2025-08-01 - LD Paris - N.J DIFFUSION v. GISELA MAYER - UPC_CFI_363/2024

1. The scope of protection of the patent teachings: It does not matter that the descriptive part contains the embodiment called “on top of each other”; what matters is the scope of protection as delimited by the claims, which are expressly limited to the embodiment called “edge-to-edge”. The Court also noted that the addition of the words "placed edge-to-edge" in claim 1 should have resulted, at the grant stage of the patent, in the deletion of the method of realisation of the invention referred to as “on top of each other" mentioned in the description, as this mode does not fall within the scope of protection of the teachings of the patent as finally retained in the claims. (cf decision Agfa v Gucci, Hamburg LD of 30 April 2025, UPC_CFI_278/2023, Headnote 3: "Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim”. 2. Admissibility of an allegedly late claim: In the present case, the Court considers that the claim for infringement by equivalence, which was introduced after the statement of defence, is not late (at the reply stage), because that claim does not change the nature of the claimant's procedural strategy; it is merely an adaptation in the light of the defendant's arguments in it the defence, to which the defendant was able to respond to it in its rejoinder. For these reasons, the claim for infringement by equivalence is admissible in this case. 3. Indirect infringement within the JUB (Art. 26 UPCA, Art. 69 EPC and its interpretative protocol): In light of UPC case law (see Mannheim UPC LD, 6 June 2025 - 471/2023- Headnote3; Brussels UPC LD, 17 January 2025, para. 98 - CFI 376/2023), the present Division considers, on the one hand, that it is appropriate to adopt the most harmonised interpretation possible within the UPC for ruling on claims of infringement by equivalence and, on the other hand, that in all cases in view of the different tests practised within the UPC Contracting Member States, it is appropriate to answer first of all a question which is the lowest common denominator and which constitutes the first criterion for examining equivalence: Do the modified (or substitute) means perform essentially the same function to achieve essentially the same effect?

The Paris Local Division issued this decision (only available in French) dismissing an infringement action on the grounds that an essential claim feature was not reproduced. The Court clarified that the scope of protection is limited to the features expressly claimed, even if alternative embodiments appear in the description, and that such alternatives cannot serve as a basis for broad interpretation. It further held that infringement by equivalence requires the allegedly infringing means to perform essentially the same function to achieve essentially the same effect, which was not established in this case. The Court also addressed the treatment of cost claims in insolvency proceedings, fixing the recoverable amount at €50,000 to be registered in the debtor’s liabilities.