a carrier component, in particular for a vehicle mirror, a vehicle light, a vehicle license plate or as a handle for a vehicle (see also paragraph [0124]). 150. It is also not disclosed here that the structural parts produced in this way form a load- bearing part of the frame of the vehicle (features 1. and 5.). d) DE 10 2014 204 369 A1 (Annex WK 7, hereinafter: `369) 151. The caveat relates to a method of manufacturing a load-bearing vehicle structure, which is characterized in that a core and at least one shell are formed 35 and the shell is then placed on the core (see patent claim 1 and paragraph [0005]). 152. Figure 1 of the citation, superimposed below, shows a load-bearing vehicle structure manufactured according to the method disclosed in the citation. Figure 3 is a sectional view along line B-B: 153. With regard to the material of the core, the person skilled in the art understands from paragraph [0008] that this is preferably made of foam, with plastic foam or metal foam being used. The foam is preferably formed in a mold. This indicates, without this being expressly disclosed in the citation, that the foam material is self-swelling. However, the question arises as to whether general disclosure of a plastic foam also discloses that the structural part is formed by a self-swelling foam resin within the meaning of feature 3. 154. Ultimately, this is not important, at least in the context of the novelty test. 155. Since in the solution disclosed in the citation only two rigid bodies (shells 6) are joined together, within which there a core (5), the coating of the structural part with a protective layer required by feature 4. is in any event lacking (emphasis added). 156. In addition, feature group 2 of the patent in suit requires that the structural part is produced in a mold which reproduces the three-dimensional outer shape of the structural part. For the product, it follows that the outer shape of the core, which is at least partially coated in the end product, corresponds to the outer shape of the structural part. However, this is not the case with the solution disclosed in DE `369. As the skilled person can see from paragraphs [0005] and [0034], the geometry of the core can be designed independently of the shell, so that, for example, the core only lies against the shell in some places and cavities remain in another place (see also Figure 3 shown above). However, this is excluded according to the invention by the specification contained in feature 2.1. according to which the casting mold specifies the three-dimensional outer shape of the structural part. e) EP 0 670 257 A1 (Annex WK 26, hereinafter: DE '257) 157. The subject matter of DE 257, which is acknowledged in paragraph [0004] of the patent in suit, is a lightweight vehicle with a self-supporting body made of fiber-reinforced plastic and a corresponding body, as shown by way of example in Figure 1 of the citation, which is superimposed below: 36 158. The essence of the disclosed invention is explained on p. 3, lines 12 - 26 of the citation as follows: "The present invention is intended to provide a completely new design principle for a lightweight vehicle with a self-supporting plastic body, which is better suited to the material fiber-reinforced plastic, makes better use of its special possibilities and allows efficient series production of the body and thus of the entire lightweight vehicle. The lightweight vehicle which meets this requirement has a self-supporting body made of fibre-reinforced plastic, which is composed of prefabricated body elements which are connected to one another along their butt lines by hardening synthetic resin, and is characterized according to the invention in that in that the prefabricated body elements are inherently rigid (dimensionally stable) and large-area interfaces with the respective adjacent body elements, and in that the body elements are connected to one another without laminating over a large area in abutting relationship only in the region of their interfaces. The individual body elements are preferably formed as a whole or at least in the vicinity of their joint or boundary surfaces bonded to the adjacent body elements and possibly partially connected by means of positive locking as a box structure with a foam core and a preferably fiber-reinforced plastic shell. The self-supporting car body according to the invention is designed accordingly." (emphasis added) 159. A self-supporting body is thus disclosed, but not a frame for a vehicle in which the structural elements form a load-bearing part of the frame (features 1. and 5. of claim 1). f) DE 10 2013 008 364 A1 (WK 31, hereinafter: DE '364) 160. The citation relates to a method for manufacturing a structural component for exterior applications with a high-quality surface and a structural component. Such structural components are, for example, body parts or other vehicle parts, such as front hoods for tractors or elements thereof, radiator hoods, front panels, 37 Skirts, covers or other structural components which are used in the exterior of a vehicle and which accordingly have a high-quality surface (para. [0002] f. and [0011], emphasis added). 161. Not disclosed is therefore a frame for a vehicle with at least one structural partin which the existing structural parts form a load-bearing part of the frame (features 1. g) Technical drawing dated February 1, 2012 (Annex WK 15) 162. Insofar as the defendant attempts to justify the lack of novelty from its point of view by referring to the technical drawing submitted as Annex WK 15, it is neither sufficiently demonstrated nor apparent that this is a structural part of a frame within the meaning of features 1. and 5. of patent claim 1. 163. In addition, with regard to the objection of obvious prior use, the explanations on the right of prior use apply accordingly. h) Product catalog of the company Fendt-Caravan from August 2014 (Annex WK 19) 164. Finally, the same applies with regard to the product catalog of the company Fendt-Caravan from 2024 submitted as Annex WK 19. 165. It is not apparent that the front modules for caravans described there and manufactured using the LFI process are structural parts of a vehicle frame that form a load-bearing part of the frame. The fact that these can accommodate inserts, such as windows, is not sufficient. III. Inventive activity 1. Audit standard 166. According to Art. 56 EPC, an invention is considered to an inventive step if it is not obvious to a person skilled in the art from the prior art. 167. According to the Munich Central Chamber (UPC CFI 1/2023 (CD Munich), decision of 16.07.2024 - Sanofi v. Amgen), which the Düsseldorf Local Chamber has already endorsed in the past (UPC CFI 363/2023, decision of 10.10.2024, - Se- oul Viosys v. expert; UPC CFI 16/2024, decision of 14.01.2025 - Ortovox v. Mammut), the examination of inventive step always requires an assessment on a case-by-case basis, taking into account all relevant facts and circumstances. An objective approach must be taken. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. 168. The inventive step is to be assessed from the perspective of the person skilled in the art on the basis of the entire prior art including the general technical knowledge. It must be assumed that the person skilled in the art had access to the entire generally accessible prior art at the relevant time. The decisive factor is whether the claimed subject-matter is derived from the prior art in such a way that the skilled person would have found it on the basis of his knowledge and skills, e.g. by obvious modifications of what is already known. 38 169. In order to assess whether or not a claimed invention was obvious to a person skilled in the art, it is first necessary to determine a starting point in the prior art. Reasons must be given as to why the skilled person would regard a particular part of the prior art as a realistic starting point. A starting point is realistic if its teaching would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop a product or process similar to that disclosed in the prior art, i.e. having a similar basic problem to the claimed invention (cf. UPC CoA 335/2024, order of 26.02.2024, p. 34 - NanoString v. 10x Genomics, under "cc" in the original German version, "For a person skilled in the art who was faced with the task at the priority date of the patent in suit, [...] D 6 was of interest"). There may be several realistic starting points, and it is not necessary to determine the "most promising" starting point. 170. If the claimed subject-matter is compared with the prior art after interpretation, the question arises as to whether it would have been obvious for the skilled person to arrive at the claimed solution on the basis of a realistic disclosure of the prior art in view of the underlying problem. If it was not obvious to arrive at this solution, the claimed subject- matter fulfills the requirements of Article 56 EPC. 171. In general, a claimed solution is obvious if, based on the prior art, the skilled person would be motivated (i.e. would have an incentive, see the CoA in NanoString v. 10x Genomics, p. 34) to consider the claimed solution and implement it as the next step ("next step", see UPC CoA 335/2024, order of 26.02.2024, p. 35, second paragraph - NanoString v. 10x Genomics) in the development of the prior art. On the other hand, it may be relevant whether the skilled person would have anticipated particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may permissible to combine disclosures from the prior art. 172. A technical effect or advantage achieved by the claimed subject-matter in comparison with the prior art may be an indication of inventive step. A feature arbitrarily selected from several possibilities cannot generally contribute to inventive step. 173. A retrospective view must be avoided. The question of inventive step should not be answered by looking retrospectively for (combined) prior art disclosures from which this solution could be derived when the patented subject-matter or the patented solution is known. 