Key takeaways
An independent process claim and the corresponding description can only be relevant when determining the scope of protection of an independent product claim if the patent specification indicates that it also describes characteristics of the claimed product (headnote 1)
Principle of Irrelevance (mn. 145): The court establishes that since the patent protects a product via a product claim, the method used to manufacture that product is, in principle, irrelevant for determining infringement. The advantage of a simplified manufacturing process described in the patent is achieved by the mere possibility of making the product that way, not by the actual method an infringer chooses to use.
The Exception and Its Inapplicability (mn. 144, 146): The court clarifies the narrow exception to this rule: a manufacturing process can only limit a product claim if the patent specification itself indicates that the process imparts specific, tangible properties to the final product or is the only way to achieve the claimed properties. In this case, the court found no such link. It reasoned that the claimed product structure enables the simplified process but does not require it. Therefore, an infringer ist still within the scope of the product claim if using a different, more complex manufacturing method. The patent’s description of a simplified process is treated as an illustration of a benefit, not as a limitation on the scope of the protected product itself.
An injunction covering the making of a product may also be issued if the infringing product has so far been manufactured by a third party outside the contracting member states (headnote 2)
The court explains that including the act of “making” in the injunction is necessary for the effective enforcement of the patent holder’s rights. In the present case, the product is currently manufactured by a third party in China. Further, the court held that prohibiting the respondents from manufacturing the product within the relevant UPC territories causes them no disadvantage, as they are not legally entitled to manufacture it there anyway. Therefore, the order serves to proactively protect the patentee’s exclusive rights within the court’s jurisdiction without unfairly prejudicing the respondents.
Division
LD Düsseldorf
UPC number
UPC_CFI_712/2025
Type of proceedings
Proceedings for provisional measures (inter partes)
Parties
Applicants: F. Hoffmann-La Roche AG; Roche Diabetes Care GmbH
Respondents: A.Menarini Diagnostics S.r.l.; Berlin-Chemie AG (A.Menarini Diagnostics Deutschland); A.Menarini Diagnostics France SASU
Patent(s)
EP 1 962 668 B1
Jurisdictions
UPC; Germany, France, Italy (territorial scope of the order)
Body of legislation / Rules
Art. 62 UPCA, Art. 25(a) UPCA, Art. 69 EPC and Protocol, R. 211.2 RoP, R. 209.2 RoP
