Tiroler v SSAB (UPC_CFI_324/2024 & UPC_CFI_487/2024)

• This decision concerned the alleged infringement of Tiroler's patent relating to pile driving tips by the manufacture and distribution of SSAB's attacked products. SSAB counterclaimed for revocation.
• Tiroler's patent was upheld in an amended (more limited) form and SSAB's challenged embodiments were found to infringe this more limited version of the patent in suit.
• SSAB tried to defend itself against the infringement claim by asserting that it was impossible to use the teaching of the patent using the challenged embodiments because the attacked tips fitted to drive piles that were outside the scope of the patent. The Munich LD held that if a defendant claims that patent infringement is impossible due to circumstances outside of the patent claim, the defendant bears the burden of proof under Article 54 UPCA. The patentee/infringement claimant is not required to make submissions on the design of components outside of the patent claim and therefore for an infringement claim it is sufficient that it demonstrates that all of the claim features are infringed.
• Ultimately, the court was unconvinced by SSAB's arguments, finding that it was irrelevant that, according to the SSAB, neither the piles marketed by them or other piles available on the market were sized in such a way to achieve a certain function when attached to the attacked tips. Here, the decisive factor for the question of infringement was not whether the drive piles manufactured by the defendants or others were dimensioned in a certain way; that was neither the subject of the patent nor  the subject of Tiroler's application to prohibit SSAB's behaviour.
• SSAB also tried to argue that the injunction granted by the Munich LD should be territorially limited to Germany, Austria and Italy as it said these were the only locations that the attacked embodiments were offered. The court said that this approach was misguided as, under Article 34 UPCA, decisions shall apply to the territory of the UPCA contracting member states for which the EP has effect. The court also ordered recall and destruction of the infringing products and damages, and permitted Tiroler to publish the decision in selected publications.

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