2. Examination of inventive step in the present case 174. Measured against this, the submission of the defendant (plaintiff in the counterclaim) is not suitable to cast significant doubt on the inventive step. a) Based on DE 10 2013 215 933 A1 (Appendix WK 6, hereinafter: DE '933) in with the common general knowledge or Appendix WK 3, Appendix WK 4, Appendix WK 5 and EP 1 484 150 A2 (WK 11) 175. In so far as the defendant (plaintiff in the action for annulment) claims the absence of inventive step, the 39 DE '933, its arguments in this regard are based on the premise that the citation contains all of the features of patent claim 1 with the exception of feature 4. of the feature structure shown above (protective layer). 176. However, there is also no disclosure of a frame of a vehicle with at least one structural part, whereby the existing structural parts form a load-bearing part of the frame (features 1. and 5.). 177. The citation describes a structural part of a vehicle which a foam body with a three- dimensional extension. An example of such a structural part is shown in the following Figure 1 of the embodiment. 178. In the foam body (20) of the structural part (10), at least one reinforcing element (30) for mechanically reinforcing the foam body (20) is arranged at least in sections inside the foam body. The reinforcing element (30) has at least one shaped end section (32), via which it is positively connected to the foam body (20) (patent claim 1). 179. As the skilled person further understands from patent claim 3 of DE '933, the structural component is preferably designed as a body component of the vehicle. 180. In any event, the citation does not expressly disclose that the disclosed structural component can also be part of the vehicle frame. The defendant therefore merely refers to paragraph [0003], which states: "The disadvantage of known structural components with foam bodies is that the mechanical load-bearing capacity within narrow limits. In particular, large mechanical loads, such as those that can occur within a vehicle body, are very difficult or impossible to transfer through such foam bodies. Crash situations in particular are a limiting factor for the use of foam bodies. To date, structural components with such foam bodies cannot therefore be used for the main load-bearing structures of the vehicle." (emphasis added) 181. The person skilled in the art is likely to conclude from this that the disclosed structural part can now also be used for load-bearing building structures due to the reinforcing elements used. However, whether this also discloses the possibility of use as a load-bearing part in the vehicle frame appears to be questionable, if only because the counter 40 In connection with the load-bearing capacity, only body components or outer skin components of the vehicle are mentioned (cf. para. [0010], [0012]), but not the frame. Nothing else follows from the mention in paragraph [0012] of areas of an A, B and C pillar (emphasis added). It is unclear which areas are to be affected. It is not clear from the citation that the entire A, B or C pillar is or can be of foam. In addition, the citation is more concerned with attaching the foam component to existing elements. Since the foam body is therefore merely an add-on that is attached to the inside body parts, there is no reason for the person skilled in the art to provide an additional coating, for example in the form of a paint finish, particularly in view of the fact that it cannot be from the citation that the component is in the visible area. The requirements for a lack of inventive step are therefore not met. Nor is it otherwise apparent how the average person skilled in the art would come up with the missing features without inventive thinking. b) WK 25 (hereinafter: EP `189) in conjunction with the expert knowledge or annexes WK 3, WK 4, WK 5, WK 11 182. EP `189 discloses a frame structure for a motor vehicle made of plastic, as described in paragraph [0021] ff. of the citation and shown in the following figure 1 of the citation: 183. Contrary to the defendant's view, the disclosed solution does not differ from the solution protected by the patent in suit solely in that the solution according to EP '189 lacks a protective layer within the meaning of the patent in suit. Rather, feature group 2. and feature 3. are also not disclosed. 184. It is true that the envelope of preferably carbon fibers described in the citation can be filled with a self-swelling foam (see paragraphs [0023] - [0026]). However, the solution claimed by the patent in suit is characterized by the fact that the structural part is formed by a self- swelling foam resin, which may be provided with reinforcing elements (see feature 3. of claim 1 and claim 4 of the patent in suit). Even if the casting process itself is not part of the claim, the at least one structural component of the frame therefore necessarily consists of a self-swelling foam resin provided with a protective layer. 185. This is not the case with the solution disclosed in the citation. The reinforcement components described there are characterized by the fact that they have a cored and 41 thus have a hollow body made of fibers. If the hollow body produced in this way is filled with a self-swelling foam material (see paragraph [0014]), this foam material can be completely or partially destroyed again in the further course of the process. 186. That this is the case is clear to the skilled person from paragraph [0015] of EP '189, which states, inter alia: "The curing which will be under elevated temperature may have the effect of destroying or partially destroying the foam core." 187. Something similar can be found in paragraph [0023], where it is stated in connection with the explanation of Figure 23: "In the process of curing, which is at an elevated temperature, the foam core of the reinforce- ment may be partially or even completely destroyed or melted but this is of no importance. What is left, as seen in Figure 23, is a honeycomb rigid-walled complete beam structure 108 of very satisfactory strength to weight ratio. Voids where the foam has been destroyed are seen in the darkened areas such as 109." (emphasis added) 188. In contrast to the technical teaching protected by the patent in suit, the presence of a core made of a self-swelling foam material is therefore possible, but not mandatory. The decisive component of the disclosed structural element is the (carbon) fiber shell. There is therefore no disclosure feature group 2 and feature 3. 189. In addition, the defendant (plaintiff in the counterclaim) does not provide sufficient information as to what reason the skilled person should have to apply a protective layer a protective element as disclosed in EP '189. The mere general reference that it is already within the realm of skill in the art and is nothing more than a routine technical task imposed on the skilled person to provide the structural parts in question with a protective coating, such as a layer of paint, in order to protect them from external influences, is not sufficient. This applies all the more since the plaintiffs have undisputedly argued that the bodywork is attached to the frame shown in Figure 1, which in turn is painted, but not the frame itself. c) WK 31 in conjunction systems WK 3 to WK 7, WK 15 and WK 26 190. Finally, in so far as the defendant (plaintiff in the counterclaim) attempts to justify the lack of inventive step on the basis of DE '364 (Exhibit WK 31), there is no disclosure of the structural part as a load-bearing part of a vehicle frame (features 1. and 5.), as already stated in the context of the examination of novelty. The defendant (plaintiff in the counterclaim) has not explained why the skilled person have reason to combine the solution disclosed there with the solutions disclosed in the documents submitted as annexes WK 3 to WK 7, WK 15 and WK 26. The mere general reference that the aforementioned documents disclose that the structural parts described therein can also form a load-bearing part of a vehicle frame is not sufficient. 42 G. Infringement of the patent in dispute: I. Feature realization: 191. The parties rightly do not dispute the realization of characteristics 1, 3 and 6, so that no further explanation is required in this respect. 192. Based on the understanding developed in detail above, feature group 2 is also realized in the challenged embodiments. 193. The realization of the process described therein is not a prerequisite for this. Therefore, the fact that the defendant uses more than one mold in the production of the attacked embodiments does not lead out of the scope of protection of the patent in suit, nor does the fact that the protective layer in the attacked embodiments is not applied in the mold used to produce the foam core preclude the realization of the protected technical teaching. Finally, the defendant cannot successfully argue that the mold used to produce the foam core does not reflect the outer shape of the structure. 194. Rather, the decisive factor is whether the properties encoded by the method included in claim 1 are present in the attacked embodiments. This is the case. 195. The defendant itself advertises the Fiber Frame technology it uses by stating that it enables a progressive design language through an innovative construction method and provides more flexibility in the floor plan and room design (see Annex K 5). Furthermore, the defendant did not contradict the explanation of the "Caravan Institute" submitted by the plaintiff as Annex K 6, according to which Fiber Frame is a high-strength glass fiber frame that a self-supporting structure with rigid connections. According to this, the manufacturing process of the frames opens up new possibilities for the realization of "multi-dimensional" elements in the design layout. Finally, in the press release submitted as Annex K 7, the defendant also refers to the greater flexibility in the floor plan and room design caused by the fiber frame parts. 196. The parts produced using fiber frame technology are therefore not limited to a linear shape, but can be designed to meet the respective requirements for the shape of the frame and therefore ultimately also the caravan. 