UPC CFI 612/2024 – Raccords et Plastiques Nicoll v First Plast France, First Plast S.R.L., First Corporation, Plasticos First Iberica S.L.

Court
Local Division Paris
Date
Outcome
Claimant's claims for literal and equivalent infringement rejected; Claimant ordered to pay costs.
Sector
Mechanics
Decision Type
Final decision on infringement

Expert Commentary

Full Decision Text

1 Paris Local Division UPC CFI 612/2024 Final decision of the Court of First Instance of the Unified Patent Court, issued on October 24, 2025 APPLICANT 1) Raccords et Plastiques Nicoll Rue Pierre et Marie Currie 49300 - Cholet – FR Represented by Grégoire Desrousseaux Candice Dupin Mehdi Mahammedi- Bouzina DEFENDANTS 1) First Plast France 10-12 avenue Trentaine 77500 - Chelles – FR Represented by Jean-Martin Chevalier Myriam Moatty Paolo Provvisionato 2) First Plast S.R.L. 7 Lima Street 00198 - Rome - IT Represented by Jean-Martin Chevalier Myriam Moatty Paolo Provvisionato 3) First Corporation 7 Lima Street 00198 - Rome - IT Represented by Jean-Martin Chevalier Myriam Moatty Paolo Provvisionato 4) Plasticos First Iberica S.L. Pol Can Vives, c/ Industria S/N 08295 - Sant Vicenç De Castellet - ES Represented by Jean-Martin Chevalier Myriam Moatty Paolo Provvisionato 2 PATENT IN DISPUTE Patent number Owner EP3272938 Raccords et Plastiques Nicoll COMPOSITION OF THE CHAMBER Camille Lignières, President Carine Gillet, Judge-Rapporteur Rute Lopes, Judge qualified in legal matters LANGUAGE OF THE PROCEEDINGS: French DECISION The parties involved The French company RPN, founded in 1956 and part of the Aliaxis group since 2003, specializes in plastic connection and drainage systems. It claims to have designed the first invisible hydraulic channel grate: Connecto®invisible, which is covered by various intellectual property rights, including the patent in dispute. It launched the product in March 2018 and, according to the company, it has become an essential part of its product range. First Plast SRL manufactures plastic products for the construction industry, which are distributed by First Plast France in France and French-speaking countries and by Plasticos First Iberica SL in Spain. These companies belong to the original First group. First Corporation presents itself as a consulting firm and denies being a holding company with capital ties to the other First companies. FIRST manufactures and markets a Ghost gutter grate, the subject of the dispute, which was finalized in 2024 and is a popular accessory for its Pratiko gutter channel range, developed in the 1990s. Facts and procedure On October 31, 2024, Raccords et Plastiques Nicoll (hereinafter RPN) filed a lawsuit under case number UPC CFI 612/2024 before the Paris Local Division of the JUB for infringement of patent EP3 272 938 against First Plast France SA, First Plast Srl (Italian), First Corporation (Italian) and Plasticos First Iberica SL (Spanish) (hereinafter the First companies). No preliminary objections were raised by the defendant, in particular concerning the jurisdiction of the Unified Patent Court and the internal jurisdiction of the Paris Local Division. 3 By orders dated January 17, 2025, the parties were exempted from translating English documents into French and the dates for notification of the statement of claim were aligned. On February 24, 2025, the First companies filed their statement of defense, without a counterclaim for revocation of the patent in question. The request for disclosure of information filed by RPN on March 21, 2025, was rejected by order dated April 11, 2025. RPN served its reply brief on May 5, 2025, and the First companies served their rejoinder brief on June 5, 2025. The written proceedings were closed on July 11, 2025. The parties' claims On May 5, 2025, RPN requested the following from the Paris Local Division: 1. Declare that the defendants, individually and jointly, have committed acts of infringement of patent EP'938 in France and Italy, in particular by manufacturing, offering, importing, placing on the market, and holding for these purposes Pratiko gutters and Ghost gutter covers, reproducing product claims 1, 5, 6, 7, and 8, pursuant to the provisions of Article 25, paragraph 1(a) of the AJUB, and by offering to implement the process covered by the process claim of patent EP'938, pursuant to the provisions of Article 25, paragraph 1(b) of the AJUB, as well as by supplying and offering to supply Ghost gutter covers, which constitute elements for implementing the invention of claims 1, 5, 6, 7, 8, and 9 of patent EP'938, by applying the provisions of Article 26 of the AJUB; 2. Prohibit FIRST companies from any acts of infringement in France and Italy of claims 1, 5, 6, 7, 8, and 9 of patent EP'938, subject to a penalty of €260 per infringing product sold, with the penalty applying to each product sold by each company, as of the date on which the Court's judgment becomes enforceable; With regard to the offer on the Internet, to accompany this prohibition with a penalty of €10,000 per day during which the infringing products are offered on the Internet, the penalty applying to each of the companies, from the date on which the Court's judgment becomes enforceable; Rule that this prohibition cannot apply to Pra-tiko gutter channels, unless it is explicitly stated that they are intended for use with Ghost gutter covers; 3. Order each of the defendant companies to recall the allegedly counterfeit products sold by them in France or Italy (Ghost gutter covers or associated Pratiko gutter channels) and to inform each of their customers in France and Italy by mail, subject to a daily penalty of €10,000 for each company, after a period of 15 calendar days following the judgment becoming enforceable. Order each of the FIRST companies to provide RPN's representatives, within one month of these letters being sent, with a list of all customers, individuals, and entities to whom these letters were sent, as well as a list of all customers, individuals, and entities who returned the Pratiko gutter channels and 4 Ghost gutter covers, subject to a penalty of €10,000 per day of delay, as long as the defendants have not provided proof of the definitive withdrawal of the products. 