UPC_CFI_807/2024; UPC_CFI_334/2025 – Wonderland v Cybex

Expert Commentary

Change of claim Facts 1. The claimant filed infringement proceedings alleged infringement of claim 1 and certain subclaims by equivalence. 2. The claimant argued that all claim elements except 1.4 and 1.6 were literally infringed, and that 1.4 and 1.6 were infringed by equivalence. 3. The defendants claimed not to infringe claim element 1.9 and 1.10. 4. In reply, the claimant argued that at least 1.9 and 1.10 were infringed by equivalence and on the same day filed a request to amend this claim (case) in the sense that they would be allowed to argue that 1.9 and 1.10 were infringed by equivalence. The Court An amendment of case is not necessary. The Court of Appeal had decided that adding an equivalence argument in response to an argument in the Statement of Defence does not necessarily change the nature or scope of the dispute (see the decision of the Court of Appeal in Ortho v Apnea; Hoyng, Case Law Court of Appeal 2023-2024 p. 95). Comment The representative was (overly) cautious. However, as follows from the decision of the Court of Appeal, it is all a matter of the circumstances of the case. If in correspondence before the proceedings, the defendant argues that there is no literal infringement, and the Statement of Claim contains no arguments on the doctrine of equivalence, you would have a problem. In this case, it would have been better if the claimant also with respect to other claim elements at least would have made clear that he was not giving up to raise the doctrine of equivalence against an unexpected argument of the defendant with respect to the other claim elements.