197. The fact that the structural part is also coated on the outside with a protective layer within the meaning of feature 4. is illustrated in the following figure, which is taken from the statement of claim: 43 198. In the contested embodiments, the foam has an outer skin made of a 2-component polyurethane resin and thus a protective layer within the meaning of the patent in dispute. The lacquer film arranged on top does not lead out of the protective area. On the one hand, the patent in suit does not exclude the protective layer being varnished, but sees this as a way of conveying a pleasing impression of the surface. Secondly, patent claim 1 does not contain any specifications regarding the more detailed technical design of the protective layer. This can therefore be a single or multi-part design. If one were to understand patent claim 1, as the defendant does not, to mean that the protective layer must necessarily be arranged completely on the outside and therefore may not be covered by further layers, there is no apparent reason not to regard the outer skin and paint film together as a (two- part) protective layer. II. Act of infringement 199. By offering and marketing the attacked embodiments (even after the entry into force of the Agreement on a Unified Patent Court (UPCA)), the defendant has acts of infringement within the meaning of Art. 25 lit. a) UPCA. The offering and placing on the market also creates a rebuttable presumption that the defendant also uses the attacked embodiment or imports or possesses it for the purposes of offering, placing on the market or using it (UPC CFI 7/2024 (LK Düsseldorf), decision of 03/07/2024 - Kaldewei v. Bette; UPC CFI 363/2023 (LK Düsseldorf, decision of 10/10/2024 - Seoul Viosys v. expert e- Commerce). 1. Applicable law 200. In accordance with the principles developed by the Local Court of Mannheim, the UPCA also applies to acts of infringement after the UPCA entered into force in the case of European patents (UPC CFI 162/2024, decision of 11.03.2025, headnote 3 lit. a) and para. 95 - 98 - Hurom v. Nuc; see also Tilmann, GRUR-Patent 2025, 51). 201. If one wanted to see this differently and demand the application of national patent law for European patents, even if the acts of infringement were committed after the UPCA came into force (see McGuire, GRUR-Patent 2024, 466, in particular para. 33 et seq.), such an understanding would not lead to a different result in the present case. Even then, in order to avoid difficulties arising from the application of multiple 44 national patent laws, the UPCA should be applied as harmonized law, unless explicit reference is made to deviating national provisions (see McGuire, GRUR-Patent 2024, 466, para. 48 - 51). Since there no such reference in the present case, such an understanding also leads to the application of the UPCA in the present case. 202. The fact that the attacked embodiments were offered and marketed not only after but also before the UPCA came into force does not justify a different assessment. 203. According to the principles established by the Local Division Mannheim (UPC CFI 162/2024, decision of 11.03.2025, headnote 4 c) and para. 105 f. - Hurom v. NUC), the substantive law as laid down in the UPCA applies to acts which began before the UPCA entered into force and which were continued after June 1, 2023, even taking into account the prohibition of retroactivity enshrined in Art. 28 of the Vienna Convention. 204. When answering the question of whether acts of infringement are "continuing" in this sense, an overly formalistic approach must not be taken, which would run counter to the objectives of the agreement. A normative and therefore evaluative approach is required. A continuing act can therefore be assumed if the infringer - as in this case - continues its infringing conduct, although it could have ceased it in view of the entry into force of the UPCA on June 1, 2023. In this case, however, each party retains the right to invoke provisions of national law which relate to acts prior to 1 June 2023 and which are more favorable to its position compared to the provisions of the UPCA and the Rules of Procedure (UPC CFI 162/2024, decision of 11.03.2025, headnote 5 and para. 105 f. - Hurom v. NUC). 205. The Chamber shares the view of the Mannheim Local Chamber that, with regard to the application of national law, it is primarily for the party to present its legal arguments on national law. In this context, a party may consider either submitting arguments on national law through its representatives and/or supporting these arguments with the opinion of a private expert or proposing to the court the submission of such a private expert opinion if the court deems this useful and appropriate. Only if the legal opinions on national law submitted by the parties do not correspond and the court itself is not in a position to adequately answer the question of national law must the court examine whether an expert appointed by the court and proposed by the party concerned must be appointed (Mannheim Local Chamber, UPC CFI 162/2024, decision of 11.03.2025, headnote 5 and para. 105 f. - Hurom v. NUC; Bopp/Kircher/Böttcher, Handbuch Europäischer Patentprozess, 3rd ed., Section 23 para. 175 et seq.; Ahrens GRUR 2017, 323, 325, Haft/Lohr, GRUR Patent 2023, 69, 71). It would therefore have been up to the parties, and in the present case in particular the defendant, to refer to deviating provisions of national law. However, no such reference can be inferred from the defendant's submission, so that the UPCA remains applicable as the harmonizing law. 206. The opt-out declared in relation to the patent in suit, but withdrawn, cannot change this. This concerns the jurisdiction of the Unified Patent Court, but not the substantive law (Tilmann/Plassmann/W. Tilmann, Unitary Patent, Unified Patent Court, Art. 89 UPCA, para. 29 with reference to Art. 83 para. 15 - 19). 45 2. Acts of infringement by the defendant a) Test purchase 207. It is undisputed that the plaintiff 1) purchased an A-pillar of one of the challenged designs on June 26, 2024 as part of a test purchase (see Annex K 17). 208. Irrespective of when this structural part was produced, the defendant has not substantially disputed the plaintiffs' related submission that the defendant offered and distributed the attacked embodiments after the UPCA came into force. Such distribution is therefore undisputed (R. 171 para. 2 VerfO), which is why the question raised by the defendant as to the necessity of naming specific infringing acts after the UPCA came into force is irrelevant. The court does not with the defendant's view that the delivery in the context of the test purchase was made with the consent of the plaintiffs and therefore could not constitute an act of infringement. It is precisely the purpose of a test purchase to clarify possible acts of infringement and to collect evidence for any infringement proceedings that may be necessary in the further course. This does not imply consent to the sale of the accused embodiments. 209. Nor can the defendant in this context on the fact that the plaintiff did not initially specify the place and time of the act of infringement, contrary to R. 13 (1) (l) (i) of the Rules of Procedure. The requirements for the statement of claim set out in R. 13 Para. 1 lit. a) to lit. i) VerfO are of a formal nature. They are to be checked by the Registry as soon as possible after filing the action, R. 16 para. 2 VerfO. If the examination reveals that the requirements have not been met, the registry will give the plaintiff the opportunity to rectify the deficiencies within 14 days, R. 16 para. 3 lit. a) VerfO. If the deficiencies are not remedied within this period, a decision by default may be issued in accordance with R. 16 para. 5 of the Rules of Procedure in conjunction with R. 355 para. 1 lit. a) of the Rules of Procedure. In contrast, the requirements set out in R. 13 (1) (j) to (q) of the Rules of Procedure relate to the content of the application. Accordingly, compliance with these requirements is not checked by the Registry and no deadline is set in the event of non-compliance, which can lead to a decision by default pursuant to R. 355 para. 1 lit. a) of the Rules of Procedure. Rather, compliance with the requirements set out there concerns the merits of the action, the examination of which is the responsibility of the judge and must be taken into account by in his decision. Failure to comply with the requirements set out in R. 13 para. 1 lit. j) to q) of the Regulation may be detrimental to the plaintiff (on the comparable problem in summary proceedings: CoA 335/2023, App 576355/2023, Order v. 26.02.2024, NanoString v. 10x Genomics, p. 23 f.). 210. The purpose of the indication of the place and date of the infringing act required by R. 13 (1) (l) RP is to compel the plaintiff to set out the facts in such detail that his grounds and legal argumentation can be subsumed under them (cf: Tilmann/Plassmann/Steininger, Unitary Patent/Unified Patent Court, R. 13 para. 20). At the same time, the defendant should be put in a position to understand the allegation of infringement made against him and to be able to respond to it in concrete terms. 211. Based on these principles, the plaintiffs initially referred in their statement of claim only in general terms to the test purchase they carried out (see statement of claim, p. 12, para. 12), without specifying the time and place. In response to a corresponding complaint, however, they substantiated their claim in the reply and submitted an invoice as Annex K 17. The corresponding test purchase then remained undisputed. The proceedings were neither delayed by the initial lack of information, nor did this result in 46 This would be disadvantageous for the defendant or the court when conducting the proceedings and preparing for the hearing. There is therefore no reason to reject the corresponding submission pursuant to R. 9 (2) of the Rules of Procedure. 212. Apart from this, the defendant has not disputed the plaintiff's further submission (see statement of claim p. 23, para. 56; reply, p. 13 para. 40) that almost 600 caravans of the "Deseo" model and 70 caravans of the "Azur" model had been sold by the end of 2023. This factual submission is therefore also undisputed and the decision must be based on it (R. 171 para. 2 VerfO). 