Permanent patent injunction issued in UPC first

Patent litigation specialist Maud van Imhoff of Pinsent Masons in Amsterdam said the ruling by the local division of the UPC in Dusseldorf provides some important lessons for businesses in relation to litigating before the UPC, which is a dedicated judicial system for litigating new unitary patents and existing European patents that have not been specifically opted-out of the UPC’s jurisdiction.

The case before the Dusseldorf court involved a dispute between Franz Kaldewei GmbH & Co KH (Kaldewei), which holds a European patent, which has not been opted out of the UPC, for a sanitation bath tub device, and Bette GmbH & Co KG (Bette), which markets shower trays.

On 1 June 2023 – the first day that the UPC became operational – Kaldewei sued Bette the local division of the UPC in Dusseldorf for direct and indirect infringement of its patent in Austria, Belgium, Denmark, France, Italy, Luxembourg, and the Netherlands. It claimed infringement specifically in relation to two different patent claims, claim one and claim three.

Kaldewei also asked the court for provision of information; to order the recall and permanent removing of the goods from distribution channels; as well as €100,000 in provisional damages and for compensation for any further damages it has suffered or will suffer.

Bette counterclaimed for the revocation of Kaldewei’s patent, arguing that it was not valid. It claimed this was because the invention lacked novelty and because there was a lack of inventive step.

Van Imhoff said that, in considering the case, the Dusseldorf court confirmed established principles governing how a European patent claim should be interpreted and further adhered, in this respect, to guidance that the UPC Court of Appeal set out in an earlier ruling pertaining to the award of a preliminary injunction.

While the Dusseldorf court confirmed that the burden of proof for demonstrating invalidity relating to an attack on the novelty and/or inventive step of a patent in dispute lies with the defendant, in this case Bette.

It held that claim one of the patent as granted lacked an inventive step, but it allowed an auxiliary request which combined claims one and three, which the court held rendered the patent, in amended form, valid. It went on to determine that Bette's shower trays directly and indirectly infringe the amended claims.

Bette raised a defence against infringement based on rights of prior use in a UPC contracting member state. That defence is provided for in Article 28 of the UPC Agreement – the international treaty EU countries must ratify to participate in the UPC system.

Van Imhoff said: “The court interpreted this provision narrowly and found that the right of continued prior use exists only in respect of the specific contracting member state in which the conditions for the right of prior use are given under national law. This means that a defendant would have to prove a right of prior use for each of the contracting member states of interest. As Bette’s evidence in respect of prior use only related to Germany, and not the countries in which infringement was alleged, these arguments were dismissed.”

In its ruling, in considering whether Kaldewei’s amended patent claims passed the novelty test, the Dusseldorf court assessed the amended claims against the European Patent Office’s (EPO’s) stated ‘gold standard’ for disclosure, in accordance with which amendments to patent claims can “only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed”.

The court further clarified that, in relation to the question of whether an invention has taken an inventive step, a solution has to extend beyond routine developments by the ordinary skilled person in the relevant technical field in order for it to be classed as inventive.

The court found that the combination of claims one and three, as per Kaldewei’s auxiliary request, was both novel and inventive.  It granted relief in the form of a permanent injunction covering Austria, Belgium, Denmark, France, Italy, Luxembourg, the Netherlands.

The court also ordered Bette to disclose the extent of its infringing acts; recall the infringing products; and remove infringing products from distribution channels.

Van Imhoff said: “Bette argued that there was no basis for a permanent injunction because they had stopped supplying the infringing products. The court suggested that while this may be correct in principle, in this case Bette had not proven this, particularly on the basis that Kaldewei had shown that in at least one of the countries in issue there had been further acts of use. There is therefore a rebuttable presumption that the defendant is continuing its activities in the other states that were previously part subject to its commercialisation. Businesses acting in multiple national markets should be aware of the reach of the UPC and act quick when cease and desist actions are started.”

Bette was ordered to make a payment in respect of costs and pay provisional damages of €10,000. Van Imhoff said the ruling is likely to be appealed to the UPC Court of Appeal.