2024-11-13 - LD Paris - HP v. Lama - UPC_CFI_358/2023

1. In accordance with article 69 of the European Patent Convention (EPC) and the Protocol on its interpretation, the present Court adopts the standard of patent interpretation established by the Court of Appeal of the UPC in two orders (UPC_CoA_335/2023 and UPC_CoA_1/2024) 2. In a case where the language of the proceedings is French, the Court considers it relevant to examine all the arguments raised in relation to the interpretation of the patent by referring to the patent application as filed in English. 3. In order to be included in the state of the art and considered as non novel, the invention must be found in its entirety and in a single prior art of certain character with the same element that constitutes it, in the same form, with the same arrangement and the same functioning to achieve the same technical result. 4. The Court considers that there is no need to apply national law to acts of infringement committed before 1st June 2023. The Court considers that it is not relevant to refer to the sources of national law when the sources of substantive law before the UPC for defining what constitutes an act of infringement are articles 25 and 26 of the UPCA. 5. In the context of Article 29 UPCA on exhaustion of rights, where a legal provision based on competition law is invoked as a defence to the alleged infringement, the UPC has jurisdiction to examine whether this exception applies in the case at hand. 6. The defense based on competition law is obviously inoperative, the question is therefore not necessary to the resolution of the present dispute. Consequently, the Court considers that the question does not need in the present case to be addressed as a preliminary ruling to the CJEU under article 21 UPCA and the rule 266 RoP. 7. In the case of acts of direct infringement within the meaning of Article 25 UPCA, i.e. acts of making, placing on the market or using the infringing product, the applicant has no obligation thereunder to prove that the defendant had prior knowledge of the existence of the patent and of the materiality of the alleged infringement.

In this lengthy decision (which is only available in French), the Paris Local Division applied the CoAs standard on claim construction and invalidated the patent in it's entirety. The court also dealt with the necessity to apply national law and to present the case to the CJEU, which it found not to be necessary in this case.