213. Insofar as the defendant instead objects that the plaintiffs obtained their knowledge from out-of-court settlement discussions, which is why the corresponding information in the present proceedings constitutes a violation of R. 11 (3) of the Rules of Procedure, the court is unable to agree. The standard is intended to protect the confidentiality of an agreement reached in proceedings conducted under the auspices of the Mediation and Arbitration Center. It is intended to ensure that no statements, proposals, offers or concessions as well as documents drawn up in the course of the meeting are used in subsequent court proceedings (see Tilmann/Plassmann/Tochtermann, Einheitspa- tent, Einheitliches Patentgericht, R. 11 EPGVerfO para. 18 f.). From the outset, the standard does not apply to pre-trial discussions between the parties. b) Website of the defendant 214. In addition, the defendant's website fulfills the requirements of an offer within the meaning of Art. 25 lit. a) UPCA. 215. In patent law, the term "offer" within the meaning of Art. 25(a) UPCA is to be understood in purely economic terms. Offering is not only a preparatory act preceding manufacture, placing on the market, introduction or possession, but an independent type of use in addition to these acts, which is to be assessed independently. According to Art. 25(a) UPCA, the term "offering" covers - in the case of a product - any act committed within the scope of the European patent in question which, according to its objective explanatory value, makes the subject-matter of the demand available in an externally perceptible manner for the purpose of acquiring the power of disposal. It is not necessary for the offer to fulfill the requirements of a concrete, legally effective and binding contractual offer. It is also irrelevant whether the offeror's purpose is to conclude his own or third-party transactions and whether he is commissioned or authorized by a third party in the case of an offer for the benefit of a third party. Rather, the only decisive factor is whether the act in question actually arouses demand for an object infringing property rights, which the offer holds out the prospect of satisfying. The concept of "offering" within the meaning of Art. 25 UPCA also includes, in particular, preparatory acts which are intended to facilitate or promote the conclusion of a subsequent transaction relating to an item protected by the patent, which includes the use of the item. This can be done in such a way that interested parties can submit bids for assignment. 216. Not all features of the patent claim need to be shown in the advertising for an offer to be made if, on objective consideration of the circumstances actually existing in the case in dispute, it must be assumed that the product shown corresponds in its technical design to the subject matter of the patent. It depends on whether the patent-compliant design can be reliably inferred from the existence of other objective circumstances. 47 can be determined. A key aspect here is the view of the relevant public on the objective explanatory value of the advertising, which must be determined taking into account all the factual circumstances of the individual case (cf. in particular: UPC CFI 177/2023 (LK Düsseldorf), order of 18.10.2023 - myStromer v. Revolt; Luginbühl/Hüttermann/Küp- pers/Rubusch, Unitary Patent System, Art. 25 para. 44; Tilmann/Plassmann/Busche, Unitary Patent, Unified Patent Court, Art. 25 UPCA para. 24). 217. On the basis of these principles, the excerpt from the defendant's website submitted by the plaintiff as Exhibit K 5 constitutes an offer within the meaning of Art. 25 lit. a) UPCA. Thus, the caravan "Deseo" and the model "Azur" are not only advertised there for a price "from EUR 30,990.00" and "from EUR 42,290.00" respectively. In addition to a configurator, there is also a dealer search function that can be used to contact a dealer in a desired location. It is therefore an offer within the meaning of Art. 25 lit. a) UPCA. The fact that this offer is not only aimed at customers in Germany, but also in Europe, can be seen from the further excerpt from the defendant's website submitted as Annex K 18 and the possibility of country selection to be found there: 218. There is no reason to reject this attachment submitted with the reply as late (R. 9 para. 2 VerfO), if only because the plaintiffs, by submitting this further screenshot of the defendant's website, expand on their submissions from the statement of claim in response to the submissions in the statement of defense. In addition, the defendant has not disputed the relevant submission in the case. 219. Contrary to the opinion of the defendant, the presentation of an act of infringement for each of the countries in dispute is unnecessary in any case for the period from the entry into force of the UPCA on June 1, 2023 due to the overall effect under Art. 34 UPCA. For the overall effect, it is irrelevant in which contracting member state the infringement of the patent in dispute has taken place or threatens to take place (Tilmann/Plassmann/v. Falck/Dorn, Unitary Patent, Unified Patent Court, Art. 34 para. 37). 48 220. Apart from that, the plaintiff's submission should in any case be understood to mean that the defendant offers and sells the attacked embodiments both before and after the UPCA came into force in Germany, France, Italy and Slovenia. Differences between these countries, for example to the effect that the attacked embodiments are not offered and distributed in certain countries or only in a different form, are not even claimed by the defendant. III. No right of prior use 221. In any case, the defendant cannot successfully invoke a right of prior use with regard to the contracting member states in dispute. 1. Audit standard 222. Art. 28 UPCA stipulates that anyone who has acquired a right of prior use to an invention in a contracting member state if a national patent would have been granted for this invention also has the same rights in that contracting member state in respect of a patent relating to this invention. 223. The narrow wording of the provision is clear in this respect. The user of the technology according to the invention can only invoke the rights granted to him by the respective national regulations of the respective contracting member states. In this respect, the existence of a right of prior use must be demonstrated for each of the protected states under its conditions. The standard does not provide for a European right of prior use, but is a sliding reference to the respective national law (see Tilmann/Plassmann/Busche, Unitary Patent, Unified Patent Court, Art. 28 UPCA, para. 6). The argument in favor of this legal structure is that a Union-wide right of prior use could unduly restrict effective European patent protection. And even if literary voices criticize the provision as being contrary to the system (see Smeets, GRUR Patent 2024, 18, 23 para. 25 with further references), its clear wording must be observed and accepted by the court (UPC CFI 7/2023 (LK Düsseldorf), decision of 03.07.2024, p. 26 - Kaldewei v. Bette). 224. Whether a right of prior use, as argued by the defendant, must always be asserted by way of a (counter)action or can also merely be objected to by way of a plea against the allegation of infringement does not need to be examined in detail in the present case. On the one hand, the defendant has asserted the objection by way of a counterclaim. On the other hand, it has also expressed its intention to defend itself against the allegation of infringement by invoking a right of prior use. The question raised by the defendant is therefore not relevant to the decision. 2. No right of prior use in the present case 225. The defendant primarily asserts a right of prior use pursuant to Section 12 of the German Patent Act (PatG). A right of prior use of the defendant on this basis cannot be established. 226. According to the established case law of the Federal Court of Justice (BGH), the act of use or organization required for the acquisition of a right of prior use pursuant to Section 12 PatG presupposes that the person acting has obtained independent possession of the invention. Such possession is deemed to exist if the technical teaching resulting from the problem and its solution is objectively complete and subjectively recognized in such a way that the invention can actually be carried out (BGH, GRUR 2012, 895, 896 - Desmopressin; GRUR 2010, 47, 49 48 - filler). Such knowledge is lacking if the technical measure has not yet progressed beyond the experimental stage or if an object has been used which only "accidentally" exhibits the properties of the invention in individual cases. In both cases, the action is not based on knowledge that enables the technical teaching to be repeated at any time, so that it is not justified to attribute to it a legal position conferring property rights. Such cases of an unconscious or at least insufficiently substantiated use of the technical teaching must be distinguished from actions that are systemically directed towards the realization of the same. The latter are to be regarded as conferring property rights, as they are based on certain knowledge of the connection between cause and effect. On the other hand, it is not necessary for the person acting to have knowledge of the certain feasibility of the invention. This is because ownership of the invention cannot be made dependent on conditions that have not become part of the technical teaching within the meaning of the patent claim. Knowledge of effects which, according to the information in the description, are to be associated with the use of the subject matter of the invention, but which are not in the patent claim, cannot therefore be decisive for the question of whether ownership of the invention has been proven (BGH, GRUR 2012, 895, 896 - Desmopressin; Benkard/Scharen, Patentgesetz, 12th edition, § 12 PatG para. 5). 227. Ownership of an invention alone is not sufficient to establish a right of prior use. Rather, it must also used. In any case, arrangements for use must have been made for this purpose. 