Full Decision Text

Düsseldorf Local Division UPC_CFI_807/2024 UPC_CFI_334/2025 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 29 August 2025 concerning EP 1 905 615 CLAIMANT: Wonderland Nurserygoods Co., Ltd., represented by the president, 10F, No. 433 Rui Kwang Road, Neihu, 114 Taipei, Taiwan represented by: Attorney-at-law Dr Jan Philipp Rektorschek, Attorney-at-law Julia Fischer and Attorney-at-law Tobias Baus and all professional representatives admitted to practice before the Unified Patent Court of Taylor Wessing Partnerschaftsgesellschaft mbB, Isartor- platz 8, 80331 Munich, Germany electronic address for service: j.rektorschek@taylorwessing.com contributing: Patent Attorney Dr Tim Oppermann and all professional representatives admitted to practice before the Unified Patent Court of Pfenning, Meining & Partner mbB, Joachimsthaler Str. 12, 10719 Berlin, Germany DEFENDANTS: 1. Cybex GmbH, Riedinger Strasse 18, 95448 Bayreuth, Germany 2. Cybex Retail GmbH, Riedinger Strasse 18, 95448 Bayreuth, Germany 3. Columbus Trading-Partners GmbH & Co. KG, Riedinger Strasse 18, 95448 Bayreuth, Germany represented by: Attorney-at-law Dr Michael Nieder, Patent Attorney Tilman Pfrang, Attorney-at-law Niels Schuh, Meissner Bolte Patentan- wälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538 Munich, Germany electronic address for service: mail@mb.de PATENT AT ISSUE: European patent n° EP 1 905 615 2 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This Order was issued by Judge Dr Schumacher acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 263 RoP – Application for leave to change claim SUMMARY OF THE FACTS: 1. The Claimant filed an infringement action against the Defendants, based on an infringement by equivalence of independent claim 1 and dependent claims 4, 6, 8, 9, 10 and 11 of the European patent with unitary effect EP 1 905 615 (hereinafter: patent in suit). The infringement action is directed against the sale and distribution of several strollers having swivel locking devices (hereinafter: challenged embodiment). 2. Claim 1 of the patent in suit reads as follows, divided into features as set out by the Claimant in the Statement of claim: 1.1 A swivel locking device for stroller wheel, comprising: 1.2 a seat; 1.3 a wheel bearing assembly coupled to the seat, capable of rotating with respect to the seat and comprising a wheel bearing and a base coupled to the wheel bearing; 1.4 a locking pin disposed on the wheel bearing assembly so as to move between a first position where the locking pin is coupled to the seat and the wheel bearing assembly is unable to rotate around the seat and a second position where the locking pin is decoupled to the seat to allow the rotation between the seat and the wheel bearing assembly; 1.5 a biasing member, which normally biases the locking pin to the first position; and 1.6 an operating member coupled to the wheel bearing assembly so as to move between a locked position and an unlocked position, 1.7 wherein the operating member is operatively coupled to the locking pin such that movement of the operating member toward the locked position causes the locking pin to move toward the first position, and 1.8 the movement of the operating member toward the unlocked position causes the locking pin to move toward the second position; 1.9 characterized in that a cavity is formed on the base of the wheel bearing assembly for receiving the seat and 3 1.10 comprises a clasping mechanism therein for restricting the movement of the seat along an axis of the cavity. 3. In the Statement of claim, the Claimant alleged that the challenged embodiment uses features 1.4 and 1.6 of independent claim 1 by equivalent means, while all other features are implemented literally. 4. The Defendants filed a Statement of defence and a Counterclaim for revocation. They contested, inter alia, the infringement with regard to features 1.9 and 1.10. 5. On 16 June 2025, the Claimant filed a Reply to the Statement of defence, a Defence to the Counterclaim for revocation, and an Application to amend the patent. In the Reply to the Statement of defence, the Claimant further discussed the presence of features 1.9 and 1.10. In addition, if the Court were to find that the challenged embodiment did not infringe features 1.9 and 1.10 literally, the Claimant argued that infringement by equivalence would also apply to these features. 6. On the same day, the Claimant filed an application for leave to change claim. The Claimant seeks leave to change main request II. of the Statement of claim and to add an auxiliary request II.a. 7. The Defendants were invited to comment on the application. They responded with a submission dated 25 August 2025. REQUESTS: 8. The Claimant requests: 1. Leave to change the main request II. as follows (differences to request II. as asserted in the Statement of claim are underlined): Main Request: II. The Defendants are ordered to cease and desist from making, offering, placing on the market or using, or importing or storing for those purposes, in the territory of the Contracting Member States, swivel locking devices for a stroller wheel, if they comprise a seat; a wheel bearing assembly coupled to the seat, capable of rotating with respect to the seat and comprising a wheel bearing and a base coupled to the wheel bearing; a locking pin disposed on the wheel bearing assembly so as to move between a first position where the locking pin is coupled to the seat and the wheel bearing assembly is unable to rotate around the seat and a second position where the locking pin is decoupled to the seat to allow the 4 rotation between the seat and the wheel bearing assembly, wherein the locking pin is disposed, instead of on the wheel bearing assembly, on the seat to as to move between a first position where the locking pin is coupled to the base instead of to the seat and the wheel bearing assembly is unable to rotate around the seat and a second position where the locking pin is decoupled to the base instead of the seat to allow the rotation between the seat and the wheel bearing