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UPC – First decision on the merits / Franz Kaldewei v. Bette – summary and analysis

04 Jul 2024

Graham​​​​ Burnett-Hall


Franz Kaldewei GmbH & Co. KG v. Bette GmbH & Co. KG, UPC Court of First Instance, Dusseldorf Local Division, 3 July 2024, Reference numbers: UPC_CFI_7/2023

This Decision will go down in history as the first decision of the UPC Court of First Instance on the merits ordering a permanent injunction. That it has been issued only one year after the UPC commenced full operation is a very positive indication that the UPC will provide a relatively fast means of resolving patent disputes in Europe, when compared to proceedings in the national courts.

In summary, the Claimant’s patent, in amended form, was held to be valid and infringed. The Court granted relief in the form of an injunction covering seven countries (Austria, Belgium, Denmark, France, Italy, Luxembourg and the Netherlands) and orders requiring the Defendant to disclose the extent of its infringing acts, recall the infringing products, and remove infringing products from distribution channels. These remedies are not immediately enforceable – first the Claimant will need to notify the Court and file certified translations of the orders.

The Defendant was also ordered to make a payment in respect of costs and to pay provisional damages.

The key issues
The alleged infringement concerned sanitary tray devices. The Claimant (Kaldewei) alleged both direct and indirect infringement (by different products) of claims 1 to 3 of the patent in suit (EP 3 375 337 B1) in Austria, Belgium, Denmark, France, the United Kingdom and the USA, Italy, Luxembourg and the Netherlands.

The Defendant (Bette) filed a counterclaim seeking revocation of the Patent. Claim 1 and the combination of claims 1, 2 and 3 were neither novel nor inventive in the light of DE 197 10 945 C1 (“DE 945”). The Patent also lacked inventive step in view of the combinations of the inventions disclosed by DE 92 08 770 U1 (“KMG 9”) and DE 199 61 255 A1 (“KMG 10”).

Bette also claimed that it was entitled to prior use rights: it claimed it already had possession of the invention in Germany in September 2016 (whereas the claimed priority date of the patent in suit was 13 March 2017). It argued that a prior use right arising in a UPC contracting member state should not apply only in that state pursuant to Art. 28 UPCA.

Kaldewei officially opposed the revocation counterclaim and applied to amend the Patent (in the contracting member states in which infringement was alleged) by combining claims 1 to 3 into a new claim.

The Decision
N.B. This note has been prepared from a machine translation of the German-language judgment and therefore cannot be guaranteed to be totally accurate.

The Court considered, first of all, that the action and counterclaim were admissible. In principle, it was necessary to make a distinction between questions of admissibility and questions of the merits or the action and counterclaim. Only if they were admissible would there need to be examination of the merits.

So far as the correct approach to the interpretation of the Patent was concerned, the Court noted that the UPC Court of Appeal had confirmed that the principles for interpretation of a European patent claim under Art. 69 EPC, together with the Protocol on the Interpretation of Art. 69, applied equally to the assessment of the infringement and legal validity of a European patent (see UPC CoA, GRUR-RS 2024, 2829 – NanoString/10x Genomics (rebuttal proceedings).

A request by Bette, made for the first time at the oral hearing, for an extension of time regarding the deadline for submission of further documents, as fixed by the judge-rapporteur at the interim conference, was dismissed. Bette’s application should have been made no later than the deadline for which an extension was being sought. Secondly, the deadline had been set to enable proper preparation of the oral hearing and it would not be appropriate to extend it.

The Court then considered the interpretation of the Patent, making extensive references to the content of the description and the prior art to which the description referred.

The Court determined that the relevant person skilled in the art was a qualified engineer with five years of experience in the development and manufacture of sanitary products.

DE 197 10 945 C1 (“DE 945”)
This prior art was relied upon by Bette for both novelty and inventive step.

The Court held that claim 1 of the Patent was novel over DE 945. To be novel the technical teaching had to deviate from the prior art in respect of at least one feature. Furthermore, for the assessment of novelty, only that which was directly apparent to the skilled person from the prior publication or prior use was relevant. A finding that the skilled person would obtain only by “further considerations or by consulting other publications or uses” were not prior art. (See UPC_CFI_452/2023, Dusseldorf local division, order dated 9 April 2024.)

All the features of claim 1 save for one – feature 4a – were disclosed by DE 945. However, the skilled person “cannot directly and unambiguously infer” feature 4a from DE945. (This is presumably a reference to the EPO Guidelines for Examination and the requirement when assessing novelty that, “A document takes away the novelty of any claimed subject-matter derivable directly and unambiguously from the document.”)

However, claim 1 could not be considered to be inventive. To be inventive a solution had to extend beyond routine developments by the skilled person in the relevant technical field. An invention would exist if it did not result from the usual approach of the person skilled in the art but required additional creative effort. Feature 4a, which required certain pieces of the product to be formed with rigid plastic foam, would have been a routine consideration for the skilled person.

The Court proceeded to consider the combination of claims 1 to 3, relied upon in the patentee’s auxiliary request. This was held to be both novel and inventive over DE 945.

KMG 9 and KMG 10
The Court further held that the combination of claims 1 to 3 was inventive over the combination of the citations DE 92 08 770 U1 (“KMG 9”) and DE 199 61 255 A1 (“KMG 10”). KMG 9 and KMG 10 were different solutions that each differed in approach from that of the Patent. The combination of KMG 9 and KMG 10 did not disclose all the features of the invention and it had not be shown why the skilled person would combine them.

It was not disputed that the alleged infringement infringed the Patent both in the form of the main request and the auxiliary request.

Furthermore, the prior use defence failed: Art. 28 UPCA provided that, where a right of prior use would have existed in a contracting member state, had a national patent been granted for the relevant invention, that prior use right would also apply in that contracting member state in respect of the European patent under consideration by the UPC. The narrow wording of this provision was clear – a prior use right would have to be claimed in each of the contracting member states in which infringement was alleged. There was no European right of prior use. In the present case, Bette had at best provided information on the use of the invention in Germany but not in the contracting member states in which infringement was alleged to have occurred.

It was also indisputable that Bette had committed acts of infringement under Art. 25(a) UPCA.

So far as indirect infringement was concerned, the was a double territorial requirement: there must be an offer or delivery in the territory and the invention must also be used in the territory. Since in this case the Patent was a European patent without unitary effect, it was questionable whether the offering/delivery could exist in one member state and the use in another, or whether they had to take place in the same member state. However, as infringement already existed on the narrower of these two approaches, it was not necessary to decide this question.

The Court proceeded to consider the remedies sought by Kaldewei and the legal basis for them under the UPCA and Rules of Procedure. (The decision does not refer to the UK or USA – presumably the claimant did not maintain its case for any remedies in respect of those countries, which of course are not UPC contracting member states.) One point worth noting was that the Court considered the provision by Bette of information regarding the extent of the infringing activities, pursuant to Art. 67 UPCA, to be justified, given that the experience of national legal systems was that in a large number of cases the parties will reach a settlement once accounts have been rendered. It would therefore not be advantageous to require proceedings for the assessment of damages to be commenced before the infringer was required to provide such information.

Finally, the Court held that it would not be appropriate to order that any of the remedies should be made subject to the provision of any security by the patentee. Infringement was undisputed and it was unlikely that the Court of Appeal would assess the purely legal question of the scope of the right of prior use differently from the local division. There was accordingly no significant risk of damage within the meaning of Art. 82.2 UPCA that would have required protecting against by the giving of security.

A copy of the decision can be read here.