228. For the latter, it is necessary that the person invoking Section 12 PatG has made a firm and final decision to commercially exploit the invention. In , they must have taken steps to prepare for the rapid implementation of the decision and have the intention to exploit the invention. In order to meet the requirements, two conditions must therefore be fulfilled: Firstly, there must be actions aimed at a substantial implementation of the invention. Secondly, these actions must a serious intention to exploit the invention in Germany in the near future (BGHZ 39, 389, 398 = GRUR 1964, 20 - Taxilan). A mere preparatory act for the purpose of exploring the possibility and expediency of commercial exploitation is not sufficient, nor are preparatory acts for a later planned implementation (Benkard/Scharen, Patentgesetz, 12th edition, Section 12 PatG, para. 13; BeckOK PatR/Enst- haler, PatG Section 12, para. 7). 229. If the defendant invokes a private right of prior use in a legal dispute, it must be taken into account that the relevant events typically take place on the defendant's side. The patent proprietor therefore has no knowledge of the relevant events. It is therefore not sufficient for the defendant to invoke a general and blanket right of prior use. Rather, if he wishes to assert such a right, he must specify exactly who made which technical considerations on which occasion that allegedly led to possession of the invention. The same applies to accompanying or subsequent acts of use or events for the purpose of imminent use (with reference to German practice: Kühnen, Handbuch der Patentverletzung, 16. Auflage, Abschnitt E, Rn. 666). 230. Based on these principles, the defendant's arguments are not sufficient to conclusively demonstrate that the requirements for a prior right of use of the defendant in the Federal Republic of Germany are met. Ownership of the invention is already lacking. 50 231. In this context, it is important to bear in mind that patent claim 1 does not protect an individual structural part, but a frame for a vehicle with a structural part (feature 1.), whereby the existing structural parts form a load-bearing part of the vehicle frame (feature 6.). In addition to the protected frame, the patent in suit also recognizes additional filling elements. This is stated in paragraph [0016] of the specification of the patent in suit: "[...] The free areas in the frame of the vehicle can be filled with additional filling elements, which can be designed as wall elements or roof elements. Recesses for doors, windows, ventilation slots and the like can then arranged in these filling elements. The filling elements themselves can be designed as foam resin plastic parts, which are usually provided in the form of panels." 232. The filling elements therefore fill the free areas formed by the frame, but are not themselves part of the frame (see also paragraphs [0002] f., [0004], [0007] "Vehicle frame structure part", [0011]). This is illustrated by the following figures 4 and 5, which explain the invention by means of a preferred embodiment example: 233. While only the frame can seen in Figure 4, this is provided with additional fillers (12, 12.1, 12.2, 12.3 and 12.4) in Figure 5. 234. Insofar as the defendant attempts to derive a right of prior use with reference to the front and rear parts of the "Eurostar", "Grande Puccini" and "Tabbert Supreme" caravans, it does not succeed because these parts are not components of the vehicle frame, but filling elements in the aforementioned sense. 235. The fact that this is the case is illustrated by the drawing submitted by the defendant itself as Annex WK 40 to the file: 51 236. As can seen from the drawing shown above, PU strips are used in the aforementioned models, in which aluminum sheets form the outer surface of the side walls and mounted on the PU strips. These PU strips thus form the frame on which the front and rear parts in question are mounted. The latter are therefore filling elements in the aforementioned sense, but not (load-bearing) components of the frame. They cannot therefore be used to establish ownership of the invention protected by the patent in suit. 237. Since the defendant has already failed to demonstrate ownership of the invention for Germany, the question raised by it of an extension of the German right of prior use on the basis of the free movement of goods pursuant to Art. 28 et seq. TFEU does not need to be discussed. 3. License screen 238. The defendant cannot successfully invoke a license with respect to the challenged embodiments. 239. Insofar as the defendant has filed a "counterclaim" or a "third-party counterclaim" in relation to a license, it is ultimately , at least in the main claim, to the allegation of infringement made against it that the patent in dispute is licensed in relation to the challenged embodiments. In this respect, it did not submit its own requests in the main request. On this basis, the defendant has ultimately raised a license objection for which the jurisdiction of the Unified Patent Court already arises from Art. 32 (1) (a) UPCA (Luginbühl/Hüttermann/Boos, Unitary Patent System, Art. 24 para. 50). It can therefore be left open whether such an objection, as represented by the defendant, can only be asserted in an action. The Unified Patent Court would also have jurisdiction for such an action pursuant to Art. 32 (1) a) a.E. UPCA. 240. The defendant is not entitled to such a license. In particular, the cannot derive such a license from the development agreement submitted as Exhibit rop 10. In contrast, insofar as the defendant invokes a further agreement in addition, it has neither submitted the relevant agreement nor made sufficient submissions in this regard. 241. The development contract submitted to the file as Annex rop 10 only grants the defendant the right to use the "Travelino" caravan, but not the caravans at issue. "Deseo" and "Azur" a right to use the patent in dispute. 52 242. That this is the case is clear from Section 1 (6) of the development agreement, which states, among other things: "There is agreement between KTG and the developer that KTG is always entitled to use, in particular to exploit, the frame concept, the subject matter of the patent application of the joint application (Annex 1) and the developments made in the area/context of the Travelino caravan in its current form and design (Annex 2), in particular the new foam resin composite specially developed by FTC, free of license, exclusively and without restriction in terms of time, place and content and free of charge. In this respect, the parties assume that the Travelino caravan is not or will not become a volume product. This right is not transferable to third parties. If KTG later chooses a name other than "Travelino" for the caravan, this shall have no influence on the aforementioned free and otherwise unrestricted right of use. FurthermoreKTG and the developer agree that KTG is entitled, for a license fee yet to be agreed, to exclusively use the frame concept, the subject matter of the patent application of the joint application (Annex 1), as well as the development(s) made in this area/context, in particular the new foam resin composite specially developed by FTC, for the leisure vehicle sector for the duration of the license agreement." (Bold print by the court) 243. The development agreement therefore distinguishes between the "Travelino" model, which is not at issue here, and other models that are still to be developed. While the defendant is permanently entitled to a right of use free of charge in relation to the "Travelino" model, irrespective of its name, but only in "its current form and design", it is only entitled to such a right in relation to other models in return for a license fee yet be agreed and only for the period of the license agreement. In other words, a license agreement must first be concluded for these additional models. Only then is the defendant entitled to a corresponding right of use. 244. Correspondingly, § 5 of the license agreement states with regard to remuneration, among other things (emphasis added): "(1) The remuneration of the comprehensive rights of use for the frame concept in the form of the patent application of the application group "Structural part for a frame of a vehicle made of foam resin and manufacturing process" (file number at the German Patent and Trademark Office: 10 2016 101 274.2, Annex 1) shall be regulated within the framework of a license agreement still to be negotiated. [...] (2) For the "Travelino" caravan, KTG is irrevocably entitled to use the development(s), in particular the developed frame/the developed frame concept based on the patent application (Annex 1) made of the special foam resin composite in the field of leisure vehicles exclusively and without restriction in terms of time, place and content and in particular also free of charge, in particular to exploit it. This use and exploitation for the Travelino caravan is already covered by the services provided by KTG as part of the Travelino project." 53 245. The defendant is therefore only granted a right of use free of charge for the "Travelino" caravan. In addition, the conclusion of a license agreement is still required, as is also evident from § 6 para. 1 of the developer agreement (emphasis added): "All parties already agree today that the exclusive and unrestricted right of KTG to use all developments, inventions, work results, industrial property rights and any know-how in connection with the development of the novel frame concept on the basis of the patent application of the applicant community (Annex 1) in the field of leisure vehicles (motorhomes, caravans, mobile homes) will be regulated in a separate license agreement in return for appropriate remuneration. KTG is entitled to use the frame concept based on the patent application of the joint application for the Travelino project upon conclusion of this agreement." 246. The defendant's view that with regard to further models only the determination of the remuneration is left to a license agreement to be concluded later cannot therefore be reconciled with the overall regulatory content of the development agreement. 