HL Display v Black Sheep Retail Products (UPC_CFI_386/2024 & UPC_CFI_610/2024)
Decision date:
10 October 2025
Osborne Clarke summary
- This judgment concerned an infringement claim brought by HL Display against Black Sheep (a Dutch company) in relation to a system for securing shelf accessories to a shelf. HL Display's patent is in force in a number of states including UPC contracting member states (such as the Netherlands, France and Germany), non-UPC EU Member States (such as Ireland and Poland), non-EU Lugano contracting states (such as Norway and Switzerland), and non-UPC, non-EU states (such as the UK and Liechtenstein).
- Black Sheep denied infringement and claimed that the patent was invalid on grounds of added matter and lack of inventive step. Black Sheep clarified that its counterclaim for revocation applied to the designations from UPC contracting member states only and it was to be considered a defence in relation to non-UPC contracting member state designations. In addition, it confirmed to the court that no revocation claims had been brought in any of the non-UPC countries.
- On the basis of the CJEU's decision in BSH v Electrolux, the Hague LD assumed jurisdiction for hearing the infringement claims relating all of the patent's designations. As Black Sheep was domiciled in the Netherlands, it did not dispute the court's international jurisdiction, including its long-arm jurisdiction, or the LD's internal competence to hear the case.
- The Hague LD found that it was "clear" that the patent was valid. In considering added matter, the court applied the standard recently set out by the Court of Appeal in expert v Seoul Viosys. On this basis, the court concluded that certain allegedly omitted features of claim 1 did not amount to added matter as there was no inextricable link between the allegedly omitted features and the other features of the claim. The addition of a feature to claim 1 that was included in claim 2 of the original application was also found not have amounted to added matter.
- In considering inventive step, the court applied the problem-solution approach because this is what had been applied by the parties. This argument also failed. The court concluded that Black Sheep had ''not showed any hint in the prior art given to the skilled person towards the claimed solution and is not able to explain why the skilled person would make [the modification claimed to be obvious]".
- Accordingly, the Hague LD dismissed Black Sheep's counterclaim for revocation with respect to designations in force in UPC contracting member states. For the designations in force in non-UPC, EU Member States and Lugano signatories, in accordance with BSH v Electrolux, the court found that there was no serious, non-negligible chance that the patent would be revoked by the competent national authorities and therefore it could proceed to determine the infringement claims. Again in line with BSH v Electrolux, for non-UPC, non-EU states the court made an inter partes finding that the patent was valid.
- The court also found the patent to be infringed, both directly and indirectly. Black Sheep had argued that HL Display had not sufficiently demonstrated that it had performed or was performing infringing acts. The court noted that before it considers the question of evidence, a statement of fact should first be sufficiently denied. It concluded that Black Sheep had not done this. In fact, it held Black Sheep to have conceded in its statement of defence that the infringing products had been "on the market within the territory for which [that patent] is valid since at least 2019". As a result of this concession, the court left it undecided whether the products were also offered on its website.
- In light of these findings, the Hague LD granted an injunction covering all states in which the patent was in force, which inevitably covered non-UPC EU and non-EU states.
- For more information on the jurisdictional aspects of this case, see our Insight here.
Issue
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