Orbisk B.V. v. Winnow Solutions Limited, UPC Local Division The Hague, 13 August 2025, Case Nos. UPC_CFI_327/2024, UPC_CFI_557/2024
Headnotes:
“If the patent is considered valid only in a form which is not claimed to be infringed, the patentee shall bear the costs of the counterclaim for revocation. However, if the counter claimant seeks revocation of claims not asserted against it, and those claims are upheld, a compensation of costs is in order, depending on the circumstances.”
Facts
Winnow brought infringement proceedings against Orbisk. Orbisk denied infringement and filed a counterclaim for revocation.
Claim interpretation
The Court referred to the Court of Appeal decision in Nanostring v. 10x Genomics, as well as to decision G 1/24 and held that the claim element “cleaning” in feature 1.5 is “to be interpreted broadly and encompasses any type of data cleaning relating to weights and\or categorisations.”
Inventive step
The Court set out its approach to inventive step, citing Art. 56 EPC and confirming the application of the problem-solution approach (“PSA”), as also used by the EPO and the Munich Local Division.
“As a tool to assess whether a claimed invention was obvious to a Skilled Person, the Court will follow the problem and solution approach (“PSA”) as suggested by the parties and as also used by the EPO and the Munich Local Division. Given that parties followed the PSA, the Court need not decide if the PSA is the (only) approach to be followed. Any approach in fact would render the same result in this case.”
Outcome
On the basis of the broad interpretation of “cleaning”, the Court found the patent invalid. The first and second auxiliary requests were also found invalid. Winnow had not claimed infringement on the basis of the third auxiliary request. The infringement claim therefore was dismissed.
Costs
The parties had reached an agreement on costs but left it to the Court to decide the split in case of partial victory. The Court decided in favour of Orbisk: 100% for infringement and 85% for the revocation.
“The Court considers that the economic focus of the dispute was on the Orbi, while the patent is upheld in such a way as to take the Orbi outside the scope of protection. Furthermore, the threat of infringement was the primary reason for initiating the counterclaim. Hence the Court considers that Winnow shall compensate to Orbisk the costs for counterclaim for revocation in full. However, since Orbisk pursued the revocation counterclaim also against Conditional Request 3, which was upheld but not asserted against it, a deduction of cost of 15% is in order.”
The Decision can be read here.