247. On this basis, the "Deseo" and "Azur" models in dispute are not already licensed in the development contract. The fact that this is not merely the "Travel- ino" model with a different designation is already apparent from the affidavit submitted by the defendant itself as Annex rop ZA 1, which lists the models "Deseo" and "Azur". "Travelino", "Deseo" and "Azur" shows: Travelino: 54 Deseo: Azure: 248. In accordance with Section 1 (6) of the development agreement, the license granted extends exclusively to the "Travelino" caravan in its current form and design. Changes are therefore only harmless if they are merely a change of name. In contrast, any constructive change, as can be seen from the above illustrations submitted by the defendant itself, leads the license; a license agreement must be concluded. Whether these changes are decisive from the point of view of the teaching of the patent in suit is, in contrast, irrelevant. 249. To the extent that the defendant (plaintiff in the counterclaim) relies on Article 3(2) of Regulation (EU) No 1217/2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to certain categories of research and development agreements to justify its divergent view, this relates exclusively to the research results resulting from joint development. However, the patent in dispute is indisputably not based on a joint development. It therefore does not fall within the scope of this standard from the outset. The same applies with regard to Art. 3 (2) and (3) of the Commission Regulation (EU) on the application of Art. 101 (3) of the Treaty on the Functioning of the European Union to certain categories of research and development agreements. These also only cover the property rights arising from the joint research and development, but not the patent in dispute based solely on the plaintiffs' development. 250. It cannot be established that there is an agreement between the plaintiff 2) and the defendant, as claimed by the defendant, according to which the plaintiff 2) undertakes not to assert any rights arising from the patent in suit against the defendant (see: Statement of defense, p. 35). The plaintiffs have countered this argument and have submitted a settlement agreement 2020 as Annex K 20, according to which the defendant obliged to use the technical teaching claimed by the patent in suit for the "Travelino" model. The provision alleged by the defendant is not contained therein (see reply, para. 53 f.). It would therefore now have up to the defendant to submit the relevant agreement to which it refers in support of its objection that it is entitled to use the patent in suit. Despite a corresponding request by the court, it failed to do so. 55 H. Legal consequences I. Omission 251. Taking into account the circumstances of the case, the plaintiffs have a right to prohibition of the continuation of the infringement pursuant to Art. 25 lit. a) UPCA in conjunction with Art. 63 para. 1 UPCA. Art. 63 para. 1 UPCA. 252. As already explained in detail, the plaintiffs have shown acts of use in the form of the offer and distribution of the attacked embodiments at least for the period after the UPCA came into force. The question raised by the defendant regarding the possibility of linking acts of infringement before the UPCA entered into force therefore does not arise in the present case with regard to the future-oriented injunction. II. Provision of information 253. The plaintiffs also have a right to information pursuant to Art. 25 lit. a) UPCA in conjunction with Art. 67 UPCA. Art. 67 UPCA. There are no objections with regard to the type and manner of information requested. 254. The fact that the information rights provided for by the UPCA, as set out in particular in Art. 67 UPCA and Art. 68 para. 3 lit. a) and b) UPCA in conjunction with R. 191 p. Alt. R. 191 S. 1 Alt. 2 VerfO, also the periods before the UPCA entered into force, has already been explained in detail by the Local Chamber of Mannheim (UPC CFI 162/2024, decision of 11.03.2025, lead sentence 6 and 107 - Hurom v. NUC). In order to avoid repetition, reference is made to the relevant statements of the Local Chamber of Mannheim, which the Chamber shares. III. Recall 255. The decision regarding the recall from the distribution channels in respect of the directly infringing products is justified under Art. 64(2)(b), 4 UPCA. 256. Insofar as the defendant refers, inter alia, with regard to the recall to the fiduciary duties arising from the development cooperation, it has no right to use the patent in suit with regard to the challenged embodiments from this development agreement without a previously concluded license agreement. Accordingly, the defendant cannot successfully invoke this agreement with regard to the recall order either. 257. Nor can the defendant successfully point out that the plaintiffs "rejected the very generous settlement offer in the amount of a one-off payment of EUR 100,000 for an exclusive license" (Annex K 12), which was made without recognition of a legal obligation, for reasons that are not objectively comprehensible. Art. 25 UPCA originally grants the patent proprietor and thus the plaintiffs the exclusive right to use the patent in suit. As long as the plaintiffs have not licensed the patent in dispute in favor of the defendant and thereby granted it a corresponding right of use, it is not entitled to a corresponding right of use. If it nevertheless uses the patent in suit, the plaintiffs have the option of patent infringement proceedings, in which the court can also order the recall of the challenged embodiments. An obligation on the part of the plaintiffs to accept the defendant's offer to grant an exclusive license in return for a one-off payment of EUR 100,000 (see Annex K 12) is not apparent. In particular, such an obligation cannot be inferred from the development agreement (Annex 56 rop 10). It is true that the contracting parties agree that the defendant is entitled to use the patent in dispute for the field of recreational vehicles for the period of the license agreement in return for a license fee yet to be agreed (Exhibit rop 10, p. 5 above and p. 10 above, emphasis added). However, this does not mean that the plaintiffs would have been obliged to accept every offer to conclude a corresponding license agreement. The defendant itself submits that the corresponding settlement offer was made without recognition of a legal obligation. A corresponding contract was not subsequently concluded (see Annex K 14). 258. Nor can a recall order be dispensed with from the point of view of proportionality. Irrespective of the price of individual components, the patent in dispute does not protect individual components of minor importance, but a frame for a vehicle and thus ultimately the basic construction of the caravan, so that the caravan cannot otherwise put into a patent-free state. Against this background, the ordering of an obligation to recall is also justified in consideration of the principle of proportionality. IV. Final removal from the distribution channels 259. The same applies with regard to the requested permanent removal from the distribution channels. In this respect, the requested order finds its basis in Art. 64(2)(d), 64(4) UPCA. 260. According to the wording of the UPCA, permanent removal from the distribution channels is a separate measure from recall. It accompanies the recall, whereby removal can only be considered if the infringer has the actual and legal possibilities to do so. The formulation of specific and sufficiently defined measures must be based on this. The plaintiffs have complied with this in response to a corresponding court order. 261. With regard to the objection of development cooperation raised by the defendant, the non- acceptance of the defendant's settlement offer and the objection of disproportionality, reference is made to the statements on the recall in order to repetition. The defendant has raised this objection across the board for the recall, the removal from the distribution channels and the destruction (see statement of defense, p. 33). V. Destruction 262. The destruction order is based on Art. 64 para. 2 lit. e), 64 para. 4 UPCA. 263. Since the defendant has also raised the objection of development cooperation, the non- acceptance of the defendant's comparative offer and the objection of disproportionality here, the relevant statements in the recall also apply accordingly here. 264. Destruction is intended to reliably prevent the products from entering or re-entering the market (UPC CFI 16/2024 (LK Düsseldorf), decision of 14.01.2025, p. 31 - Ortovox v. Mammut; UPC CFI 33/2024 (LK Wien), decision of 15.01.2025, p. 21, point 4.4 - SWARCO v. STRABAG; Tilmann/von Falck/Tilmann, Unitary Patent, Unified Patent Court, Art 64 UPCA, para. 33). In any case, the action in this regard is only aimed at the infringement of the objects of interference directly or indirectly owned or used by the defendant, which means that the measure is not disproportionate. 57 is. VI. Determination of liability for damages on the merits 265. The award of damages on the merits is possible on the basis of Art. 68 (1) UPCA. On the basis of the development agreement concluded with the plaintiff 1) and the third-party defendant and the intention to patent expressed therein (see Exhibit rop 10, p. 2), the defendant should in any case have recognized with due care that its actions infringed the patent in dispute granted in the meantime. With regard to the applicable law, the explanations on the right to information apply accordingly (see also UPC CFI 162/2024 (LK Mannheim), decision of 11.03.2025, para. 108 - Hurom v. Nuc). 266. Insofar as the defendant invokes the limitation period under Article 72 UPCA, actions relating to all forms of financial compensation may not be brought later than five years after the claimant became aware or should have become aware of the last event giving rise to the action, without prejudice Article 24(2) and (3) UPCA (emphasis added). In contrast, the English wording speaks of the "last fact justifying the action". The French version is thus comparable to the "dernier fait justifiant l'action". This makes it clear that what ultimately matters is the fact or circumstance that gave rise to the action (see also Tilmann/Plassmann/Gundt/W. Tilmann, Unitary Patent, Unified Patent Court, Art. 72 UPCA, para. 69; see also Luginbühl/Hüttermann/Hoppe, Art. 72 UPCA, para. 54). 