In a joint order on two parallel applications for provisional measures between the same parties and against the same product, the Hague Local Division granted an injunction and an information order on one patent and dismissed the application on the other. Applying the NanoString 'more likely than not' standard under R. 211.2 RoP and Art. 62(4) UPCA, the Court found the first patent likely valid, holding that a claimed numerical range cannot be disregarded as arbitrary where the patent ties a technical effect to it, and found infringement on the basis of an unrebutted third-party test report, a counter-report measuring a different parameter being discarded. On the second patent, a 'sealing attachment' feature was construed as requiring a structural seal enveloping the inlets, which the applicant failed to show. The urgency objection failed because the applicant was entitled to wait for a test purchase from within the UPC territory and its full technical analysis before filing, and the request for security for enforcement was rejected as unsubstantiated.

1. Die erstmals im Zwischenverfahren in der Verletzungsklage eingeführten Anträge, gestützt auf den Umfang des Streitpatents im Rahmen der Hilfsanträge und der damit verbundene Vortrag sind nicht zuzulassen. 2. Es muss möglich sein, wenn abhängige Ansprüche oder geänderte Anspruchsfassungen Gegenstand von Hilfsanträgen sind, die Verletzungsklage entsprechend anzupassen. Von dieser Möglichkeit hat die Klägerin aber zeitgleich mit der Geltendmachung der Änderungen des Streitpatents Gebrauch zu machen. 3. Sofern die Klägerin nicht substantiiert vorträgt, dass sie bei einem mehrfachen Rückbezug alle rückbezogenen Ansprüche in Kombination verteidigen möchte, stützt sich die Rechtsbestandsprüfung bei entsprechenden Rückbezügen lediglich auf den Hauptanspruch. Sofern nicht substantiiert vorgetragen wird, welche konkreten Anspruchskombinationen für rechtsbeständig gehalten werden, umfasst die Rechtsbestandsprüfung bei einem mehrfachen Rückbezug sämtliche vom Wortlaut des abhängigen Anspruchs erfassten Kombinationen. Erweist eine der erfassten Kombinationen sich als nicht rechtbeständig, ist der abhängige Anspruch insgesamt nicht rechtsbeständig. 1. The claims introduced for the first time during the interim proceedings in the infringement action, based on the scope of the patent in dispute within the framework of the auxiliary requests and the related submission of facts, are not admissible. 2. Where dependent claims or amended claim formulations form the subject-matter of auxiliary requests, it must be possible to amend the infringement action accordingly. However, the Claimant must make use of this option at the same time as introducing 2.amendments to the patent at issue. 3. Unless the Claimant submits a substantiated argument that, in the case of multiple crossreferences, it wishes to defend all cross-referenced claims in combination, the examination of the validity of the patent at dispute is based solely on the main claim. Unless it is substantiated which specific combinations of claims are considered to be valid, the validity assessment in the case of multiple cross-references shall cover all combinations covered by the wording of the dependent claim. If a single one of the combinations covered proves to be invalid, the dependent claim as a whole is invalid.

Panel 2 of the Düsseldorf Local Division largely revoked a patent on a milk-frothing device and dismissed the parallel infringement action. It held that a patentee which, in the interim procedure, first bases infringement requests on its auxiliary requests is too late under R. 263, R. 30.2 and R. 9.2 RoP: the infringement case must be adapted at the same time as the application to amend is filed. Following the CoA in Fujifilm v Kodak, it held that where a patentee defends multiply-dependent claims without specifying which combinations it considers valid, the validity review covers every combination the claim wording encompasses, and one invalid combination makes the dependent claim invalid as a whole. 'A heating element' was construed generically, not as a numerical limitation, which brought the claim within the prior art; a cited document incorporated by reference was treated as part of the anticipating disclosure. Only dependent claim 12 survived, and its infringement was not adequately pleaded.

The Munich Local Division decided an infringement action and a counterclaim for revocation on a unitary patent for a rapid-entry shoe. On claim construction it held that the binding nature of the claim under Art. 69(1) EPC bars reading an unwritten limiting feature into the claim where description and drawings give no clear indication of it, and that the Court is not bound by the parties' constructions because construction is a matter of law. Claim 1 as granted was anticipated, but the patent was maintained as limited by an auxiliary request: the added-matter and sufficiency attacks failed, and the inventive-step attacks failed because the counterclaimants did not plead a pointer or motivation from any starting point, which in light of Arts. 42, 54 and 76(2) UPCA the Court will not supply itself. Only one of four accused models infringed; for the others the functional feature was not shown under the practical forces of foot entry. The Court ordered injunction, information with supporting invoices, corrective measures and damages liability, made the corrective measures enforceable only against a EUR 5m security because of the limitation, the pending EPO opposition and the mixed infringement result, refused provisional damages and publication, and ordered each party to bear its own costs.

1. A manufacturing method of a publicly used product is made available to the public by use pursuant to Art. 54(2) EPC if, at the relevant date, the person skilled in the art could establish the method without undue burden by analysing the product’s composition. There is no support in the EPC for an additional requirement that the skilled person would need particular reasons for analysing the product. 2. Where a publicly available product discloses information which is relevant to the novelty of a claimed manufacturing method, the disclosure must be such that the skilled person can use the claimed method on the basis of their common general knowledge. Reproducibility of features which are not part of the claimed invention is not required.