4. Order each of the FIRST companies to permanently withdraw from commercial channels any disputed products, sold in combination where applicable, that are in their direct or indirect possession or that they own, in France and Italy, on the date on which the Court's judgment becomes enforceable, subject to a daily penalty of €10,000 (ten thousand euros) per day of delay, after the expiry of a period of 15 calendar days after the decision to be made becomes enforceable, until each company has provided proof of the definitive withdrawal of the products under the supervision of a judicial officer or any similar independent professional, 5. Order the destruction of the recalled and withdrawn counterfeit products and the molds intended for the manufacture of Ghost grilles, by each of the FIRST companies, at their respective expense, subject to a penalty of €10,000 (ten thousand euros) per day of delay, after the 15 calendar day period following the date on which the decision becomes enforceable, until each of them has provided proof of the destruction of the products under the supervision of a judicial officer or similar independent professional. 6. Order each of the FIRST companies to disclose all information relevant to determining the damage suffered by RPN, subject to a penalty of €10,000 per day of delay, after the 15- day period following the court's judgment becoming enforceable, with the penalty running against each of these companies, specifying: -(ii) the total number of infringing products that the Defendants, including their subsidiaries, including the Spanish subsidiary PLASTICOS FIRST IBERICA, still have in stock, administratively or physically, in the contracting Member States and in Spain, on the date of the judgment; -(iii) the total number of Pratiko gutter channels and Ghost gutter covers that the Defendants, including their subsidiaries, including the Spanish subsidiary PLASTICOS FIRST IBERICA, have marketed, sold, distributed, and/or delivered to their customers and/or distributors in the Member States and in Spain since the beginning, as well as all copies of invoices relating to these acts, which also indicate the sale price of these products; -(iv) the calculated internal cost, or purchase costs paid, as well as the selling prices charged for Pratiko gutter channels and Ghost gutter covers in the Contracting Member States by the Defendants, and in Spain, including their subsidiaries, since the beginning; -(v) the total turnover achieved for Pratiko gutter channels and Ghost gutter covers in the contracting Member States by the Defendants, and in Spain, including their subsidiaries, since the Ghost gutter covers were first placed on the market; -(vi) for resellers, the purchase price of Pratiko gutter channels and Ghost channel covers resold; -(vii) for manufacturers, the gross margin including a detailed calculation of the costs used to determine this margin; -(viii) for companies that provided advice on these products, the advisory fees invoiced. 7. Order the publication of the decision to be made, within 15 calendar days after the decision to be made becomes enforceable and for a period of three months, at the sole expense of the defendants taken jointly and severally, (ix) on the main page of their websites and 5 (x) in five newspapers and media outlets in France or Italy to be chosen by RPN, for a maximum amount per insertion of €8,000. Order the publication of a correction on their (shared) website(s), including www.firstcorporation.com and the national pages of that website and/or its subdomains, as well as on their social media channels, within 24 hours of notification of the decision in this case and for a period of three months for each of the contracting Member States, with the heading "CORRECTION" (in capital letters), without any comments or remarks of any kind, exclusively with the text suggested in their brief or a similar text to be drafted by this Court, and drafted in accordance with good printing practices, either in English or translated into the local language(s) of that Contracting Member State, and subject to a penalty payment of €10,000 (ten thousand euros) per day of delay, 8. Order FIRST companies jointly and severally liable to pay RPN: -the sum of one hundred thousand euros (€100,000) as a provision for damages, -the sum of fifty thousand euros (€50,000) as a provision for the reimbursement of legal costs and procedural costs (to be completed, in particular in the event of a request for an estimate pursuant to Rule 104(k), 9. Set the final amount of damages in separate proceedings. *** The First companies make the following claims: -Dismiss Nicoll's request to have the case heard by a single judge, -Rule that the GHOST grid referenced GRGH130N combined with the PRATIKO gutter does not reproduce, either literally or by equivalence, the subject matter of claims 1, 5, 6, 7, 8, and/or 9 of Nicoll's EP'938 patent; -Dismiss all of Nicoll's claims accordingly; -Order reimbursement to First companies of all representation costs they were forced to incur for their defense, which they provisionally estimate at this stage to be €70,000 (seventy thousand euros). Alternatively, in the event that the Court finds that one or more of the First companies have committed acts of infringement of patent EP'938, to reject or adjust the corrective measures as follows: -Dismiss the request for the recall of products deemed to be infringing from commercial channels and their removal by the First companies; at the very least, grant the First companies a period of four months (from the date of the enforceable decision) to implement these measures, and in any event reject the request to send a letter to the First companies' customers and to provide Nicoll with a list of those customers; -Reject the request to destroy the molds for the disputed GHOST grille and replace it with a measure to modify said molds and grant First Companies a period of four months (from the date of the enforceable decision) to carry out this modification; -Reject the request for disclosure of information, or at least state that such disclosure will take place within the framework of a confidentiality club comprising, in addition to the representatives of the parties, a single natural person from Nicoll; in any event, reject the request