267. Since the plaintiffs based their allegation of infringement primarily on the test purchase of 20 June 2023 (Annex K 17), an earlier commencement of the limitation period could only be considered if the defendant had succeeded in demonstrating that the plaintiffs already had or should have had knowledge of all the facts necessary for the examination and presentation of an infringement of the patent in suit by the challenged embodiments before that date. This has not yet been the case. The merely general reference to the development cooperation between the parties since 2016 is just as as the blanket assertion that the plaintiffs or their legal predecessors should have been aware or should have been aware of all of the defendant's actions since September 8, 2018. 268. The extent to which the shorter German three-year limitation period (Sections 195, 199 BGB) can be used as a supplement to Art. 72 UPCA does not require further discussion in the present case. Even if this were the case, assuming in favor of the defendant, this limitation period is also linked to the knowledge or the need to know the facts of the infringement. On this basis, the above considerations apply accordingly. VII. Provisional damages 269. Pursuant to Art. 68 UPCA in conjunction with. R. 119 of the Rules of Procedure, the court may award the successful party provisional damages under conditions it determines, which should at least cover the provisional costs of the damages and compensation proceedings on the part of the successful party. 270. On this basis, the provisional damages claimed by the plaintiffs in the amount of EUR 100,000 appear appropriate. 271. Apart from the fact that the defendant has already offered the same amount out of court as part of a settlement offer for an exclusive license to the patent in dispute 58 the defendant also undisputedly admitted out of court that it had sold almost 600 caravans of the "DESEO" model at a list price of EUR 28,100 and 70 caravans of the "AZUR" model at a price of EUR 41,400 by the end of 2023. 272. The defendant does not claim that these sales figures are inaccurate. Instead, it merely invokes the need for confidentiality of the out-of-court settlement discussions and a resulting prohibition of exploitation from the defendant's point of view. The court has already explained in detail in the discussion of the acts of use that this objection does not lead to success and for what reasons. Reference can be made to the statements made there to avoid repetition. VIII. Compensation 273. It follows from Art. 32(1)(f) UPCA ("Actions relating to the use of an invention before the grant of a patent") that any financial compensation for the use of the published EP application also falls within the jurisdiction of the Unified Patent Court. 274. Since such compensation is neither regulated in the UPCA nor in the UPCA, the court must apply the provision of Art. 67 UPCA on the basis of Art. 24(1)(c) UPCA, which grants the member states a margin of discretion with regard to the structure (see also the table in Tilmann/Plassmann/Grabinski/W. Tilmann, Art. 32 UPCA, para. 103). 275. Similar to the right of prior use, there has been no uniform regulation on this issue to date. It is therefore initially up to the claimant seeking compensation to set out the requirements for such compensation for the individual member states in question. At the hearing, the plaintiffs only did so with regard to the Federal Republic of Germany. There, the applicant of a published European patent application can rely on Art. II § 1 para. 1 IntPatÜG from the person who has used the subject matter of the application although he knew or should have known that the invention used by him was the subject matter of the European patent application. There is no submission for the other member states in dispute, so that the plaintiffs were only awarded reasonable compensation on the merits for the Federal Republic of Germany and the action was otherwise dismissed. IX. Threat of penalty payment 276. The requested threat of a penalty payment for the omission ("up to EUR 250,000", Art. 63 para. 2 UPCA) is not objectionable. 277. The general threat of coercive measures included in the decision gives the Board the necessary flexibility to respond to any violations of this order, taking into account the interests of both parties and the seriousness of the violation (UPC CFI 16/2024 (LK Düsseldorf), decision of 14.01.2025, p. 39 - Or- tovox v. Mammut). 59 X. Basic cost decision 278. Pursuant to Art. 69 para. 2 UPCA in conjunction with R. 118 para. R. 118 para. 5 RP, R. 265 para. 2 lit. c) RP, a basic decision on costs had to be made. 279. Since the plaintiffs initially extended their infringement action to the Republic of Ireland and abandoned this claim in the further course of the proceedings, it is justified to order them to pay part of the costs of the infringement action and to order the defendant to pay the remainder. 280. The action for annulment and the third-party counterclaim unsuccessful. The defendant must therefore bear their costs. XI. Reimbursement cap 281. The determination of the upper limits for reimbursable agency costs is based on the decision of the Management Committee on the upper limits for reimbursable costs of April 24, 2023 (D - AC/10/24042023 E). XII. No security deposit 282. Pursuant to Art. 82 para. 2 UPCA, R. 118 para. 8 sentence 2 of the Rules of Procedure, the court may make any order or measure subject to the provision of security, which it must determine. 283. As the wording of the aforementioned standard already makes clear, the Board has discretion when ordering the provision of security, whereby the plaintiff's interest in the effective enforcement of its property right must be weighed against the interest in the effective enforcement of possible claims for damages in the event that the judgment is subsequently set aside. 284. A case-by-case assessment is therefore always required. The factors to be taken into account when considering whether to order the provision of security include the financial situation of the plaintiff, which may give rise to the justified and real concern that a possible claim for damages cannot be enforced and/or enforced at all or only at disproportionate expense if the decision of the court of first instance is set aside or amended. Whether and to what extent such factors exist is to be determined on the basis of the facts and arguments presented by the parties, no differently than in the case of an application for the provision of security pursuant to R. 158 VerfO. If the Chamber makes an order or measure dependent on the provision of security, this serves to protect the position and potential rights of the defendant. Its protection must weighed against the burden placed on the claimant by the order to provide security. Against this background, it is up to the defendant to present facts and arguments as to why it appears appropriate in the specific case to make the order or measure dependent on the provision of security to be determined by the court in accordance with R. 118 para. 8 of the Rules of Procedure. If the defendant has complied with this, it is up to the plaintiff to substantiate these facts and reasons, especially as he usually has knowledge and evidence of his financial situation. It is also the plaintiff's responsibility to explain, if necessary, why, despite the reasons put forward by the defendant, his interest in enforcing his property right without the provision of security prevails (see UPC CFI 16/2024 (LK Düsseldorf), decision of 14.01.2025 - Ortovox v. Mammut; UPC CFI 363/2024 (LK Düsseldorf), decision of 14.01.2025 - Ortovox v. Mammut). 60 decision of 10.10.2024, ORD 598458/2023 - Seoul Viosys v. expert), on the application for security pursuant to R. 158 RP: UPC COA 328/2024, order of 26.08.2024 - Ballinno v. Kinexon Sports; UPC CFI 373/2024 (LK Düsseldorf), order dated 05.08.2024 - SodaStream v. Aarke; UPC CFI 514/2023 (LK Munich, Panel 1), order dated 23.04.2024 - Volkswagen v. NST m.w.N.). 285. On the basis of these principles, the defendant has not presented any reasons that would make enforcement in the present case dependent on the provision of security. The Chamber has therefore refrained from such enforcement security. I. No referral to the European Court of Justice (ECJ) 286. There is no reason to stay the proceedings in accordance with R. 266 (5) sentence 1 of the Brussels Convention and to refer the question formulated by the defendants to the ECJ for a preliminary ruling in accordance with Art. 21 UPCA in conjunction with Art. 267 TFEU. 287. In the opinion of the Board, there no reasonable doubt that the UPCA, as a treaty under international law, is to be measured against the principles of the Vienna Convention on the Law of Treaties. The question of ordering final injunctions when a merely imminent infringement has been established has no relevance for the decision in the present case, since the Board has established an infringement of the patent in suit. The same applies to the question of procedural powers with regard to patent infringements under national law. Since the patent in suit is indisputably not based on a common development, it does not a priori fall within scope of Regulation (EU) No. 1217/2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to certain categories of research and development agreements. The question relating to the interpretation of this regulation is therefore also not relevant to the decision in this case. The question aimed at clarifying the scope of the powers under Art. 56 et seq. UPCA, taking into account the free movement of goods, which is linked to the (alleged) lack of transfer of the legal status as licensor in the transfer of the patent in dispute, is not relevant for the decision because the defendant was not granted a license to the patent in dispute. For this reason, the further question raised as to whether the "Implied Powers" doctrine under EU law requires an interpretation of Art. 32 (1) (a) UPCA, according to which a counterclaim relating to licenses can also be directed against a person not involved in the infringement proceedings, is not relevant to the decision. As explained above, the defendant cannot invoke a right of prior use in Germany, so that the scope of the ECJ's case law on Union-wide exhaustion is not relevant in the present case. 288. Insofar as the defendant would also like the ECJ to clarify whether Art. 11 sentence 1 