Key takeaways
High number of auxiliary requests (here: 51) may be admissible where the patent faces numerous and diverse validity challenges (headnote 1)
The Court must weigh all relevant circumstances, including the complexity of the technology, the number of prior art documents, the nature and number of validity attacks (novelty, inventive step, clarity, enablement, added matter), and the structure and similarity of the auxiliary requests.
Late amendment to extend a counterclaim for revocation must be rejected where the patent proprietor would lack sufficient time to address the new attack (headnote 2)
The defendant must demonstrate reasonable diligence under R. 263(2)(a) RoP. Failing to include a claim in the counterclaim when grounds were already known for several months demonstrates a lack of such diligence.
Subsequent request to amend the patent requires specific justification and must simplify, not complicate, the proceedings
The claimant must explain why the amendment is necessary and establish a connection between the opposing party’s specific arguments and the proposed changes in the auxiliary requests.
Broad, functional claim construction of key terms may widen the prior art base and ultimately destroy novelty of the patent
The Court interpreted “clay material” without limitation to hydrated or dehydrated forms and “binder” purely by its function of adhering clay to the gauze substrate, irrespective of the type of bond. This broad interpretation, while potentially favourable for infringement, equally broadened the scope of anticipating prior art.
Division
Local Division Hamburg
UPC number
UPC_CFI_685/2024, UPC_CFI_157/2025
Type of proceedings
Infringement action and counterclaim for revocation
Parties
Claimant: Teleflex Life Sciences II LLC
Defendant: Speed Care Mineral GmbH
Patent(s)
EP 2 077 811
Jurisdictions
Austria, Belgium, Denmark, Finland, France, Germany, Italy, the Netherlands, Portugal, Sweden
Body of legislation / Rules
R. 8(5) RoP, R. 19.7 RoP, R. 30(1) RoP, R. 30(2) RoP, R. 263 RoP, Art. 47(1) UPCA, Art. 69(1) UPCA, Art. 54 EPC, Art. 56 EPC, Art. 123(2) EPC, Art. 138(1) EPC, Art. 54(5) EPC, Art. 69 EPC