assembly, a biasing member, which normally biases the locking pin to the first position; and an operating member coupled to the wheel bearing assembly so as to move between a locked position and an unlocked position, wherein the operating member is coupled to the seat instead of to the wheel bearing assembly wherein the operating member is operatively coupled to the locking pin such that movement of the operating member toward the locked position causes the locking pin to move toward the first position, and the movement of the operating member toward the unlocked position causes the locking pin to move toward the second position; wherein a cavity is formed on the base of the wheel bearing assembly for receiving the seat, and comprises a clasping mechanism therein for restricting the movement of the seat along an axis of the cavity, [claim 1 by doctrine of equivalence] in particular if the operating member comprises a horizontal portion to be coupled to the locking pin in the wheel bearing assembly, wherein the locking pin is located in the seat instead of in the wheel bearing assembly; [claim 4 – equivalent] and / or a positioning slot is disposed on the seat, the locking pin is held on the first position by the partly locking pin inserted into the positioning slot, and the locking pin completely exits the positioning slot when the locking pin is on the second position, the locking pin being disposed on the base instead of on the seat; [claim 6 – equivalent] and / or 5 the wheel bearing assembly comprises a wheel bearing and a base coupled to the wheel bearing, the seat and the base are coupled so as to rotate with respect to each other, and the operating member is movably coupled to the base, wherein the operating member is movably coupled to the seat instead of to the base; [claim 8 – equivalent] and / or the wheel bearing assembly further comprises a shock absorber disposed between the wheel bearing and the base; [claim 9] and / or a trench for receiving the biasing member and partial locking pin has an opening near a front edge of the wheel bearing assembly, the opening is spaced communication in the front and the top side of the front edge, wherein a trench has an opening, instead of near a front edge of the wheel bearing assembly, near a front edge of the seat and wherein the opening is spaced communication in the front and, instead of the top side, the bottom side of the front edge; [claim 10 – equivalent] and / or the locking pin is coupled to the biasing member mounted within the trench. [claim 11] 2. Leave to add an auxiliary request II.a. as follows (differences to request II. as asserted with this brief are underlined): Auxiliary Request: II.a. The Defendants are ordered to cease and desist from making, offering, placing on the market or using, or importing or storing for those purposes, in the territory of the Contracting Member States, swivel locking devices for a stroller wheel, if they comprise a seat; 6 a wheel bearing assembly coupled to the seat, capable of rotating with respect to the seat and comprising a wheel bearing and a base coupled to the wheel bearing; a locking pin disposed on the wheel bearing assembly so as to move between a first position where the locking pin is coupled to the seat and the wheel bearing assembly is unable to rotate around the seat and a second position where the locking pin is decoupled to the seat to allow the rotation between the seat and the wheel bearing assembly, wherein the locking pin is disposed, instead of on the wheel bearing assembly, on the seat to as to move between a first position where the locking pin is coupled to the base instead of to the seat and the wheel bearing assembly is unable to rotate around the seat and a second position where the locking pin is decoupled to the base instead of the seat to allow the rotation between the seat and the wheel bearing assembly, a biasing member, which normally biases the locking pin to the first position; and an operating member coupled to the wheel bearing assembly so as to move between a locked position and an unlocked position, wherein the operating member is coupled to the seat instead of to the wheel bearing assembly wherein the operating member is operatively coupled to the locking pin such that movement of the operating member toward the locked position causes the locking pin to move toward the first position, and the movement of the operating member toward the unlocked position causes the locking pin to move toward the second position; wherein a cavity is formed on the base of the wheel bearing assembly for receiving the seat, wherein the cavity is formed on the seat instead of the base of the wheel bearing assembly for receiving the base of the wheel bearing assembly instead of the seat, and comprises a clasping mechanism therein for restricting the movement of the seat along an axis of the cavity, wherein, instead of the cavity of the base of the wheel bearing assembly, the cavity of the seat comprises a clasping mechanism, [claim 1 by doctrine of equivalence] in particular if the operating member comprises a horizontal portion to be coupled to the locking pin in the wheel bearing assembly, wherein the locking pin is located in the seat instead of in the wheel bearing assembly; 7 [claim 4 – equivalent] and / or a positioning slot is disposed on the seat, the locking pin is held on the first position by the partly locking pin inserted into the positioning slot, and the locking pin completely exits the positioning slot when the locking pin is on the second position, the locking pin being disposed on the base instead of on the seat; [claim 6 – equivalent] and / or the wheel bearing assembly comprises a wheel bearing and a base coupled to the wheel bearing, the seat and the base are coupled so as to rotate with respect to each other, and the operating member is movably coupled to the base, wherein the operating member is movably coupled to the seat instead of to the base; [claim 8 – equivalent] and the wheel bearing assembly further comprises a shock absorber disposed between the wheel bearing