2025 Week 11
The UPC has already made it clear that you can sue for damages for patent infringement dating back to before the UPC came into force (1 June 2023). This week, in Hurom v NUC Electronics, the UPC Local Division Mannheim grappled with the thorny question: which substantive law should you use to determine infringement at the UPC for actions done before 1 June 2023?
Does it matter? Well, maybe not in some cases. But there could well be circumstances where there would be infringement under the UPC Agreement but not under national law, such as indirect infringement which takes place between different UPC countries.
The facts
EP 2028981 B1 is owned by Korean firm Hurom. Using a rather long main claim, the patent defines a juice extractor of the type that you might use to get juice out of difficult fruit and veg such as apple, carrot, cucumber and the like.
NUC Electronics is a manufacturer also based in Korea. They make products under the Kuvings brand for sale in various European countries, such as the AUTO10, which Hurom alleged infringed the patent.
Hurom claimed damages starting from different dates in different countries: from 2 April 2019 in France, from 14 April 2015 in Germany, and from 23 September 2015 in various other countries.
The patent was filed in 2007, published by the EPO in 2009 and granted in September 2015. At least with respect to Germany, it seems that Hurom were also claiming damages for provisional protection under Article 67 EPC.
Claim interpretation and assessment of infringement
I was tempted to haul you through the court’s interpretation of claim 1 in the light of the description, the features of the alleged infringement and the way the court dealt with the arguments from both sides. But there’s too much detail – sorry. Suffice to say that the court did all of this carefully and reached the apparently reasonable conclusion that claim 1 was infringed.
The defendant did not raise a counterclaim for revocation of the patent. Maybe there was no useful available prior art. But it could possibly have helped to shape the claim interpretation. And it would have made for great puns to have a genuine squeeze argument in a case about a juicer.
Which substantive law to use?
The court went into great detail about the legal arguments surrounding which substantive law to apply for infringement before 1 June 2023. They came up with the following useful guidance:
… with regard to the determination whether substantive law as laid down in the UPCA or substantive national laws of the UPCA member states applies to acts allegedly infringing traditional European bundle patents, the following applies:
a) to acts committed after the entry into force of the UPCA, the substantive law as laid down in the UPCA applies;
b) to acts committed before the entry into force of the UPCA, the substantive national laws apply;
c) to ongoing acts started before the entry into force of the UPCA and continued after the entry into force on 1 June 2023, the substantive law as laid down in the UPCA applies.
So that’s all fine. As mentioned above, there may be circumstances where it really does matter. However, in this case, the court did not apply a different substantive law to the assessment of infringement for different countries. They interpreted the claims once and compared the alleged infringement to the claims as interpreted. There was nothing to suggest that the same product would not have infringed the patent in the different UPC countries before 1 June 2023. Perhaps if they had needed to apply a doctrine of equivalents, things would have got properly knotty.
Choose your remedies – we have a wide selection
Having decided that there was infringement, the court moved on to considering which remedies were available to Hurom. The court had made it clear that damages would be available for infringements taking place both pre- and post-1 June 2023.
The main remedies are of course an injunction (Article 63 UPCA) and damages (Article 68 UPCA). Costs are also recoverable (Article 69 UPCA).
Hurom requested these, but also asked for everything else on the menu. At the UPC, there are loads more things that the successful patentee can seek.
Under Article 64 UPCA:
(a) a declaration of infringement;
(b) recalling the products from the channels of commerce;
(c) depriving the product of its infringing property;
(d) definitively removing the products from the channels of commerce; or
(e) the destruction of the products and/or of the materials and implements concerned.
Under Article 67 UPCA, the court can order the infringer to provide the patentee with information on:
(a) the origin and distribution channels of the infringing products or processes;
(b) the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products; and
(c) the identity of any third person involved in the production or distribution of the infringing products or in the use of the infringing process.
Under Article 80 UPCA, the court can order the infringer to publish the court’s decision about infringement.
The main point of the determination of damages under Article 68 UPCA is to restore the patentee to its position as if there had been no infringement. Damages are not intended to be punitive. However, based on the EU Enforcement Directive, the court should also take account of other factors such as the moral prejudice caused to the injured party by the infringement.
Hurom requested essentially all of these, including damages under the moral prejudice heading. The court stepped through each one and explained which side needed to make a case for or against each remedy.
- Injunction – granted. This will usually be granted unless the defendant is able to show that it is disproportionate.
- Normal damages – these were awarded in principle, but the actual level of damages was reserved for separate proceedings after this decision on the merits. Those separate proceedings will need to consider issues relating to limitation periods and provisional protection. The court noted that it is not a requirement for the defendant to have been warned of infringement. The court considered that the defendant is obliged to monitor the IP rights of its competitors so as not to infringe upon them.
- Damages in view of moral prejudice – not awarded. The patentee would have to show special circumstances why such compensation would be justified.
- Interim award of damages – not awarded. It is for the patentee to show why this would be warranted.
- Information (under Article 67 UPCA) – the requested information was ordered to be provided. This is normal, but here there were some special arrangements made to protect the relationship of the defendant with non-commercial customers.
- Request for destruction – this was granted. It is for the defendant to show why this would be disproportionate. Environmental considerations do not by themselves justify dismissing this remedy.
- Recall of infringing products – this was granted but limited to commercial customers only.
- Removal from channels of commerce – this was granted.
- Publication of the decision by the defendant – this was not granted. The court said that this would need special circumstances, such as the infringement having ramifications which cannot be undone or sufficiently compensated otherwise.
Key lessons
The case makes it clear that you will only get, at the maximum, what you ask for. Here, Hurom requested every available remedy in the UPC Agreement and got most of them. They were also awarded most of their costs.
From the defendant’s side, the omission of a counterclaim for revocation is noticeable. This would have added to the costs of the case, but it seems at least possible that this could have squeezed the interpretation of the claims to make the arguments for infringement more difficult for the patentee.
