Key takeaways
No equivalent infringement without essentially the same effect
According to all doctrines of equivalence or equivalence tests of the UPC contracting member states, equivalent patent infringement is ruled out if there is no technical-functional equivalence of the substitute means in the sense that the modified means do not perform essentially the same function in order to achieve essentially the same effect. Insofar as the same function is not taken as a reference, at least essentially the same effect is taken as a reference (following the Local Division Brussels, Beslissing ten gronde of January 17, 2025, mn. 98).
No isolated revocation of dependent sub-claims
In general, there is no need for legal protection for the isolated revocation of dependent sub-claims by means of a (counter)claim for revocation without revoking the independent claim to which they are related. The subject matter of the patent in suit is not extended by these sub-claims. At most, sub-claims can have an effect on the interpretation when determining the scope of protection of an independent claim in specific individual cases, which must be demonstrated in each individual case.
Appropriate number of auxiliary requests depends on the circumstances of the individual case
The appropriate number of auxiliary requests pursuant to R. 30.1 (c) RoP depends on the circumstances of the individual case. The number of attacks on the patent in suit may be taken into account.
Differentiation between (partial) withdrawal and change
The decision addresses the admissibility and classification of various adjustments to the parties’ applications (see mn. 45 et seq.).
Division
Local Division Mannheim
UPC number
UPC_CFI_471/2023
Type of proceedings
Infringement proceedings, counterclaim for revocation, application to amend the patent
Parties
DISH Technologies L.L.C., Sling TV L.L.C.
vs.
AYLO PREMIUM LTD, AYLO Billing Limited, AYLO FREESITES LTD, AYLO BILLING US CORP., BROCKWELL GROUP LLC, BRIDGEMAZE GROUP LLC
Patent(s)
EP 2 479 680
Jurisdictions
Austria (AT), Denmark (DK), Finland (FI), France (FR), Germany (DE), Italy (IT), Netherlands (NL), Portugal (PT), Sweden (SE)
Body of legislation / Rules
Art. 7 (2), Art. 71b (1) Brussels-1a-Regulation
Art. 33 (1) (a), Art. 83, Art. 69 (1), Art. 67, Art. 68 (3) (a) (b), Art. 59, Art. 24 (1) (e) UPCA
Art. 54 (1), (2), Art. 56, Art. 138 and Art. 65(2) EPC
Art. 69 EPC and Art. 2 of Protocol on Interpretation
Rules 30.1 (c), 118.5, 263.1, 263.2 (a) (b), 262A, 352, 190, 191, 354.2, 7.2, 118.8, 158.2, 354, 355.4, 220.1 (a), 224.1 (a) RoP
