2025 Week 9
There are three cases in the mix for discussion this week. First we look at an infringement and revocation decision on the merits that has useful lessons for both sides on stress testing validity. Then we check out a procedural order that shows the benefits of intra-team communication – and what happens when that is missing. Finally we revisit avalanche rescue devices to see the extent to which the UPC Court of Appeal reasoning in a preliminary injunction application directs the Local Division’s decision in the subsequent main action for infringement and validity.
Rematec v Europe Forestry – Patent fed into wood chipper
This is a great case to read – the facts are simple and the outcome is easy to understand. There are also some useful lessons for all sides.
Rematec had European patent EP 2548648 B1 for a kind of extreme wood chipper. In the prior art, you gravity feed larger bits of wood into a machine from the top, these get smashed up by rotating hammers and the smaller chips of wood come out of the base of the machine. The invention is the idea to place the inlet not at the top but closer to the base so that the bits of wood travel further inside the machine, past the top, grinding them more.
The prosecution history in the EPO file is great – the application was filed, the EPO carried out a search and found only one prior art document that was not already cited in the application. The application was allowed without any objections at all and with no amendments.
Looking at the alleged infringement, this was very close to claim 1, the only argument being about a feature at the outlet that was specifically excluded from claim 1. Europe Forestry defended against the infringement action primarily by bringing a counterclaim for revocation. This relied on 8 new prior art references (in addition to the 3 references cited in the EPO search report). The defendant requested the revocation of the patent not only in UPC countries but mysteriously also in various non-UPC countries, including Spain, Switzerland, UK and Turkey. This was only sorted out at the oral hearing, with the defendant agreeing to withdraw this part of the revocation counterclaim.
Cutting to the chase, despite the patentee filing 9 different auxiliary requests with various amendments, the UPC Local Division Mannheim decided that the patent was invalid based on the prior art. While it is tempting to review the detailed analysis of the court’s claim interpretation and the disclosure of the prior art, the more interesting observation is that the outcome is not at all a surprise, once you have seen the prior art.
For me, the key lesson to learn here is from the patentee’s perspective. The patent looked “strong”, in the sense that the EPO search and examination found no problems with it. But a strong patent is one that has survived more rigorous scrutiny. It is particularly interesting that all of the new prior art cited by the defendant was patent literature. Admittedly with the amazing benefit of hindsight, it would have been a good idea for the patentee to have carried out further searching on their own patent before asserting it. Note that there is no discovery and no duty of disclosure requirement at the UPC, so the results of such searching need not be disclosed in the UPC proceedings.
There is also a lesson for defendants. Although they were 100% successful in having the patent revoked, the court did not award them 100% of the costs of the proceedings. Due to the confusion over the countries attacked, the court awarded them only 75% of the costs and ordered them to pay 25%. Although this may seem harsh, the court is sending a message to parties not to waste their time.
Esko-Graphics v XSYS – Get everyone on the same page
This is an ongoing infringement action at the UPC Local Division Munich based on EP 3742231 B1 with a counterclaim for revocation. There is also a pending EPO opposition, in which the opponent is the UPC defendant.
The patentee alleges infringement in Belgium, Germany, France and Italy. Infringement in the Netherlands was not asserted because at the time that the infringement action was started (27 August 2024), the patent had lapsed there due to non-payment of a renewal fee. However, on 18 October 2024, the patent was successfully restored, and it was clear that the patentee knew this by 7 November 2024.
The counterclaim for revocation sought to revoke the patent in all relevant countries, including the Netherlands.
On 17 January 2025, the patentee requested the addition of infringement in the Netherlands to their case. The court said no. While it is possible for a party to request permission to amend their case in this way, it must be done as quickly as possible. The court decided that there was too long a delay between the claimant being aware of the restoration of the patent in the Netherlands and the application to amend the case.
Again, with hindsight, there are lessons here, this time about communication between different parts of the patentee’s team. Had the UPC team understood the intention to attempt to restore the patent in the Netherlands, the infringement action could have included the Netherlands – this perhaps being presented as conditional on the restoration succeeding.
Ortovox v Mammut – Local Division agrees with itself via the Court of Appeal
In UPC Weekly 2024 week 39 we reviewed the UPC Court of Appeal decision to affirm a preliminary injunction based on Ortovox’s EP 3466498 B1 for avalanche rescue devices. We promised to report again on the main infringement and revocation action. So here we are.
The UPC Court of Appeal had set out a detailed consideration of infringement and validity, but strictly speaking that was in the context of summary proceedings, not binding on the subsequent main action for infringement and validity in the UPC Local Division Düsseldorf. For example, with new evidence and perhaps with new arguments in play, it may have been possible for the Local Division to reach some different conclusions. However, in this case, the Local Division interpreted the claims in the same way and the outcome again is that the patent is infringed and valid.
Inventive step was considered on the basis of a structure that is now familiar from several decisions. This is based on considering the underlying problem solved by the invention (assessed if possible based on the discussion in the description of the patent) and identifying a suitable starting point in the prior art for the skilled person. Reasons must be provided as to why a particular starting point is realistic, but in principle there may be several different suitable starting points in the prior art. A claimed solution is obvious if the skilled person would have been motivated (i.e. would have had an incentive) to consider the claimed solution and use it as a next step in the development of the prior art.
One point to bear in mind is that the Court of Appeal had agreed with the Local Division in the preliminary injunction application, so here it is somewhat unsurprising that the Local Division agreed in turn with the Court of Appeal’s position on infringement and validity.
Mammut had tried to avoid infringement by deactivating the relevant functionality of the device. This could be switched back on using an app, but, based on geolocation, only when outside the jurisdictions of interest (Germany and Austria for the UPC). However, once switched on by the user outside the jurisdiction, the device could be transported and used with full functionality anywhere. The court considered that Mammut’s marketing materials emphasised the relevant functionality (albeit with a caveat that the functionality was not available in Germany and Austria). The court decided that there was still a risk of infringement inside the UPC jurisdiction – the fact that the customer could relatively easily modify the device for infringement in Germany and Austria was a problem for Mammut.
The outcome was that a final injunction was awarded, along with recall, delivery up and destruction, and an award of costs against Mammut.
