Winnow v Orbisk (UPC_CFI_327/2024 & UPC_CFI_557/2024)
Decision date:
13 August 2025
Osborne Clarke summary
- Winnow filed infringement proceedings against Orbisk in relation to its patent for a system and method for monitoring food waste. Orbisk denied infringement and filed a counterclaim for revocation.
- The Hague LD applied the Court of Appeal's decision in 10x Genomics, and also cited the EPO's Enlarged Board of Appeal's decision G 1/24 when considering the principles relating to claim construction. The court needed to interpret the meaning of "cleaning" in one of the claim features, over which the parties disagreed. It held that it was used in a broad and generic way and was not limited to any of the examples or techniques provided later in the description. As such, it was "to be interpreted broadly and encompasse[d] any type of data cleaning relating to weights and/or categorisations".
- In considering validity, the court applied the problem-solution approach to assess inventive step, which had been suggested by the parties and as used by the EPO and the Munich LD previously. Given that the parties had followed the problem-solution approach, the Hague LD noted that it did not need to decide whether the problem-solution approach is the (only) approach to be followed, noting that "[a]ny approach would render the same result in this case".
- Due to the court's broad interpretation of the term "cleaning", it found the patent invalid. The first and second auxiliary requests were also invalid for lack of inventive step, and added matter and insufficient disclosure, respectively.. The Hague LD did, however, uphold the patent on the basis of the third auxiliary request. Winnow had not made an infringement claim on the basis of the third request and, as such, Winnow's infringement claim was unsuccessful and therefore dismissed.
- Given the outcome, the court took into account each party's partial victory in considering costs, stating:
- “[t]he Court considers that the economic focus of the dispute was on the Orbi [the challenged embodiment], while the patent is upheld in such a way as to take the Orbi outside the scope of protection. Furthermore, the threat of infringement was the primary reason for initiating the counterclaim. Hence the Court considers that Winnow shall compensate to Orbisk the costs for counterclaim for revocation in full. However, since Orbisk pursued the revocation counterclaim also against Conditional Request 3, which was upheld but not asserted against it, a deduction of cost of 15% is in order.”
Issue
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