UPC_CFI_684/2025; UPC_CFI_2279/2025 – Align v Angelalign
- Court
- Local Division Paris
- Date
- Outcome
- Partially Granted
- Sector
- Pharma/Bio
- Decision Type
- MERITS
Expert Commentary
Infringement action Facts 1. This case concerns an infringement action with respect to EP 2 237 738. 2. The defendant filed a counterclaim for revocation. The Court 1. The JR has already decided that the Court has international jurisdiction for alleged infringements in the UK. 2. The Court discusses the patent for “orthodontic repositioning appliances having improved geometry, methods and systems”. 3. After citing the general principles, the Court interprets the claim features as far as there is disagreement between the parties. 4. The Court adopts the broad claim interpretation proposed by the claimant holding among others that “patent specifications constitute their own lexicon with regard to the terms used therein”. 5. The defendant has not raised serious doubts supported by substantiated facts and/or practical examples that the skilled person is presented with an undue burden in implementing the claimed subject matter. The Court rejects the insufficiency attack. 6. The Court cites the principles with respect to dealing with an added matter attack and especially the argument of an “intermediate generalization” which is only successful if there is “an extricable link” between the omitted feature(s) and the new feature used in the claim. The Court rejects the added matter attack. 7. The inventive step attack fails because D1 and D2 do not together disclose all claim elements and, there is no pointer to combine them. Clear pointers are also missing for combining D1 and D3. The other combinations proposed equally miss the necessary pointer. 8. The Court, referring to its claim interpretation, concludes to literal infringement. 9. Claimant has only brought late and insufficient evidence about infringing acts in the UK. As a consequence, the Court dismisses the infringement action as far as the UK is concerned. 10. As the claimant accepts that patients who are already treated with the defendants’ method can continue that treatment, there is no reason not to grant an injunction because of patients’ interests. 11. Claimant did not bring enough proof that “infringing” acts started before the grant of the patent and claimed damages instead of “compensation”. The Court dismisses the demand for damages for the period prior to the grant of the patent. 12. The Court grants the requested injunction and the other requests but refuses to order security and publication of the decision (“only in specific circumstances”). Comment 1. In my opinion a well-reasoned decision delivered in 14 months. 2. The decision confirms several general aspects of UPC proceedings, apart from the front-loaded character, which, also in this case, resulted in late filed arguments not being accepted: a. claim interpretation decides most of the time the infringement question. There is a tendency to a broad interpretation; b. intermediate generalization is only a good argument for an extension of subject matter attack in very obvious cases; c. if you want to obtain an injunction for a country outside the UPC you have to bring (timely) proof that the alleged acts constitute infringement in such country; d. no security and no publication of the judgment except in special justifying circumstances; e. most inventive step attacks are already not successful because of lack of pointers or incentive to combine. It does not make sense to argue a combination of documents based on a realistic starting point if you cannot explicitly and convincingly argue a pointer or incentive to combine.
Key Holdings
- Patent specifications constitute their own lexicon with regard to the terms used therein, guiding claim interpretation.
- An added matter objection based on intermediate generalization requires an inextricable link between the omitted feature and the new feature incorporated into the claim.
- An inventive step attack combining prior art documents fails without an explicit and convincing pointer or incentive to combine them.
- Extraterritorial infringement claims require timely and sufficient evidence of infringing acts in the respective jurisdiction to be maintained.
- Publication of the decision and ordering of security will only be granted under specific or special justifying circumstances.
Tags
- Infringement action
- Counterclaim for revocation
- Claim interpretation
- Added matter
- Intermediate generalization
- Inventive step
- Injunction
- International jurisdiction