Yellow Sphere & Erwin Hartwich v Alexander Christ & Knaus Tabbert (UPC_CFI_50/2024)

• The claimants (Yellow Sphere and Hartwich) brought an infringement claim against the defendants in relation to their product-by-process patent. This patent covered a vehicle frame with one part made of foam resin, as well as a manufacturing process for it. The defendants counterclaimed for revocation, claiming it lacked reproducibility, novelty and inventive step.
• The Düsseldorf LD rejected the revocation claim and found that the defendants had infringed the patent.
• In relation to the revocation claim the court found that, contrary to the defendants' arguments, with product-by-process claims the invention usually did not consist of the process as such, but in the technical properties conferred on the product by the process. Therefore, in principle, the process served only to define the product. The decisive factor was how the skilled person understood the information on the method of manufacture and what conclusions they drew from this for the nature of the product. If the manufacturing process lead to properties in the product that could only be achieved by that process and those properties can be determined in the finished product, the patent would be limited to products that could be produced that way.
• The Düsseldorf LD granted an injunction, ordered the defendants to provide the claimants with information about the acts of infringement (including distribution channels and quantities manufactured), recall and remove the infringing products from distribution channels, and destroy the products, along with provisional damages.
• Separately, the court also found that the UPC has jurisdiction over financial compensation claims related to the use of published European Patent applications. As this compensation was not provided for in the UPCA, the court applied Article 67 EPC. However, the claimant seeking such compensation had to set out the requirements for each country in which they were seeking compensation. Here, the claimants complied with this requirement for Germany and therefore could claim appropriate compensation under the German rules from a person who used the subject matter of the application even though they knew or should have known that the invention was the subject of a European Patent application. The claimants did not meet this requirement for the other countries at issue and therefore the claim with respect to those countries was dismissed.

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