2025-08-13 - LD The Hague - Orbisk et al. v. Winnow Solutions et al. - UPC_CFI_327/2024; UPC_CFI_557/2024
- Aktenzeichen:
- UPC_CFI_327/2024; UPC_CFI_557/2024
- Datum:
- Spruchkörper:
- Court of First Instance - The Hague (NL) Local Division
- Art:
- Proceeding Decision
- Parteien:
- Winnow Solutions Limited v. Orbisk B.V.
Kernaussage: 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.
2025-08-13 - LD The Hague - Orbisk et al.
v.
Winnow Solutions et al. - UPC_CFI_327/2024; UPC_CFI_557/2024
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 of costs is in order, depending on the circumstances.
The Hague Local Division partially revoked a patent due to a lack of inventive step and dismissed the infringement action. Since the Defendant had already produced sufficient information, the Court dismissed a request for information under Rule 190 due to a lack of legal interest.
The Court also decided on cost reimbursement and ordered the Claimant to compensate the largely prevailing Defendant; however, since the Defendant and Counterclaimant had also attacked the auxiliary request with which the patent was upheld, the Court subtracted 15%. The Court clarified that such compensation was in order because the Counterclaimant sought revocation of claims not asserted against it.
The decision was published twice, once for the infringement action, once for the counterclaim for revocation.
Stichwörter
infringement, cost decision, partial revocation
Nichtigkeitsgründe
Art. 138 EPCInventive Step
Patent invalid (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“Claims 1/15 lacked inventive step over Winnow Video + CGK. Data cleaning is basic skilled person knowledge. CR3 (stability controller) was inventive.”
Added Matter
Patent invalid (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“CR2/2A contained added matter — broad erroneous categorisation not supported by application as filed.”
Insufficiency of Disclosure
Patent invalid (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“CR2/2A insufficiently disclosed beyond bin change errors.”
Priority
Patent invalid (this ground)Art. 87 EPC · derivative
“Priority conceded invalid — priority document did not disclose cleaning feature.”