for disclosure of information insofar as it relates to acts allegedly committed by Plasticos First Iberica S.L. on Spanish territory and grant the First companies a minimum period of four months from the date on which the decision becomes enforceable to disclose the other information; -Reject the requests for publication of the decision to be made; 6 -Reject the request for provisional damages made by Nicoll, as well as its claim for reimbursement of its legal costs. REASONS FOR THE DECISION I-Presentation of the patent Patent EP 3 272 938 entitled "Gutter, gutter assembly and assembly method" belonging to the company RPN, for which the application was filed on June 30, 2017, was granted on June 17, 2020, under the priority of patent FR 3 054 250 (application filed on July 19, 2016 but not completed). The patent relates to a device and method for installing a gutter partially concealed by floor covering elements, for the drainage of runoff water (§ [001]). No opposition was filed against the patent. The opt-out request of May 12, 2023, was withdrawn on June 10, 2024. The patent is in force, particularly in France and Italy, as RPN provided proof of payment of the latest annual fees during the proceedings. The patent relates to a product and its assembly process, concerning a gutter assembly comprising a gutter channel and a gutter cover (or grate), which comprises studs that are spacer elements for receiving floor covering elements (§[0007]). The prior art discloses a gutter cover with a longitudinal projection along the length of the grate body, equipped with a water drainage slot, consisting of two opposing L-shaped elements, each having a vertical arm and a horizontal arm, on either side of which floor coverings are laid ( FR 2683557 and JP021), but the height of the grate depends on the thickness of the floor covering and may need to be recut. The prior art device is also unattractive, as the slot is too visible (§ [0002], § [0003], and § [0004]). Furthermore, in the device as provided for in GB 324, the width of the floor covering determines the width of the grid, which requires the provision of grids of different widths (§ [0005]). 7 According to the patent, the technical problem that the invention aims to solve, in order to overcome these disadvantages, is to provide an assembly that can be adapted to the height of the covering (§ [0006]) and to provide a slot for water drainage, the height of which is defined by the height of the covering by means of spacer elements that guarantee the width and alignment of the slot (§ [0017]). The patent also discloses a method for assembling the device (§[0018], §[0020], §[0021]). The patent describes various embodiments designed to reduce the risk of obstruction and facilitate cleaning of the channel (§[00011] lines 23 and 24), to provide sufficient space between two floor coverings to allow water to pass through while allowing barefoot traffic (§[00012] lines 29-31; §[0031] lines 13-14; §[0039] lines 23 and 24; §[0064] line 3), to prevent water retention and its disadvantages (mosquito breeding grounds or frost cracking (§[0013] lines 36 et seq. and §[0041]) and to provide a gripping element on the cover body to make the cover easy to handle (§[00015]; §[00016] and §[00038] lines 12 to 14; §[0043]; §[0044]). The gutter of the invention is a gutter channel, with a bottom and channel walls, which provides support for flooring laid on the cover and the floor adjacent to the channel, with a space for water drainage through a drainage outlet formed by spacer elements that protrude from the upper surface of the cover body ( § [0008] line 43, § [0017]). The gutter cover of the invention consists of a cover body, in one piece or in several parts (§ [0009]), comprising an upper and lower surface, opposite each other (§[0007] lines 45 et seq.). The cover, designed to receive floor covering elements, comprises one or more openings in the upper surface ( ) and spacer elements (at least two) that protrude from the upper surface to provide a stop for the floor coverings, which are aligned with the upper surface in an alignment direction and separated by (at least) one opening (§[0040] forming a drainage outlet (§[0007] line 49, lines 53 et seq.; § [0040]). The spacer elements are removable studs, cross pieces, or pins (§[0010]) and may be pointed, truncated cone-shaped, or pyramidal in shape (§ [0011] line 22; § [0038]) and have a height or thickness of 8 mm (§ [0012], § [0039]). 8 The spacer elements ensure the width and alignment of the slot, and the height of the slot is defined by the height of the floor covering (§ [0017] lines 8 et seq.; § [0019]) without any further adjustment or use of other related elements (§ [0019] lines 28 to 31), regardless of the nature and thickness of the floor covering (§ [0031] lines 14 and 15; § [0033]). The floor covering elements rest mainly on the covering and not on the empty space of the openings (§ [0032] lines 27 and 28). All components of the device may be made of plastic, concrete, metal, or composite materials (§[0051], §[0021] and §[0062]). The patent thus discloses a trench cover to be assembled with a trench channel, the cover or grate comprising, on its upper face, at least two spacer elements, aligned in the longitudinal direction of the cover body, against which the floor covering slabs abut on either side. The spacer elements are separated by at least one drainage opening in the longitudinal alignment direction. The patent comprises 11 claims, R1 to R8 for the product with a main claim 1 and dependent claims 2 to 8, and R9 to R11 for the process, with a main claim 9 and dependent claims 10 and 11, as well as ten figures. Opposed claims 1, 5 to 9 are worded as follows: R1: "A gutter (2) extending in a longitudinal direction and comprising a gutter trough (10), the trough having a gutter bottom and a trough wall, a gutter cover (20; 220), the cover having a cover body (22; 222) extending in a longitudinal direction, with an upper surface and a lower surface opposite the upper surface, with at least one opening (30; 230) in the upper surface, for receiving at least two covering elements, at least two covering spacer elements (40; 240) 9 for the abutment of the at least two covering elements on