Grundfos v Hefei Xinhu (UPC_CFI_11/2024)

• Grundfos brought a patent infringement claim against Hefei in the Düsseldorf LD relating to its patent (EP'423) concerning heating circulation pump assembly. Hefei counterclaimed for revocation. Grundfos made a number of auxiliary requests in case the patent as granted was found to be invalid.
• The Düsseldorf LD found Grundfos' patent to be valid. The invention according to claim 1 was found to be clearly and completely disclosed, meeting the requirements of Article 83 EPC.
• Hefei also claimed that the patent lacked novelty and/or inventive step. Hefei sought to introduce new prior art in support of its counterclaim, which was said to amount to an extension of its counterclaim. The court noted that under Rule 263 RoP a party may apply to the court at any point in the proceedings for leave to amend or extend their claim, including a revocation counterclaim. However, the applicant must state the reasons why the amendment or addition was not already included in the original pleadings.
• The court can refuse permission if, taking into account all the circumstances including the frontloaded nature of UPC proceedings, the party requesting the amendment cannot satisfy the court that: a) the amendment count not have been made earlier with due care; and b) the amendment does not unreasonably impede the other party in the conduct of the proceedings.
• Both conditions must be met and the burden of proof lies with the applicant. In this case, Hefei made no such application to the court. It did not provide any reasons why the prior art in question could not have been introduced earlier and it could not be established that Grundfos would not be unduly impeded in its conduct of the proceedings.
• The Düsseldorf LD found that Hefei's products infringed Grundfos' patent; they contained electronic means to switch from internal to external control, which fell within the scope of the patent claims.
• The court ordered a permanent injunction to cease the infringing activities. It also ordered Hefei to provide detailed information and accounting on the infringing products, recall and destroy the infringing products, and pay provisional damages of €64,000 to Grundfos.

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