UPC_CFI_52/2025; UPC_CFI_67/2025 – CUP&CINO v Alpina

Court
Local Division Düsseldorf
Date
Outcome
Denied
Sector
Mechanics
Decision Type
MERITS

Expert Commentary

Final decision in infringement action Facts 1. An infringement action was filed on the basis of EP 3 610 762, which protects a coffee machine. 2. The patentee filed 5 auxiliary requests and the defendant filed a counterclaim for revocation. Decision 1. The Court dismisses the defendant’s objections with respect to late filings. 2. The LD retains its competence with respect to this Austrian defendant on the basis of (imminent) infringement. 3. The Court describes the patent, defines the skilled person and recites the principles of claim construction. 4. The Court discusses and interprets certain claim features. 5. The Court dismisses the claimant’s argument that a non-infringement defence is late-filed and that it does not know if the statement is true. First of all, according to the Court, the UPC does not accept a “do not know” defence. Moreover, the infringement is a question of law. Finally, it is on the claimant to establish the facts on which an infringement decision can be based. 6. It is for the claimant to explain why a certain statement (about the operation of the disputed machines) by the defendant would be incorrect because it would be technically impossible. 7. The Court considers that, as long as the interpretation of a claim by the Court does not conflict with the statement of the patentee during prosecution, the question of the role of the file wrapper for the interpretation of the patent claims does not have to be decided. 8. The revocation action was based on the interpretation of the patent by the patentee, which is not followed by the LD. The LD finds that there is no infringement on the ground that four of the claim features are not fulfilled, neither literally nor under the doctrine of equivalence, for the assessment of which the Court accepts the standard of the LD The Hague. Comment 1. Despite the clear guidance of the Court of Appeal, the claimant submitted auxiliary requests to defend the validity of the granted claims. That caused confusion. The defendants in the revocation proceedings would be wise to state which claims they defend and to substantiate it in case the main claim is found to be invalid. Thereafter, defendants can submit auxiliary requests on the basis of elements taken from the description. The difference between the two is that auxiliary requests can be attacked on the basis of Art. 84 EPC (clarity). 2. The Court adopts the equivalent infringement approach of the LD The Hague (see UPC_CFI_239/2023). The Court of Appeal still has to take a position on the applicable standard before the UPC (and I hope that it accepts the “means, way, function” approach which is more objective - and more internationally accepted - in my opinion). 3. If one bases their revocation action on the patentee’s claim construction (which one may contest in the infringement action), it is wise to make such revocation conditional on a finding of infringement, to make sure that if one wins the infringement one does not automatically lose the revocation action! 4. Lastly, why did the claimant go to the busy Düsseldorf Division and not to the LD Vienna (home to the defendant)? In Vienna, one can also choose German as the procedural language.

Key Holdings

  • The UPC does not accept a 'do not know' defence, and the burden remains on the claimant to establish the facts supporting an infringement decision.
  • It is incumbent on the claimant to substantiate why a defendant's factual explanation regarding the technical operation of disputed devices is incorrect or technically impossible.
  • The legal relevance of the prosecution history (file wrapper) for claim interpretation does not need to be decided as long as the court's construction does not conflict with the patentee's prosecution statements.
  • The Court applied the doctrine of equivalence standard formulated by the LD The Hague, finding no infringement either literally or under equivalence.

Tags

  • Final decision in infringement action
  • Claim construction
  • Doctrine of equivalents
  • Burden of proof
  • Prosecution history

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