In bifurcated cases, a Local Division is bound by a Central Division’s decision amending patent claims, which then forms the basis for its infringement analysis
In a bifurcated setup, the Local Division hearing infringement cannot ignore amendments made by the Central Division in parallel revocation proceedings. Once the Milan Central Division amended EP 3 756 767 B1 in accordance with auxiliary request 3, only claim 1 (instrument) and claim 2 (method) remained, and the “sample unit” became a structural element of the “device”. The Düsseldorf Local Division expressly stated it was “bound to this new wording of the claims” and conducted its entire infringement analysis on that amended text. This underscores that, in bifurcated UPC cases, validity and claim text are centrally fixed and binding downstream.
A claimed “device” comprising multiple components requires a spatial link between them. A purely functional or conceptual connection is insufficient for a finding of infringement
The Court accepted that the patent does not require a strictly monolithic cartridge. Modular configurations are possible and the “device” is not synonymous with a single housing.
However, it held that the claimed device must still exist as a connected whole. Sub‑components must be “spatially linked to one another” and cannot be joined only by the way the instrument operates. A “simple functional link is not sufficient”.
Hence, spatially separated sample vials in the PAU and reagent strips in the AU, without any common carrier or connecting structure, cannot together constitute the claimed “device.”
This strict requirement was decisive for non‑infringement.
If a court finds no infringement in a bifurcated case, the patent’s validity is no longer decisive for the action and need not be assessed
Because the Local Division concluded that the VIDAS 3 system did not reproduce key claim features (notably the “device” and “first means”), it dismissed all theories of direct and indirect infringement.
In that situation, it held that questions of validity in the bifurcated revocation case are “no longer decisive for the infringement action”.
The Court therefore did not engage with the substance of the revocation counterclaim or the EPO’s preliminary opposition opinion.
This confirms the UPC’s pragmatic approach: once infringement fails on claim construction or facts, the Local Division need not opine on validity issues already pending or decided elsewhere.
Supplying an instrument does not constitute “offering for use” of a patented method under Art. 25(b) UPCA if only the end-user actually performs the method
For method claim 2, the Claimant relied on “offering for use” under Art. 25(b) UPCA, arguing that marketing the VIDAS 3 system and disposables amounted to offering the claimed process across the UPC territory.
The Court disagreed. It stressed that Art. 25(b) targets the offering of a process “implemented by third parties for who the Defendants need to sign responsibility”. Here, the Defendant supplied an instrument, but laboratories themselves decide whether and how to use it.
As the customers perform the steps and the defendants do not offer the process as such, there was neither direct use nor an “offering for use” of the patented method.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_571/2024
Type of proceedings
Infringement action
Parties
Claimant: Labrador Diagnostics LLC
Defendant(s): bioMérieux SA, bioMérieux Deutschland GmbH, bioMérieux Italia S.p.A., bioMérieux Austria GmbH, bioMérieux Portugal, Lda., bioMérieux Benelux BV
Patent(s)
EP 3 756 767 B1
Jurisdictions
UPC
Body of legislation / Rules
Art. 25(b) UPCA
Art. 69(1) UPCA
R. 118.5 RoP
R. 152.2 RoP
