2025-11-28 - LD Munich - Jingao Solar v. Astronergy et al. - UPC_CFI_425/2024
- Aktenzeichen:
- UPC_CFI_425/2024
- Datum:
- Spruchkörper:
- Court of First Instance - Munich (DE) Local Division
- Art:
- Decision
- Parteien:
- JingAo Solar Co., Ltd. v. Chint New Energy Technology Co., Ltd., Astronergy Europe GmbH, Astronergy GmbH, Astronergy Solarmodule GmbH, Astronergy Solar Netherlands B.V., Chint Solar Netherlands B.V.
Kernaussage: The Munich Local Division upheld a TOPCon solar-cell patent against a counterclaim for revocation and granted a full set of remedies over four Contracting Member States.
2025-11-28 - LD Munich - Jingao Solar
v.
Astronergy et al. - UPC_CFI_425/2024
notable
The Munich Local Division upheld a TOPCon solar-cell patent against a counterclaim for revocation and granted a full set of remedies over four Contracting Member States. The decision is most useful for two things. First, it treats the defendants' own product White Paper as decisive evidence of infringement: where that brochure describes an ultra-thin tunnelling silicon oxide layer working by the quantum tunnelling effect, the defendants must adhere to their own clear statements, and their contrary test results cannot displace them. Second, it applies R. 263 RoP with unusual severity to validity attacks, excluding four separate inventive-step combinations raised for the first time in the reply to the defence to the counterclaim; that a document was already known to the opponent from parallel EPO proceedings is irrelevant, because what matters is why it was not filed with the counterclaim. The defendants' Art. 102 TFEU defence, that TOPCon is a de facto industry standard divided between three proprietors, failed because a collective dominant position cannot be established on a market forecast. The Court also applied the Court of Appeal's rule that an interim costs award defaults to 50% of the applicable ceiling.
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent survived (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“Claim 1 is novel over D20 (WO 2010/151478 A1). D20's transition region 340 is formed in the substrate rather than entirely over its back surface — the two transition regions 330 and 340 cannot be treated differently — and nothing in D20 indicates that region 340 functions as a layer with a quantum-mechanical tunnelling effect [V.3].”
Inventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“Every attack failed. Four combinations were excluded as late filed under R. 263 RoP [V.4.c-f, j]. Of those examined on the merits, D22 teaches away from a tunnelling layer between substrate and back surface field area, no motivation was shown to replace D25's aluminium-based back surface field area with polycrystalline silicon, and the skilled person starting from D7's back-junction cell had no reason to flip the construction or to consult D26 [V.4.g-j]. The framework applied is the Court of Appeal's in Amgen v Sanofi and Edwards v Meril [V.4.a].”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Five added-matter attacks under Art. 123(2) and Art. 138(1)(c) EPC all failed: the whole substrate must share the crystallinity of any part of it; 'undoped' in para. [0079] refers to the second conductive type only; 'front side' need not appear literally because it is apparent from the description read with the drawings; original Figure 8 shows all the features of claim 1 together; and the anti-reflective films are presented as optional [V.1]. The reasoning tracks the EPO Board of Appeal's provisional opinion.”
Insufficiency of Disclosure
Patent survived (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“The argument that features 3 and 4 impose conflicting requirements failed. Para. [0015] of the patent distinguishes 'on' from 'directly on', and Figures 8, 9, 11, 13 and 14 show reproducible embodiments in which the tunnelling layer sits directly on the substrate and the back surface field area on top of it [V.2].”