LD Düsseldorf, April 23, 2026, Decision, Infringement action and CCfR, UPC_CFl_559/2024 and UPC_CFl_106/2025 – Quantificare v. Canfield

The claimant had excluded Germany from the infringement action before the UPC Düsseldorf LD for procedural reasons (parallel proceedings before the Düsseldorf Regional Court for the German national portion of the same European Patent (EP), thereby avoiding lis pendens). However, it only demonstrated infringing acts by the first defendant in Germany.

Following the Munich LD’s approach in Edwards v. Meril (UPC_CFI_15/2023, p. 58) the Düsseldorf LD confirms under Art. 34 UPCA that a single infringing act in any Contracting Member State suffices for UPC-wide orders (hereby expressly diverging from the Paris LD’s more restrictive position in Seoul Viosys v. Laser Components (UPC_CFI_440/2023, mn. 103 et seqq. requiring proof of infringement in each specific territory).

This even applies – according to the Düsseldorf LD – if an infringing act can only be determined in a Contracting Member State in which the patent proprietor excluded that state from its claims in the infringement action for procedural reasons (so called ‘carve out’), e.g. due to parallel national proceedings (lis pendens) concerning the national portion of the same EP (cf. Headnote; mn. 238 et seqq.). A carve out does not mean that such infringing acts fall outside the scope of Art. 34 UPCA, as no justification for restricting orders to individual Contracting Member States can be found in the UPCA.

In sum, following the Düsseldorf LD’s approach, patent proprietors can rely on an infringing act in a “carved-out” state as the basis for UPC-wide measures.

The Düsseldorf LD rejected several attempts by the defendants to narrow the scope of protection based on the description. The Court reaffirms the principle that preferred embodiments and features described as “advantageous” do not limit the claim – especially where dependent claims specifically pick up those very features (mn. 100 et seqq.)

Further, citing Belkin v. Philips (CoA_534/2024, mn. 67), Alexion v. Amgen (UPC_CoA_405/2024, mn. 43) and BFexaQC v. NVIDIA (UPC LD Munich, UPC_CFl_180/2025), the Düsseldorf LD held that statements made by the applicant during prosecution of a foreign family member (here US 10,070,119 B2) are at most an indirect indication and cannot restrict the European patent’s scope of protection. While the Düsseldorf LD left open whether the CoA’s findings on prosecution history can be extended to statements in the prosecution history of other patents within the same family, it held that, in any event, such statements are of no relevance where – as in the present case – they do not reveal a specific understanding of the scope of protection of the patent in suit (mn. 142).

In applying the test from Meril v. Edwards (UPC_CoA_464/2024) and Amgen v. Sanofi (UPC_CoA_528/2024), requiring a realistic starting point, a specific pointer or motivation, and that the skilled person would have — not merely could have — arrived at the claimed solution, the Düsseldorf LD rejected all six prior art attacks of the counterclaim .

The Court found either no realistic starting point, no motivation to combine, or that the combination would not have led to the claimed invention. Late-filed documents were excluded under R. 9.2 RoP. The Court finally also emphasised that mere fact that the expert would always test such an object (in the case at hand a camera) in different directions (“play around with it”), as argued by the defendant’s representative during the oral hearing, didn’t not constitute sufficient starting point (mn. 208).

The claimant’s attempt to add a request for provisional cost reimbursement of EUR 60,000 for the infringement action in the reply was rejected. The claimant failed to file a formal amendment application and, critically, failed to explain why the amendment was not included in the original statement of claim. Merely adopting the defendant’s arguments was insufficient.

The Düsseldorf LD awarded EUR 20,000 in provisional damages intended to cover the anticipated costs of damages quantification proceedings. The Court rejected the defendants’ argument that provisional damages should only be available in cases of financial hardship on the part of the claimant. This already followed from R. 119 sentence 2 RoP that provides that provisional damages shall cover at least the preliminary costs of the damages quantification proceedings.

The defendants argued that a sales ban would cause irreparable, catastrophic harm to their clinical studies, reputation and market position. The Düsseldorf LD dismissed this as too vague: concrete figures, facts, and examples were lacking. General disadvantages that accompany any injunction are not sufficient.