either side of the at least two spacer elements, wherein the at least two spacer elements (40; 240) are aligned on the upper surface in an alignment direction and are separated by said at least one opening in the alignment direction, and the at least two spacer elements (40; 240) protruding from the upper surface of the cover body, thereby forming with said at least one opening a drainage outlet (32; 232), characterized in that the alignment direction corresponds to the longitudinal direction of the cover body (22, 222) as well as to the longitudinal direction of the channel (2). R5: "Gutter according to one of the preceding claims, wherein the at least one opening (30, 230) is a plurality of first openings (30, 230), the cover (220) comprising a second plurality of second openings (270) in the upper surface distinct from the first openings (30, 230)." R6: "A channel according to any of the preceding claims, wherein the cover (20; 220) is positionable either in a drainage position in which the spacer elements (40; 240) protrude outwardly from the side opposite the channel bottom, or in a viewing position in which the spacer elements protrude toward the channel bottom ." R7: "Gutter according to one of the preceding claims, the cover body (222) comprising an impression (250) or recess for accommodating a gripping element (256), in particular a nut, and the impression comprising a water drainage hole (252)." R8: "Gutter assembly comprising a gutter according to one of claims 1 to 7 and at least two covering elements (62, 64) arranged at least partially on the gutter cover, abutting on either side against the at least two spacer elements (40, 240), thereby forming a drainage passage at least partially between the at least two covering elements in the direction of alignment of the spacer elements." R9: "Method of assembling a channel assembly according to claim 8 and/or using a channel according to one of claims 1 to 7, comprising the steps of: - placing the channel trough (10) in a channel installation area, - placing the channel cover (20; 220) on the channel trough (10) and placing the at least two spacer elements (40; 240) facing outwards, - placing the at least two covering elements (62, 64) on the cover, abutting on either side the at least two spacer elements (40; 240), thus forming a water drainage passage (5) at least partly between the at least two covering elements, in the direction of alignment of the spacer elements (40, 240). II- The principles of patent interpretation In accordance with Article 69 of the European Patent Convention (EPC) and the Protocol on its interpretation, this Court adopts the standard of patent interpretation established by the JUB Court of Appeal in two orders (UPC CoA 335/2023 and UPC CoA 1/2024). 1)The patent claim is not only the starting point, but also the basis for determining the scope of protection of the European patent. 10 2) The interpretation of a patent claim does not depend solely on the strict and literal meaning of the terms used. On the contrary, the description and drawings must always be used to aid in the interpretation of the patent claim and not only to resolve ambiguities in the patent claim. 3) However, this does not mean that the patent claim serves only as a guideline and that its subject matter can extend to what the patent holder had envisaged, taking into account the description and drawings. 4) The patent claim must be interpreted from the perspective of a person skilled in the art. 5) By applying these principles, the aim is to combine adequate protection for the patent holder with sufficient legal certainty for third parties. 6) These principles for interpreting a patent claim also apply to the examination of infringement and validity of a European patent. This follows from the function of patent claims which, under the European Patent Convention, serve to define the scope of patent protection under Article 69 EPC and thus the rights of the patent holder in the contracting states designated under Article 64 EPC, while taking into account the conditions for patentability set out in Articles 52 to 57 EPC. At the hearing, the parties agreed, at the court's suggestion, that the skilled person should be defined as a person in the building trade who specializes in floor covering drainage systems. III- On literal infringement (Art. 25 AJUB) -Arguments of the parties RPN maintains that the disputed gutter (consisting of the Ghost gutter cover or grate designed to fit the Pratiko gutter), manufactured and marketed by the defendants since the beginning of 2024, reproduces claim 1 and claims 5 to 9 of patent EP 938. The Ghost gutter cover or grate alleged to be infringing comprises a continuous rib in the shape of crenellations, the ends of the transverse portions of which, according to RPN, constitute the spacer elements within the meaning of the patent, which receive the floor covering elements in abutment and are aligned longitudinally. The spacer elements separate the openings for water drainage. According to RPN, the longitudinal portions of the single rib have no function of their own. The defendants contest the literal reproduction of claim 1, in particular feature 1.3 (the spacer elements for abutment on either side of the floor covering elements), as well as the reproduction of features 1.3.1, 1.3.2, 1.3.3, and 1.4. They argue that the longitudinal rib forms a single continuous assembly (which RPN does not dispute). They argue that RPN is bound by its statements made during the examination procedure for patent EP 938 and that it is the longitudinal portions of the rib that ensure the spacing of the covering elements. They criticize the diagrams presented by the applicant, pointing out that the parts colored green by the applicant (corresponding to the horizontal transverse portions—diagrams on pages 48, 57 to 59 of the RPN brief of May 5, 2025) are only portions of a single piece and not spacer elements, and that these transverse portions are only reinforcements whose function is not to space the covering elements. According to First, since claim 1 is not reproduced, the other claims are not reproduced either. 