Bellissa v Windhager (UPC_CFI_338/2024)

• Bellissa brought an infringement claim against Windhager and two of its managing directors, alleging direct, or in the alternative, indirect literal infringement of its patent concerning a bed edging with a lockable sheet-metal strip. The claim concerned acts in Austria, Germany and Luxembourg. Windhager counterclaimed for revocation for lack of novelty and lack of inventive step.
• In determining validity, the Mannheim LD found the invention to be novel and inventive based on the prior art. On inventive step, the court noted that it is not necessary to select a single starting point, and it is conceivable that examination of whether the subject matter of a patent involves an inventive step may involve starting from different points. However, the assessment does require at least one starting point to be identified to determine whether the invention would have presented itself in an obvious way to the skilled person.
• There must be a justification why the skilled person would consider the chosen part of the prior art as the starting point. In general, a second step requires a motivation or suggestion to proceed from the starting point towards the invention. Motivation may not be required if the use of a particular means was part of the skilled person's common general knowledge, the means at issue appear objectively expedient in the context and there are no particular circumstances that would render the use of the means technically impossible, associated with difficulties or otherwise inappropriate.
• Windhager did not state which starting point it chose for the assessment and did not demonstrate why the skilled person would be motivated to arrive at the subject matter of the patent. The court also held that it was not sufficient to demonstrate obviousness by proving the features of the claim individually in separate prior art documents without showing why the skilled person would be motivated to combine the documents in a way that corresponded to the subject matter of the patent in suit or why no specific motivation was necessary.
• In assessing infringement, the court found that at least two components of the attacked embodiment, assembled for their intended purpose, realised the features of claim 1 of the patent in suit. These components were advertised for sale on Windhager's website. The court noted it was irrelevant that the components were sold separately: the offering and sale of all components of an infringing product amounts to direct infringement under Article 25(a) UPCA, particularly as the website advertised that the separate components were easy to assemble.
• The Mannheim LD also considered the actions of Windhager's managing directors. Under the UPCA, holding the position of manging director is not automatically sufficient to prove liability in patent infringement. No submissions were made as to how the managing directors were involved in the infringement. The court therefore concluded it had not been established that the individuals were responsible for the infringing acts of Windhager. It was also left open whether the involvement of a managing director can be presumed in certain circumstances because no relevant circumstances were alleged or were otherwise apparent.
• Against Windhager, the court ordered a final injunction, recall, removal from distribution channels and destruction of the infringing products, the provision of information relating to the infringement, and a declaration of liability for damages. The court threatened Windhager with a fine of up to €250,000 for each case of infringement of the orders and measures ordered by the court.
• The infringement claims against the managing directors and Windhager's counterclaim for revocation were dismissed.

This analysis is based on a machine translation of a decision not available in English.