of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights) is to be interpreted to the effect that only the continuation of the established infringing act can be prohibited, while infringing acts that have not been established cannot enjoined, the Chamber sees no reason for a referral to the ECJ in this respect either. Firstly, Art. 11 sentence 1 of the Enforcement Directive merely sets out a minimum standard: The member states should ensure that the competent courts can issue an injunction against the if an infringement of an intellectual property right is established. This excludes the opening of further powers, for example in the case of 61 of an imminent infringement is not sufficient. On the other hand, the offering and placing on the market, as explained, also establishes a rebuttable presumption that the defendant also uses the accused embodiment or imports or possesses it for the purposes of offering, placing on the market or use. If this presumption is not rebutted, as is the case here, the connecting factor for the orders issued is also the determination of a patent infringement in this respect. The question raised by the defendant as to whether Art. 63 (1) UPCA also opens up the possibility of a final injunction in the event of a mere threat of patent infringement is therefore not relevant in the present case. 289. It is not clear why the European Union Trade Mark Regulation (Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, hereinafter: EUTMR) and the existing commentary literature should be used to determine the scope of the concept of offer in Art. 25(a) UPCA. Art. 9(3) regulates the powers of prohibition arising from an EU trade mark, while Art. 25 UPCA assigns certain exclusive powers to the patent proprietor. These are therefore each fundamentally independent provisions relating to different industrial property rights and covering independent areas of regulation, each of which must be interpreted on its own merits. J. No order in relation to the reservation of national remedies to avoid enforcement 290. The defendant's further request that the legal remedies and possibilities available to the defendant under the respective national law to avert enforcement should be reserved insofar as the enforcement proceedings are subject to the law of the Contracting Member States does not give rise to any order. Whether the defendant has the corresponding national remedies and possibilities is to be determined, if necessary, by the respective national court or enforcement body on the basis of the relevant norms. 62 DECISION: A. Insofar as the action initially also covered the territory of the Republic of Ireland, partial withdrawal of the action is permitted. B. The defendant's objection is rejected insofar as it still had to be decided. C. The defendant is ordered to pay the costs, I. to refrain from producing frames for a vehicle with at least one structural part, the structural part being produced as a cast part in a casting mold and the casting mold reproducing the three-dimensional outer shape of the structural part, the structural part being formed by a self-swelling foam resin, in the territory of the Federal Republic of Germany, the French Republic, the Italian Republic and the Republic of Slovenia manufacture, place on the market, offer, use and/or import, export and/or possess for the aforementioned purposes, if the structural part is at least partially coated from the outside with a protective layer, whereby the existing structural parts form a load-bearing part of the frame; (claim 1 of EP 3 356 109) II. in the event of a breach of the order pursuant to C. I. to pay the court a penalty payment of up EUR 250,000 for each case of non-compliance; III. to provide the plaintiffs with information about the acts of infringement committed since September 8, 2018 pursuant to C. I. stating 1. the origin and distribution channels of the infringing products; 2. the quantities produced, manufactured, delivered, received or ordered and the prices paid for the infringing products and 3. the identity of all third parties involved in the manufacture or distribution of the infringing products; IV. the products according to C. I., which have been delivered since April 9, 2022, within a period of 30 days after service of the notification within the meaning of R.118 (8) sentence 1 VerfO and, if applicable, the certified translation at the defendant's expense 63 1. from the distribution channels informing the third parties from whom the infringing products are to be recalled that this court has found that the products infringe European Patent EP 3 356 109, whereby the defendant must give the third parties a binding undertaking to reimburse the costs incurred, to bear the packaging and transport costs incurred, to reimburse the customs and storage costs associated with the return of the products and to take back the , and 2. permanently from the distribution channels by ordering the defendant, with reference to the fact that this court has found that the products infringe the European patent EP 3 356 109, to order third parties who are commercial purchasers but not end users, with regard to the products referred to in C. I. to cancel all orders relating to the products referred to in C. I. and to provide the court and the plaintiffs with written proof of the measures taken within the aforementioned period of 30 days after service of the notification within the meaning of R. 118. para. 8 sentence 1 of the Regulation and, if applicable, the certified translation; V. to destroy the products directly and/or indirectly and/or owned by the defendant pursuant to C. I. or to hand them over to a bailiff to be appointed by the plaintiffs for the purpose of destruction at the defendant's expense; VI. to pay the plaintiffs an amount of EUR 100,000 as provisional damages; VII. to compensate the plaintiffs for all damages suffered by them as a result of the acts referred to in C. I. have arisen and will arise in the period since April 9, 2022; VIII. the plaintiffs for the period from September 8, 2018 to April 8, 2022 for actions pursuant to C. I. concerning the Federal Republic of Germany. D. The remainder of the action is dismissed. E. The third-party counterclaim is dismissed. F. The action for annulment is dismissed. G. The plaintiffs shall each bear 12.5 % of the costs of the action and the defendant 75 %. The defendant shall bear the costs of the third-party counterclaim and the action for annulment. H. The amount in dispute for the action and the action for annulment is set at EUR 500,000.00 each. 64 I. The upper limit for reimbursable representation costs is set at EUR 112,000 for the action and for the action for annulment. J. The orders in subparagraphs C. I. to C. VI. are enforceable only after the plaintiffs have notified the court which part of the orders they intend to enforce and have submitted a certified translation of the orders into the official language of the Contracting Member State in which enforcement is to take place and after the defendants have been served with the notification and the (respective) certified translation. Düsseldorf on April 10, 2025 NAMES AND SIGNATURES Presiding Judge Thomas Ronny Digital signed by Ronny Thomas ThomasDate: 2025.04.04 15:34:13 +02'00' Legally qualified judge Dr. Thom Anna Digitally signed by Bérénice Anna Bérénice Dr. THOM Dr. THOM Date: 2025.04.04 15:48:15 +02'00' Legally qualified judge Brinkman Edger Digitally signed by Edger Frank Frank BRINKMAN BRINKMAN Date: 2025.04.04 17:03:59 +02'00' Technically qualified judge Ashley Graham Digitally signed by Graham William William Ashley Ashley Date: 2025.04.07 09:37:03 +02'00' For the Deputy Chancellor Boudra-Seddiki Rachida Digitally signed by Rachida Boudra- Boudra- Seddiki Seddiki Date: 2025.04.07 09:58:57 +02'00' 65 APPOINTMENT INFORMATION: An appeal against this decision may be lodged with the Court of Appeal within two months of service of the decision by any party whose petitions were unsuccessful in whole or in part (Art. 73 para. 1 UPCA, R. 220 para. 1 lit. a), 224 para. 1 lit. a) RP). Information on enforcement (Art. 82 UPCA, Art. 37 para. 2 EPGS, R. 118 para. 8, 158 para. 2, 354, 355 para. 4 VerfO): A certified copy of the enforceable judgment is issued by the Deputy Registrar at the request of the enforcing party, R. 69 RegR. This decision was announced in open court on April 10, 2025. Presiding Judge Thomas

Key Holdings

• Product-by-process claims are defined by the technical properties imparted to the product by the process, with the decisive factor being how a skilled person understands the manufacturing information regarding the product's nature.
• The Unified Patent Court has jurisdiction over financial compensation claims for published EP applications (Art. 32(1)(f) UPCA), applying Art. 67 EPC, and the claimant must specify compensation conditions for each member state.
• The Unified Patent Court has jurisdiction for infringement actions without time limit (Art. 32(1)(a) UPCA), covering periods before UPCA entry into force and during opt-out, provided the opt-out was withdrawn before the action was brought.
• Claims for information, damages, and compensation from the period prior to a patent transfer are effectively transferred if the agreement explicitly assigns 'all rights, obligations and claims, also from the past'.
• An action for annulment based on lack of practicability (Art. 138(1)(b) EPC) is unsuccessful if the arguments concern claim clarity rather than practicability, and novelty is maintained against cited prior art.

Tags

• Claim Construction
• Infringement
• Inventive Step
• Jurisdiction
• Limitation Period
• Novelty
• Opt-Out
• Prior Use
• Product by Process
• Revocation

Related Rules

• Art. 2 – Definitions
• Art. 3 – Scope of application
• Art. 2 – Definitions
• Art. 2 – Definitions
• Art. 3 – Scope of application
• Art. 3 – Scope of application
• Art. 4 – Legal status
• Art. 6 – The Court
• Art. 7 – The Court of First Instance
• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 5 – Liability
• Art. 5 – Liability
• Art. 6 – The Court
• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 1 – Unified Patent Court
• Art. 1 – Unified Patent Court
• Art. 2 – Definitions
• Art. 3 – Scope of application

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