11 In response to the defendants' arguments, RPN does not dispute that the longitudinal rib forms a single continuous unit, but argues that the patent does not prohibit a continuity of material connecting the spacer elements. The addition of longitudinal portions, alternately on either side of the openings, does not exclude literal infringement, as these longitudinal portions have no technical effect and do not implement the prior art. RPN considers, with reference to the case law of the JUB rejecting "file wrapper estoppel," that its statements during the EP 938 patent grant procedure, according to which the two parallel walls are necessary to space the covering elements, cannot be held against it, as they do not contradict with what it is arguing in the present proceedings and are not intended to apply to the gutter in question. According to RPN, document US 628 (comprising two parallel longitudinal walls delimiting a drainage opening and spacing the floor covering elements) is not transposable to the disputed channel, which has a single continuous rib. RPN emphasizes that the defendants cannot simultaneously admit that the longitudinal rib comprises a series of spacer elements and argue that the continuous rib cannot comprise spacer elements, adding that the First companies are making a technical error in considering that the transverse portions are only transverse reinforcements and do not touch the covering slabs, which is incorrect, as they are in contact at their ends. Furthermore, RPN argues that the transverse portions make it possible to achieve the technical effect of the invention, compared to the prior art, namely, to drain a greater proportion of the water flowing over the covering elements through the drainage outlets, thereby preventing water stagnation. -Response to the parties' arguments According to the division suggested by the parties and adopted by the court, the main claim 1 reads as follows: 1 A gutter (2) extending in a longitudinal direction and comprising 1.1 a channel trough (10), the trough having a channel bottom and a trough wall, 1.2 a channel cover (20; 220), the cover having a cover body (22; 222) extending in a longitudinal direction, 1.2.1 with an upper surface and a lower surface opposite the upper surface, with at least one opening (30; 230) in the upper surface, 1.2.2 for receiving at least two covering elements, 1.3 at least two spacer elements (40; 240) for the covering, for the abutment of the at least two covering elements on either side of the at least two spacer elements, 1.3.1 wherein the at least two spacer elements (40; 240) are aligned on the upper surface in an alignment direction 1.3.2 and are separated by said at least one opening in the alignment direction, 1.3.3 and the at least two spacer elements (40; 240) protruding from the upper surface of the cover body, 1.4 thus forming with said at least one opening a discharge opening (32; 232), 1.5 characterized in that the alignment direction corresponds to the longitudinal direction of the cover body cover body (22, 222) 1.6 as well as the longitudinal direction of the channel (2). 12 1- On the reproduction of Claim 1 According to this claim, -the trench cover comprises two (at least) spacer elements, to receive on either side of the floor covering elements (R1.3) -the spacer elements are aligned on the upper surface of the cover, in an alignment direction alignment (R.1.3.1) -the spacer elements are separated by an opening in the alignment direction (R1.3.2.) -the spacer elements protrude from the upper surface (R1.3.3.) -the spacer elements form, together with the opening, a drainage outlet (R1.4) The parties disagree on the reproduction of characteristics 1.3, 1.3.1 to 1.3.3 and 1.4. -On feature 1.3 [Channel (2) extending in a longitudinal direction and comprising ] 1.3 at least two spacer elements (40; 240) for the abutment of the at least two covering elements on either side of the at least two spacer elements, The parties agree that the rib of the Ghost cover alleged to be infringing, even though it has transverse and longitudinal portions in the form of crenellations, constitutes a continuous and single rib, in one piece. RPN argues that the transverse portions of the serrated rib constitute the spacer elements that not only allow spacing between the floor covering elements (already known in the prior art) but also improve water drainage, because they are separated by at least one opening in the direction of alignment, which allows water to flow through. RPN adds that the longitudinal portions of the Ghost rib have no function. However, RPN admitted in the context of the EP 938 patent grant procedure that the two parallel and longitudinal L-shaped walls of the prior art US 628 and JP 021 did not constitute spacer elements, but a single spacer element (RPN No. 10-2, pages 2-3 and page 5) and amended its application by introducing the characteristic of longitudinal alignment of the separator elements and openings to avoid the objection of lack of novelty. Indeed, RPN indicated (RPN exhibit No. 10-2, page 6) that unlike the prior art (US 628), where "elements 20 are spaced in the transverse direction and also aligned with each other on either side of the slot, therefore also in the transverse direction," in patent EP 938 "the spacer elements (...) are aligned with each other and separated by the opening in the upper surface of the receiving body 10, in the longitudinal direction (...)". The JUB Court of Appeal stated in its decision of December 20, 2024 (UPC CoA 402/2024) that the applicant's statements during the grant proceedings are only indicative (Headnotes: "2. the applicant's assertions during the grant proceedings [...] can be seen as an indication of the view of the person skilled in the art at the filing date." However, in this case, the applicant drew conclusions from his statements and implemented them by amending his patent application in order to avoid the objection of lack of novelty, which shows that RPN itself considered at the time that the two parallel walls of US628 were necessary to space the coating elements and therefore constituted a 13 single spacer element, it can therefore only declare in the present proceedings that the Ghost rib, which is made of a single piece, must be considered as two single spacer elements. Furthermore, the applicant cannot argue, on