UPC_CFI_706/2025; UPC_CFI_706/2025 – SK v Volta

Expert Commentary

Infringement Facts 1. SK sued Volta for infringement of EP 3 316 363 relating to an electrolytic copper foil for a secondary battery. 2. Volta filed a conditional counterclaim for revocation. 3. The claimant, SK, tested a battery from defendant, which it had obtained from a company that by supplying the battery to claimant violated an NDA. 4. A US court already decided that the defendants infringed the US counterpart patent which has similar claims. The defendants relied essentially on the same products (injuncted in the US) to argue in the UPC prior public use. 5. Several materials, documents, expert reports are under a protective order in the US and the defendants did not want to cooperate to amend the protective order. The claimant’s motions in the US to have certain info released failed. The Court 1. The Court accepts jurisdiction against the Hungarian defendants based on Art. 7.2 of the Brussels I-bis Regulation and for the Luxembourg defendant on the basis of Art. 4 of the same regulation. 2. The competence of LD Mannheim follows from R. 19.7 RoP as competence was not challenged. 3. The secondary batteries are rechargeable batteries. 4. The Court discusses the patent stating that the objective task of the patent is to provide an improved secondary battery which maintains a high capacity over a longer time. 5. The Court interprets certain claim features after having established the skilled person. The Court does not accept the claimant’s point of view, further holding “this definition of Rpc in the patent-in-suit is decisive and, for the sake of legal certainty, cannot be interpreted in a broader sense to align it with other definitions used in (commonly known) technical specifications to which the patent-in-suit does not refer in this specific context and from which it deviates”. 6. The defendant referred to the prosecution history, but it has not been decided whether this can be used because the Court’s interpretation does not conflict with the prosecution history. On the contrary: it was confirmed by the claimant during prosecution. 7. The result of the claim interpretation is that the infringement action has to be dismissed. 8. The Court awards the costs to the defendant for both the infringement action and the conditional counterclaim for revocation. Comment 1. The case shows that the patent is its own lexicon, and that the primary basis for interpreting patent claims is the patent itself. Even if the meaning is not in conformity with what is generally accepted in the technical field, the meaning based on the patent description is decisive. 2. I have previously argued that it is wrong to award costs to the patentee for the revocation action if the condition is not fulfilled, and I am pleased to see that the LD Mannheim agrees, providing a through justification for its decision. My reasoning was brief. I said that a conditional counterclaim is only raised as a further defence to the infringement claim, and that it is very clear who is the prevailing party if the Court dismisses the infringement claim. Even if you consider the revocation action to be separate, the same reasoning applies. Treating the (conditional) revocation action as completely separate from the infringement action, considering its success to be a separate issue, demonstrates a formalistic attitude that completely ignores reality. That is not how we should apply the law. Bravo, Mannheim!

Key Holdings

• The patent is its own lexicon and the primary basis for interpreting patent claims is the patent itself, meaning that a definition provided in the patent description is decisive even if it deviates from commonly known technical specifications.
• Claim interpretation cannot be broadened beyond the patent's own definition to align with definitions used in external technical specifications not referenced in that context.
• Where an infringement action is dismissed following claim interpretation, the defendant is the prevailing party and is awarded costs for both the infringement action and the conditional counterclaim for revocation.

Tags

• Infringement
• Claim interpretation
• Patent as its own lexicon
• Costs
• Conditional counterclaim