2025-10-10 - LD The Hague - Hl Display v. Black Sheep Retail Products - UPC_CFI_386/2024

1. Infringement action about shelf dividers. Patent valid and infringed. Indirect infringement. Long-arm jurisdiction. 2. Counterclaim for declaration of non-infringement with revised product held inadmissible. There was no assertion of infringement prior to instituting the counterclaim nor had defendant applied in writing for an acknowledgement as meant in R. 61.1 RoP. Such assertion may not be deduced from the mere fact that the patent was invoked with respect to a different product. Relevant date is marked by the launch of the counterclaim. Failure to respond with an acknowledgement within 30 days from counterclaim does not trigger R. 61.1.b RoP, as it would run counter to the very point of R. 61.1 RoP: to prevent the commencement of unnecessary proceedings for a declaration of non-infringement when the proprietor or its licensee did not yet assert the patent with respect to a certain product (or process). It would also mean that effectively R. 61.1.a and b would be rendered redundant.

The Hague Local Division held a shelf-fitting patent valid and infringed, and gave two rulings of general reach. The first is on long-arm jurisdiction: the defendant did not contest competence for the non-UPC states in which the patent is in force, and confined its revocation counterclaim to the Contracting Member States, treating invalidity elsewhere as a defence. On that footing the Court took competence for the infringement claims in every designated state, applied the BSH/Electrolux allocation — for non-UPC EU and Lugano states it asks whether there is a serious, non-negligible chance the national court will invalidate, and for non-EU states it may decide validity inter partes — and issued a single injunction for all territories where the patent is in force. The second is on the counterclaim for a declaration of non-infringement: the conditions of R. 61.1 RoP must be met at the launch of the counterclaim, an assertion of infringement cannot be inferred from the patent having been invoked against a different product, and the counterclaim itself cannot serve as the written application whose thirty days of silence then opens the door, because that would defeat the very purpose of the rule and make both its limbs redundant. On the merits, every intermediate-generalisation attack failed for want of a structural or functional link between the omitted feature and the claim, and the Court held in the alternative that a differently located protrusion would infringe by equivalence.