the basis of its diagrams, which were prepared and adopted for the purposes of the case without further justification, that even though the Ghost grid rib is a single piece, the floor covering elements would only abut the ends of the transverse portions of the rib, which would need to be insulated, and that the longitudinal portions would be unnecessary. Indeed, floor slabs undoubtedly abut longitudinal sections that are much more robust in order to accommodate compact, heavy floor slabs and are therefore useful elements. Conversely, the transverse portions of the rib are transverse reinforcements whose function is not to space and abut the flooring tiles. These considerations are further supported by the comments made by Mr. Provvisionato, European representative, assisting the defendants' representatives (order of July 11, 2025, after the pre-trial conference), on the mechanical strength of materials, particularly plastic, thanks to the shape of the rib, where the transverse and longitudinal portions are inseparable from each other and reinforce each other to compensate for the low strength of the plastic material (audio recording of the hearing 2:22-2:28). It follows that the Ghost grid does not include the "at least two claimed spacer elements" since the rib is a single element. Furthermore, as the defendants rightly point out, if each longitudinal portion were considered to be a spacer element, each longitudinal portion would only receive a single covering slab, so that feature 1.3, according to which "the abutment of the at least two covering elements" takes place "on either side of the at least two spacer elements," would not be reproduced either. The transverse portions of the single rib therefore do not constitute "spacer elements" within the meaning of the patent. The Ghost grid therefore does not reproduce characteristic 1.3. -On characteristics 1.3.1, 1.3.2, and 1.3.3 Features 1.3.1 (longitudinal alignment of the spacer elements), 1.3.2 (spacer elements separated by at least one opening in the longitudinal direction) and 1.3.3 (protrusion of the spacer elements from the upper surface of the cover body) relate to "spacer elements," which are considered not to be reproduced by the allegedly infringing products, as stated in the previous paragraph. These characteristics are therefore not reproduced. -Regarding feature 1.4 Feature 1.4 "thus forming with said at least one opening a discharge outlet (32; 232)" is also not reproduced literally because the opening is formed by the spacer elements, which themselves are not reproduced. 14 The literal infringement of claim 1 is therefore not established, without it being necessary at this stage to consider the other function invoked by RPN relating to improved water drainage. 2- On the literal reproduction of dependent claims 5 to 8 There is no infringement of these dependent claims, as claims 5 to 9 are dependent on Claim 1, which is not literally infringed. 3- On the infringement of claim 9 Infringement of claim 9 is not established for the same reasons as above, if claim 1 is not infringed, since claim 9 refers to claim 8 (dependent on claim 1, which is not infringed) or to claims 1 to 7 (also dependent on claim 1, which is not infringed). The claims made by RPN on the grounds of literal infringement must therefore be dismissed in their entirety. IV- On infringement by equivalence -Arguments of the parties RPN invokes, in the alternative, the reproduction by equivalence of the spacer elements of claim 1, due to the longitudinal ribbing of the Ghost grille. It argues that the longitudinal alignment of the spacer elements and openings is such as to allow a greater amount of water to be drained away and that this function is reproduced, albeit imperfectly, by the longitudinal rib of the disputed channel body, which produces the same result, thereby constituting infringement by equivalence. RPN proposes adopting a test consistent with French, German, and Italian national practices (different means with the same function and leading to the same result) to assess equivalence, and opposes the application of the four-question Dutch test proposed by the defendants. It argues that the theory of equivalence must apply to the non-reproduced features 1.32, 1.5, and 1.6, maintaining that only the equivalence of the non-reproduced feature should be assessed, contrary to the defendants' contention, and that in this case, the longitudinal portions of the rib allow, albeit imperfectly, the flow of water in the gutter, so that the gutter in question does indeed reproduce the function of the spacer elements in claim 1. It adds that there is no need to verify the novelty of the function, as required in the French test, the application of which is not sought, and in any event contests the complaint of lack of novelty in view of the prior art cited. Furthermore, according to RP Nicoll, the same applies if the Dutch test and its four questions (technical equivalence, obviousness of the application of the equivalent element, reasonable legal certainty for third parties, novelty and inventiveness of the product alleged to be infringing) were applied. *** 15 The FIRST companies conclude that the infringement by equivalence should be dismissed and oppose the application of the test suggested by the plaintiff, claiming the use of the Dutch test. They contest RP Nicoll's definition of the function of means not reproduced literally and consecutively, of the technical problem to be solved, stating that the patent specification does not describe the alleged problem of improved runoff drainage, which, moreover, does not clearly follow from the characteristics of the gutter and cannot be easily deduced by a person skilled in the art. They add that the primary function, assessed as a whole, of the spacer elements, aligned in the longitudinal direction, is to space the floor covering elements, which abut on either side, and that this function was known from the prior art documents, so that it is out of the question for the single rib of the Ghost grid to be considered an equivalent means. The defendants further argue that the function envisaged by the plaintiff, which allows a greater proportion of the water running down the cladding elements to be drained