and the base; [claim 9] and / or a trench for receiving the biasing member and partial locking pin has an opening near a front edge of the wheel bearing assembly, the opening is spaced communication in the front and the top side of the front edge, wherein a trench has an opening, instead of near a front edge of the wheel bearing assembly, near a front edge of the seat and wherein the opening is spaced communication in the front and, instead of the top side, the bottom side of the front edge; [claim 10 – equivalent] and / or the locking pin is coupled to the biasing member mounted within the trench. [claim 11] 9. The Defendants request: 8 to reject the application for leave in its entirety, or, as an auxiliary request, to reject the application for leave at least as far as it concerns the alleged equivalent infringement of features 1.9 and 1.10 (“Auxiliary Request” in the Claimant’s Reply to the Statement of defence). GROUNDS FOR THE ORDER: 10. The issues addressed in the application do not require leave to change the claim. 1. Addition of auxiliary request II.a. 11. R. 263 RoP does not apply to the addition of auxiliary request II.a. based on the extension of the equivalence argument. a) R. 263 RoP not applicable 12. Pursuant to R. 263.1 RoP a party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including by adding a counterclaim. 13. Not every new argument constitutes an “amendment of a case” requiring a party to apply for leave under R. 263 RoP. An amendment of a case occurs when the nature or scope of the dispute changes. For example, in an infringement case, this occurs if the claimant invokes a different patent or objects to a different product (UPC_CoA_456/2024, Order of 21 November 2024, par. 23 – OrthoApnea; see also UPC_CoA_169/2025, Order of 11 April 2025, par. 26 – TGI v. AIM). 14. In its Order of 21 November 2024 (UPC_CoA_456/2024, par. 24 – OrthoApnea), the Court of Appeal stated that the equivalence argument does not necessarily change the nature or scope of the dispute. In the case at question, the Court of Appeal found that the equivalence argument was in line with the infringement argument put forward by the respondent in the statement of claim. The equivalence argument was based on the same patent and was directed against the same product. Like the argument of a literal infringement, the equivalence argument, in the particular case, concerned the extent of protection conferred by the patent at issue under Art. 69 (1) EPC and the Protocol on the Interpretation of Art. 69 (1) EPC. 15. These considerations can be applied to the case at hand. The fact that the Claimant seeks to claim infringement by equivalence not only for features 1.4 and 1.6 of independent claim 1, but also for features 1.9 and 1.10, does not constitute an amendment of the case. Extending the equivalence argument to features 1.9 and 1.10 does not alter the nature or scope of the dispute. The equivalence argument remains based on the same patent and is directed against the same products, namely the challenged strollers having swivel locking devices. 16. The extension of the equivalence argument mainly concerns the question of whether the “stem” or “pin” of the swivel locking device should be considered part of the “seat” or part of the “base”. This in turn affects the question of where the cavity mentioned in features 1.9 (“characterized in that a cavity is formed on the base of the wheel bearing assembly for 9 receiving the seat …”) and 1.10 (“comprises a clasping mechanism therein for restricting the movement of the seat along an axis of the cavity”) is located. 17. In the Statement of Claim, the Claimant has argued that the stem forms a part of the seat. It has located the cavity in the base, as shown in the picture below (see Statement of claim, p. 34): 18. In the Reply to the defence, the Claimant has argued that, within the scope of the auxiliary request, the stem shall be considered part of the base. It has located the cavity in the seat, as shown in the picture below (see Reply to the defence, p. 64): 19. Thus, the new reasoning essentially involves a different feature allocation. The Claimant assigns the same components of the challenged embodiment to the features of claim 1 differently. All components involved are part of the challenged embodiment identified in the Statement of claim. Against this background, the Court does not agree with the Defendants’ 10 argument that by extending the equivalence argument to features 1.9 and 1.10, a completely different structure of the device is targeted. b) Restrictions on raising new arguments 20. The Defendants are correct to point out that, even if a new argument is not an amendment of the case for which judicial leave is required under R. 263 RoP, there are still restrictions on raising new arguments. This applies in particular with regard to R. 13 RoP (see UPC_CoA_456/2024, Order of 21 November 2024, par. 26 – OrthoApnea) and R. 9.2 RoP. However, this issue is not subject of the application at hand and will therefore have to be decided at a later date. 2. Changes of main request II. 21. R. 263 RoP does not apply to the changes of main request II. either. The Claimant has explained comprehensively that the changes are essentially corrections of typographical errors. The Defendants have not specifically contested this. Such corrections are not considered as an amendment to the case. ORDER: The Claimant’s application for leave to change the claim is denied. DETAILS OF THE ORDER: App_28536/2025 related to the main proceedings ACT_66405/2024 and CC_17805/2025 UPC-number: UPC_CFI_807/2024 and UPC_CFI_334/2025 Type of procedure: Infringement action and counterclaim for revocation Issued in Düsseldorf on 29 August 2025 NAME AND SIGNATURE Judge Dr Schumacher

Key Holdings

• Request to amend case deemed unnecessary.
• Adding equivalence argument in Reply (responding to Defence) allowed without amendment application.

Tags

• Amendment of Claim
• Claim Construction
• Doctrine of Equivalence
• Front-loaded Proceedings

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