LD Düsseldorf, October 31, 2025, order of the court of first instance, UPC_CFI_630/2025

When an attacked embodiment realizes all structural features of a device claim and the claim does not require the realization of a particular technical effect, the claim is infringed regardless of whether the composition of the structural features in the attacked embodiment achieve a technical effect intended by the patent’s specification. In other words: an “inferior embodiment” infringes a claim when it realizes all features of the claim, even when it performs suboptimal.

Keynote: The scope of protection of a device claim regularly extends to embodiments in which the claimed structural features are present, even if they do not fully and unrestrictedly realise the function or technical advantage intended for them in the patent specification (inferior embodiment). Limiting the scope of protection of the claim to the fulfilment of a technical function or a corresponding technical advantage that is apparent to a person skilled in the art but not claimed would not adequately protect the patent proprietor.

When the defendant counters the applicant’s submissions, it must do so in a manner that the Court can follow the arguments without any doubt, i.e. there is no room for obtaining additional evidence, such as expert opinions, in PI proceedings.

Keynote: If the defendant has specifically contested the applicant´s submissions, it is the defendant’s responsibility to respond to this contestation by presenting facts which, with the certainty required for the ordering of provisional measures, allow the Court to make a corresponding finding. Unlike in main proceedings, there is normally no room for further clarification of the facts in summary proceedings, for example in the form of obtaining an expert opinion.

For questions of invalidity in PI proceedings, the burden of proof lies with the respondent. In the current case, the patent already survived an opposition and subsequent appeal proceedings. In the current case, conflicting translations of prior art documents were submitted by the parties, already during opposition proceedings at the EPO. The Court found that it was the respondent’s burden to provide proof that their translation is correct, otherwise the Court would adhere to the version provided by the applicant.

Keynote: In PI proceedings, the burden of presentation and proof of facts concerning the validity of the patent lies with the defendant. If both parties submit translations of a prior art document and their accuracy is disputed, the defendant is obliged to provide detailed reasons why its translation is correct. If the defendant fails to do so, the Court will base its order on the applicant’s translation.