away through the central opening, is not new in light of JP 279 and JP 021. Furthermore, the claimed function is not reproduced, as there is no guarantee that the Ghost grid allows a greater proportion of water to be drained through the central opening, whereas the water may, at least partially, flow into the space between the edge of the floor covering and the longitudinal portion of the rib, rather than through the openings. As such, the illustrations provided by RP Nicoll regarding the path of the water do not correspond to physical and technical reality, in particular because the upper surface of the grid is not sloped and does not drain water toward the drainage outlet. Finally, the defendant companies conclude that the claims for infringement by equivalence of claims 5 to 9 should be dismissed, as there is no reproduction by equivalence of the characteristics of the main claim 1. -Response to the parties' arguments 1-On the applicable equivalence test According to Article 24 AJUB, the sources of law for deciding disputes before the JUB include, in particular, the EPC. Article 2 of the Interpretative Protocol on Article 69 EPC, which supplements the first article of the Protocol, states: "In determining the scope of protection, due account shall be taken of any element equivalent to an element specified in the claims," without, however, the description and drawings being used to extend the scope of patent protection. As stated by the Paris Local Division (UPC CFI 363/2024 ACT 39091/2024, August1, 2025— points 73 to 81), referring to the decision of the Mannheim Local Division of June 6, 2025 (CFI 471/2023), that in the absence of an agreement between the parties to apply a particular national law on this point, it is appropriate to apply case law pursuing a harmonized approach to equivalence, using criteria derived from a compromise between the different doctrines used within the Member States, in order to comply with the objectives of the UPC. In view of this decision and that of the Brussels Local Division in its decision of January 17, 2025 (UPC CFI 376/2023), it is necessary that at least the function be reproduced and that, in the absence of such reproduction, there would in any case be no reproduction by equivalence. 16 In the present case, in the absence of agreement between the parties on an applicable test, it is necessary to adopt a harmonized approach and answer the following question: Do the modified (or substitute) means essentially fulfill the same function to achieve essentially the same effect? 2-On the materiality of infringement by equivalence The examination of infringement by equivalence requires that the function(s) of the spacer elements be determined in advance with regard to the patent, i.e., that of separating the covering slabs at the abutment and that invoked by the proprietor, of improving water flow, which amounts to interpreting the patent and defining the scope of the resulting protection. On the function(s) of the spacers The terms of a claim must be interpreted in the general context of the set of claims and the description and drawings. The technical effect of a feature not listed or described in the claim or drawings may only be invoked if it is credible, does not alter the essence of the invention, and can be unequivocally deduced by a person skilled in the art. The burden of proof for such an interpretation lies with the proprietor. According to the Local Division in Düsseldorf (UPC CFI 272/2023, October 31, 2024 ), the subject matter of a patent claim must not be limited to the scope of the preferred embodiments but must extend to the subject matter that a person skilled in the art understands to be the patent holder's claim after interpretation with the aid of the description and drawings. An interpretation supported by the description and drawings is generally not limited by a drawing showing only a specific shape of a component. In this case, the patent concerns a gutter, whose primary function is obviously to drain and remove runoff water, but the patent's sole claimed purpose is to overcome installation and aesthetic difficulties, which are identified disadvantages of the prior art (§ [0003] lines 25-26; § [0004] lines 30-31 and §[0005] lines 34-36 ). The patent thus recommends, in its characterizing part, the positioning of the spacer elements separated by drainage outlets, both cited in the preamble to the claim, in a longitudinal alignment direction, the device allowing both "support recovery" of the floor slabs (§ [0008] line 4) and "the delimitation of a water passage space" (§ [0008]. In terms of specific modes of implementation, it is proposed to "reduce the risk of obstruction," to "facilitate maintenance or cleaning of the gutter" (§ [0011] lines 23-24) or "ensure sufficient width between two covering elements for water to pass through" and "avoid water retention " (§[0013] line 37) or "to accommodate a gripping element" (§ [0015] and [0016]). Pursuant to Article 54 of the AJUB, the burden of proof of infringement lies with the claimant, who must prove his allegations. And in accordance with Rule 172.1 RdP, the claimant's allegation will be deemed established if it is not specifically contested by the other party, provided, however, that the alleging party provides prima facie evidence to that effect (Düsseldorf District Court decision of July 10, 2025, UPC CFI 213/2025, headnote 2). 