Key takeaways
Court adopts functional claim construction, rejecting narrow interpretations (Art. 69 EPC)
The court found that a “switchable device” is not limited to mechanical optics but includes electronic controls. “Coupling” does not require free-space propagation, and a “different second laser beam” does not necessitate a separate laser source or different wavelength. This functional approach was decisive for finding infringement.
Inventive step requires a realistic starting point and clear motivation in the prior art (Art. 56 EPC)
Applying the UPC Court of Appeal’s framework, the court dismissed prior art as non-realistic starting points if from a different technical field. For closer prior art, it found no motivation for the skilled person to modify it towards the claimed invention, as it taught away from the inventive concept.
Corrective measures like recall and destruction are unavailable for indirect infringement (Art. 64 UPCA)
While an injunction was granted for both direct (Art. 25 UPCA) and indirect infringement (Art. 26 UPCA), the court held that remedies like recall, removal from trade, and destruction are reserved for products that are the “subject-matter of the patent” and thus directly infringe.
Provisional awards can cover both test purchase costs and legal fees (R. 119, R. 150.2 RoP)
The court awarded the claimant a sum for provisional damages under R. 119 RoP to cover the cost of acquiring an infringing sample. It separately awarded a sum for provisional reimbursement of legal costs under R. 150.2 RoP.
The UPC enforces strict procedural deadlines for submissions and amendments (R. 30.2, R. 36 RoP)
The court demonstrated firm case management by rejecting the claimant’s late-filed auxiliary requests to amend the patent and excluding certain late submissions from the proceedings, underscoring the importance of adhering to the procedural calendar.
Penalty payments are set as minimums to ensure flexibility in enforcement (Art. 63, 82 UPCA)
The court ordered minimum penalty payments for future violations (€100,000 per device for injunction breach; €5,000 per day for other breaches). This approach provides the court with flexibility to set an appropriate final penalty based on the circumstances of any non-compliance.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_733/2024, UPC_CFI_255/2025
Type of proceedings
Infringement Action and Counterclaim for Revocation
Parties
Claimant/Patent Proprietor: TRUMPF Laser- und Systemtechnik SE
Defendant/Counterclaimant: IPG Laser GmbH & Co. KG
Patent(s)
EP 2 624 031 B1
Jurisdictions
Germany, France, Italy
Body of legislation / Rules
UPCA: Art. 25(a), 26(1), 32(1)(a), 32(1)(e), 47(1), 63, 64, 67, 68, 82, 83(3)
RoP: R. 9.2, 19.1, 19.7, 30.2, 36, 118.5, 118.8, 119, 150.2, 191.1, 352.1, 354
EPC: Art. 54, 56, 69
Brussels Ia Regulation: Art. 4(1), 24(4), 71a, 71b
