Background

This hearing was a result of an infringement case being filed shortly after the court opened on 01 June 2023. The hearing was held on 16 May 2024 and the judgment issued on 03 July 2024. It is encouraging that the UPC has almost managed to keep to its aim of issuing a final decision within twelve months of the case being brought and within six weeks of the oral hearing.

The contested patent in this case was EP 3375337 in the name of Franz Kaldewei GmbH & Co KG and relating to a “Bathtub Sanitation Device”. Franz Kaldewei, the claimant, accused the defendant, Bette GmbH & Co KG, of infringing claims 1 to 3 of the patent in a number of contracting member states where the patent was in force: Austria, Belgium, Denmark, France, Italy, Luxembourg and the Netherlands. Bette in return challenged the validity of the patent in a counterclaim.

Franz Kaldewei opposed the grounds for invalidity and filed an auxiliary request with claim 1 amended to include the features of granted claims 2 and 3. Bette also opposed the validity of the auxiliary request and furthermore alleged that it was entitled to a right of prior use due to ownership of the invention before the priority date of the patent. It was decided on 01 December 2023 that the infringement claim and the counterclaim should be heard jointly.

Outcome

Claim 1 of the patent as granted was found to be new but not inventive and therefore invalid. The auxiliary request was found to be valid. When assessing the validity of the patent and construing the scope of the claims the court repeatedly referred to the description of the patent, and also adopted an approach similar to the European Patent Office’s (EPO) problem-and-solution approach for assessing inventive step.

Bette did not dispute that its products infringed the patent or the claims of the auxiliary request. The court decided that Bette could not invoke a prior user right as it was only able to provide evidence regarding the ownership of the invention and its use within Germany, but not in the contracting member states at issue in the case. The Unified Patent Court Agreement (UPCA) sets out that a prior user right can only be enjoyed in the state in which the prior use occurred.

A permanent injunction was issued to prevent Bette from carrying out any further infringing acts in respect of the patent and to permanently remove the infringing products from the channels of distribution. Bette was ordered to inform Franz Kaldewei of the extent to which it had committed the infringing acts since the grant date of the patent, including further information about the quantities of products and their origins and channels of distribution, the identity of the persons involved, the advertising carried out, and the costs and profits achieved. Bette was required to take these steps within 30 days after service of the communication from the claimant indicating which part of the orders it intended to enforce.

Bette was ordered to pay Franz Kaldewei EUR 10,000 as provisional damages, with more to be ordered should the infringing acts continue. The court then ruled that the costs of the counterclaim should be borne 50% by Franz Kaldewei and 50% by Bette, and that for the costs of the action Franz Kaldewei shall bear 15% of and Bette shall bear 85%. The upper limit of the recoverable representation costs was set at EUR 47,600 for Franz Kaldewei and EUR 8,400 for Bette. For the counterclaim, the upper limit was set at EUR 28,000 for each party.

Key lessons

• The UPC appears keen to provide fast relief to parties. It will be interesting to see if this can be maintained as the caseload of the UPC increases.
• Based on this case, it appears the UPC is taking an EPO based approach to assessing validity, and is continuing to take the approach of using the description to interpret claims. This is discussed further in our article: UPC v EPO: a comparison of claim construction approaches, published 06 June 2024.
• When alleging a prior use it is necessary to provide detailed evidence of prior use in each of the states in which the patent is in force in order to avoid an injunction being granted in each of those states.

It seems likely that the defendant in this case will appeal, which will provide further opportunity to assess how the court is applying the law.

UPC issues second decision on the merits: DexCom Inc v Abbott Laboratories and nine other Abbott entities

A further decision was handed down by the UPC on 04 July 2024, this time by the Local Division in Paris. This was issued as a result of proceedings brought on 07 July 2023, thus providing further evidence of the UPC wishing to provide a judgment within a year of commencement of proceedings.

This decision will be reported on further in more detail at a later date. However, in brief, the case was brought by DexCom alleging that Abbot was infringing patent EP 3435866. Abbott counterclaimed for revocation. The court found the patent to be invalid and therefore did not rule on infringement.

Case details at a glance

Decision level: Düsseldorf Local Division
Case: UPC_CFI_7/2023
Parties: Franz Kaldewei GmbH & Co KG v Bette GmbH & Co KG
Date: 03 July 2024
Decision: dycip.com/franz-kaldewei-bette-03-jul-2024

Decision level: Paris local division
Case: UPC_CFI_230/2023
Parties: DexCom Inc v Abbott Laboratories et al
Date: 04 July 2024
Decision: dycip.com/dexcom-abbott-04-jul-2024