17 Thus, in the context of interpreting claims, the applicant cannot simply assert that the interpretation of the invention is obvious to a person skilled in the art who could have reached such a conclusion. The proprietor must demonstrate that the functions not described in the patent could have been deduced by a person skilled in the art and that his allegation is more likely than not (UPC CoA 523/2024, decision of March 3, 2025). The patent in dispute does not claim or describe in any way the technical problem consisting of improving the fluidic behavior of water, which is neither invoked nor even mentioned among the problems to be solved, and gives no indication as to the improvement of the water circuit due to the longitudinal alignment of the drain outlets, except to address a few disadvantages associated with water drainage (risk of obstruction, water retention). It should be noted that one of these problems, namely water retention, is only solved by the presence of second openings (§[0041]), which are not separated by the spacer elements and are therefore in a different configuration from that recommended in the patent (longitudinal alignment of the spacer elements separated from the drainage outlets). It is up to RPN to demonstrate that the undescribed function of improving the fluidic behavior of water could have been deduced by a person skilled in the art, prompted by elements of the prior art or their general knowledge. However, RPN does not demonstrate that the diagrams it produced to support its argument (paragraphs 79 and 80 of RPN's reply brief) correspond to any reality for a person skilled in the art. FIRST companies, for their part, contest the diagrams produced by the applicant and the resulting interpretation of the patent according to RPN. The comments made at the hearing by Mr. Provvisionato, European representative, that the applicant's diagrams are unrealistic, given the various factors such as friction and gravity in particular (pressure being excluded here) that are likely to affect the path of the water, suggesting that there is no stagnation of water, are more convincing (audio recording of the hearing 2:39 to 2:43). Thus, RPN does not sufficiently demonstrate that it was more likely than not that a person skilled in the art could unambiguously deduce from the patent that the longitudinal alignment of the spacer elements and the drainage outlets also contributes, in addition to facilitating installation and improving the aesthetic appearance of the device, to improving the flow of runoff water and allowing a greater volume of water to be drained. RPN cannot conclude that the modified means essentially fulfill the same function as patent EP 938, because the alleged function does not clearly follow from the characteristics of the gutter according to claim 1 of the patent and is not easily deducible by a person skilled in the art. Therefore, since the function mentioned as being reproduced by equivalence does not derive from the patent, the existence of infringement by equivalence cannot be upheld. There is no need to rule on the other claims for preliminary relief (prohibition of the disputed products in France and Italy, recall of the products, withdrawal from commercial channels and destruction, disclosure of information, publication of the decision, provisional awards of damages and reimbursement of legal and representation costs). 18 IV-On legal costs (Article 69 AJUB) In accordance with R.104 i) and R370.6 RdP, the value of the action was set at €750,000 euros. Article 69 AJUB provides that: "1. Reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity dictates otherwise, up to a limit set in accordance with the rules of procedure. In accordance with Rule 118.5 RdP, RPN, which has lost the infringement claim, will be required to bear all the costs of the proceedings under Article 69 AJUB. The First companies are seeking payment of a provisional sum of €70,000 for their legal and representation costs (brief of June 5, 2025, page 68, point 152). In view of the evidence in the proceedings and the supporting documents produced, in particular the fee certificate dated September 11, 2025, submitted at the hearing by First and not contested by RPN, the sum of €70,000 shall be provisionally awarded to FIRST in respect of legal costs and shall be borne by RPN. The Court notes that this decision is, in principle, immediately enforceable (R. 354 RdP). ON THESE GROUNDS, The Court, On the literal and equivalent infringement of claims 1, 5, 6, 7, 8, and 9 of patent EP 938 -Rejects the claims of Raccords et Plastiques Nicoll, on the grounds of literal and equivalent infringement, -Rejects the incidental claims of Raccords et Plastiques Nicoll, On costs and claims for payment of provisions -Declares that RPN shall bear all costs of the present action, as determined by separate proceedings at the request of the parties, -Orders RPN to pay the defendant FIRST companies a provision of 70,000 (seventy thousand) euros in costs as provided for in Article 69.1 AJUB, -States that this decision is subject to appeal in accordance with Rule 220.1(a) RdP. Issued in Paris, October 24, 2025. Camille Lignières, President Date: 2025.10.23 1:12:19 p.m. +02'00' 19 Carine Gillet, Reporting Judge 2025.10.24 09:18:01 +02'00 Rute Lopes, Legally qualified judge Digitally signed by Rute Alexandra Da Da Silva Sabino Silva Sabino Lopes Lopes Data: 10/23/2025 11:53:25 Charlotte Ferhat, Clerk Digital signature CHARLOTT E CAMILLE of CHARLOTTE CAMILLE CLAIRE FERHAT CLAIREFERHAT Date: 10/24/2025 10:09:19 +02'00' DETAILS OF THE ORDER UPC No.: UPC CFI 612/2024 Date: October 24, 2025 Type of action: Action for infringement Rute Alexandra

Key Holdings

  • The court rejected Raccords et Plastiques Nicoll's claims of literal infringement of patent EP 3 272 938 (claims 1, 5-8 for product and 9 for method), finding that the 'Ghost grid' did not reproduce the 'at least two claimed spacer elements' as the rib was a single element.
  • The court rejected Raccords et Plastiques Nicoll's claims of infringement by equivalence, ruling that the alleged function of improving water flow was not sufficiently described in the patent or unambiguously deducible by a person skilled in the art.
  • For assessing infringement by equivalence, the court adopted a harmonized approach, asking whether the modified (or substitute) means essentially fulfill the same function to achieve essentially the same effect.
  • The court reaffirmed the standard of patent interpretation established by the JUB Court of Appeal, stating that claims are the starting point and basis, but description and drawings must always aid interpretation from the perspective of a person skilled in the art.
  • Raccords et Plastiques Nicoll, as the unsuccessful party, was ordered to bear all costs of the proceedings, including a provisional sum of €70,000 to the First companies for legal and representation costs.

Tags

  • Claim Construction
  • Costs
  • Doctrine of Equivalence
  • Infringement
  • Literal Infringement
  • UPC
  • Unified Patent Court

Related Rules

Related Cases