Topics: Counterclaim for revocation
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LD The Hague, August 13, 2025, decision on the merits, UPC_CFI_327/2024
Cost decision on a counterclaim for revocation: If the patent is considered valid only in a form which is not claimed to be infringed, the patentee shall bear the costs of the counterclaim for revocation. However, if the counter claimant seeks revocation of claims not asserted against it, and those claims are upheld, a compensation…
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LD Mannheim, July 21, 2025, order on harmonization of time periods, UPC_CFI_79/2025
Harmonizing Time Limits in Joint Proceedings: When a counterclaim for revocation (CCR) is filed jointly with a statement of defense, the time limit for responding to the CCR begins only after the claimant receives the substantive content of the CCR. This ensures procedural fairness and alignment between the infringement and revocation proceedings. Division Local Division…
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LD Munich, July 3, 2025, procedural order on security for costs (R. 158 RoP), UPC_CFI_127/2024 et al
Even if the Defendant of an infringement action is, formally, at the same time the Claimant of a counterclaim for revocation, they are entitled to a security also for procedural costs caused by filing the counterclaim for revocation pursuant to Art. 69(4) UPCA and Rule 158.1 RoP.: According to the Court of Appeal’s decision in…
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LD Mannheim, June 6, 2025, Procedural Order, UPC_CFI_745/2024 (CCR: UPC_CFI_200/2025)
No special treatment for amendments in counterclaims for revocation: The Rules of Procedure on amendments apply equally to counterclaims for revocation as to infringement actions; no leniency is afforded to counterclaimants. All grounds for revocation and supporting documents must be included with the initial counterclaim. Late-filed prior art faces strict scrutiny: New prior art can…
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LD Munich, June 6, 2025, decision, UPC_CFI_324/2024, UPC_CFI_487/2024
Burden of proof for non-infringement: If the defendant claims that infringement is impossible due to factors outside the scope of the patent claim, the defendant must prove this. The claimant does not need to address such external factors. In the decision, the defendant unsuccessfully argued that infringement was impossible due to the design of existing…
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LD Mannheim, June 6, 2025, Decision, UPC_CFI_471/2023
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…
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Milan Local Division, June 2, 2025, Order, UPC_CFI_181/2025
Joint request for stay of proceedings removes court discretion (Rule 295(d) RoP, Art. 43, 76(1) UPCA): When all parties jointly request a stay, the court must grant it, regardless of the permissive wording in the rule. This upholds party autonomy in determining the subject matter and conduct of their case. Partial stays are permitted for…
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LD Duesseldorf, May 8 2025, Decision concerning the infringement and revocation of EP 2778423 B1
Background of the case: The Claimant brought an infringement action against the Defendant who filed a Counterclaim for Revocation, alleging a lack of enablement, a lack of novelty, and a lack of inventive step. However, they raised certain novelty and inventive-step objections for the first time in their Reply to the Defence to the Counterclaim…
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LD Düsseldorf, March 4, 2025, Procedural Order, UPC_CFI_468/2024, UPC_CFI_687/2024
Referral of Counterclaim for Revocation (Art. 33(3)(b) UPCA, R. 37.2 RoP): The Local Division Düsseldorf referred the counterclaim for revocation to the Central Division in Milan. The Parties had unanimously requested the, and requests by all parties will be granted unless strongcounterarguments require a different decision (UPC_CFI 14/2023 (LD Munich), Order of 2 February2024 –…
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LD Duesseldorf, March 7, 2025, Decision of Court of First Instance, UPC_CFI_459/2023
Late submission of new attacks on validity: The nullity plaintiffs raised two new validity attacks during the oral hearing: a novelty attack based on D7 (Onsemi) and an inventive step attack combining D3 (Nguyen) and D4 (Lürkens). Neither of these new attacks was considered, as they were raised for the first time during the oral…
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LD Mannheim, January 31, 2025, Decision of first instance (Infringement Proceedings and Counterclaim for Revocation), UPC_CFI_340/2023
In view of the lack of patentability, the admissible infringement action is unfounded without the need for a judicial review of the infringement allegation required.: After the court has dealt with the interpretation of the patent-in-suit and established the invalidity of the patent-in-suit, it dismissed the infringement action without further ado. Both the examination of…
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LD Vienna, January 15, 2025, order in first instance on infringement, UPC_CFI_33/2024
No action for revocation despite objection of nullity: If the allegation is made in the proceedings that the patent is invalid, the statement of defence must contain a counterclaim for revocation of the patent against the proprietor of the patent (R. 25 RoP, R. 42 RoP). Without such counterclaim, the invalidity defence (here: exceeding the…
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LD The Hague, November 22, 2024, Decision on the merits, UPC_CFI_239/2023
Assessment of the scope of protection in infringement cases in two steps: (i) literal infringement; (ii) infringement by equivalence: The UPCA contains no provision on the infringement by equivalence, however, Art. 2 of the Protocol to Art. 69 EPC makes clear that equivalence must be considered: “For the purpose of determining the extent of protection…
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LD Munich, September 25, 2024, Procedural Order on a Counterclaim for revocation – Standing to be sued, UPC_CFI_114/2024 UPC_CFI_448/2024
Background: A common situation in patent litigation is that a patent has (allegedly) been assigned from one legal entity (assignor) to another (assignee) and that the assignee asserts the patent before being entered as proprietor into the register. This decision addresses the question who the alleged infringer (defendant) can sue in a counterclaim for revocation.…
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LD Munich, September 13, 2024, infringement action: decision on the merits, UPC_CFI_390/2023
No stay of the proceedings due to national nullity proceedings re. German part of patent-in-suit: Requirements of R. 295(a) RoP not fulfilled, appeal of the German Federal Court of Justice (FCJ) against the first instance decision of the German Federal Patent Court (FPC) is not expected to be given rapidly. A stay according to R.…
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CoA, September 6, 2024, procedural order, UPC_CoA_457/2024 and UPC_CoA_458/2024
The possibility that an injunction might be granted by the Court of First Instance (Local Division) in infringement proceedings based on a patent that has been upheld in first instance revocation proceedings, but may subsequently be revoked by the Court of Appeal, is not sufficient to justify expediting the appeal proceedings.: The two Defendants in…
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LD Munich, July 31, 2024, Decision on the merits, UPC_CFI_233/2023
Applicable standard concerning novelty: In order to be considered part of the state of the art (Art. 54 (1) EPC), an invention must be found clearly integrally, directly and unambiguously in one single piece of prior art and in its existing form, it must be identical in its constitutive elements, in the same form, with…
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