The Court of Appeal held that a manufacturing method is made available to the public by prior use of a product if the skilled person could establish the method without undue burden by analysing the product, with no additional requirement that the skilled person have a particular reason to analyse it; reproducibility is required only for the claimed features, not for others such as ink quantities. Applying this, Gucci's own earlier 'Flora' leather products anticipated Agfa's leather-decorating method claim, because standard analytical techniques (GC/MS, IR, Raman) revealed the use of pigmented UV-curable inkjet inks; expert evidence produced without the defendant's internal knowledge carried more weight than analyses guided by it. The Court corrected the Hamburg LD's construction: 'achromatic colour' is a broad concept read with the description and common general knowledge, covering off-white base coats containing some chromatic pigment, and an amendment during examination did not exclude that. Following Fujifilm v Kodak, dependent claims were examined individually; claim 5 (summed polyfunctional monomer and oligomer content) and claim 9 survived, others were anticipated or obvious. The infringement appeal failed because infringement of claim 5 was not proven and neither R. 172 RoP nor Art. 55 UPCA shifted the burden of proof.

1. In the absence of any pointer to the opposite, it must be assumed that a feature in a patent claim has a technical significance within the teaching of the claim and contributes to the teaching and its technical effect. 2. When assessing the disclosure content of an (priority) application, hindsight must be avoided. It is not sufficient that the skilled person having the granted patent claim in mind might recognize elements of the granted patent claim in the priority application and assign them accordingly to features of the granted patent. On the contrary, the subject-matter of the granted patent claim must be directly and unambiguously apparent from the content of the priority application, without prior knowledge of the granted patent claim.

The Mannheim LD revoked the SEP to the extent attacked and dismissed the infringement action, without reaching the FRAND defence. The decisive ground was an invalid priority claim: applying the Art. 123(2) EPC gold-standard disclosure test to the priority application under Art. 87 EPC, the Court held that a feature requiring time unit format information relating to a configuration period was not directly and unambiguously disclosed, so the patent was entitled only to its filing date and was anticipated by an intervening version of the 3GPP standard. The Court stressed that the priority test must be applied without hindsight: it is not enough that a reader who knows the granted claim can map passages of the priority document onto its features. In claim construction it presumed that every claim feature has technical significance unless something points to the contrary, and it held that a patentee asserting that a term had a well-known meaning at the priority date bears a secondary burden to substantiate the source of that meaning. None of the auxiliary requests or separately defended dependent claims restored priority, and the patentee offered no novelty defence against the intervening standard for any limited version.

1. The party alleging added matter must identify, by means of a specific comparison, the subject-matter of the original disclosure that is said to have been extended in the later application or divisional patent. The mere fact that the original application contains numerous embodiments and theoretically allows a very large number of combinations does not establish added matter. Although this may raise issues of clarity or drafting technique, an extension of subject-matter arises only where the granted claim conveys technical information that the skilled person could not derive directly and unambiguously from the application as filed, contrary to Articles 123(2) and 138(1)(c) EPC. Procedural fairness under recital 5 of the Preamble to the RoP requires each party to plead its grounds of challenge clearly and with sufficient specificity. The Court can neither cure deficiencies in those grounds nor supplement them of its own motion, since doing so would substitute the Court for the challenging party and compromise its impartiality. 2. Where the alleged contribution to the art lies in the identification of a physiologically or pathologically distinct patient subgroup, the patent must provide sufficient technical information to identify that subgroup and to make it credible that the medicinal product is suitable for the claimed therapeutic use in that subgroup. In that context, the precise therapeutic dosage need not be stated in the independent claim, provided that the skilled person, on the basis of the patent, the prior art and common general knowledge, can select a safe and effective dose without undue burden in the exercise of their routine competence. 3. An inventive-step objection cannot be sustained by reconstructing the claimed solution with knowledge of the patent. Where an obviousness attack can be constructed only by selecting and combining numerous (more than 10) disclosures addressing different technical questions, none of which supplies the missing pointer or gives the skilled person a reason to consult the others, the resulting mosaic is indicative of an ex post facto analysis rather than the course the skilled person would have followed at the effective date.

The Milan Central Division dismissed a generic company's revocation action against a second-medical-use patent defined by a patient subgroup, maintaining it in a form the proprietor had unconditionally limited to match its amendment before the EPO Opposition Division. Late-filed prior art and new attacks introduced in the rejoinder, partly drawn from the EPO's preliminary opinion, were excluded under the front-loaded procedure, and the Court held that an EPO Board of Appeal decision on a parent patent has no res judicata effect before the UPC. It held that a generic added-matter attack resting on the number of combinations in the parent application was insufficiently substantiated (while examining it anyway), that the patent was sufficiently disclosed although claim 1 recites no dose and the trials excluded some patients, and that a patient subgroup confers novelty under Art. 54(5) EPC where its defining characteristics are functionally linked to an improved therapeutic effect. Inventive step was upheld because no realistic starting point, alone or combined with over ten further documents, pointed to selecting the subgroup with a reasonable expectation of success; such a mosaic indicates hindsight.

The Düsseldorf Local Division dismissed both Inficon's infringement action against Elitech's METRUM sniffing leak detector and Elitech's counterclaim for revocation of a patent on a sniffing leak detector with a remote reference gas inlet and a buffer chamber that homogeneously mixes reference gas. Construing the claim functionally and refusing to limit it by figures or embodiments, the Court held that the counterclaimant failed on added matter, novelty and inventive step because no prior art disclosed a buffer chamber permitting homogeneous mixing and no pointer or motivation to combine documents was presented; once the independent claim stood, no decision on the dependent claims was needed. On infringement, the claimant's measurements showed delayed detection but not that the housing itself retained and homogeneously mixed gas, and because the measurements were inconclusive from the outset, the defendants' failure to supply their own measurements did not amount to an admission under R. 171.2 RoP. An interim award of costs under R. 150.2 RoP was refused because success was split.

The Munich LD (Panel 1a) decided Maxell's infringement action and Samsung's counterclaim for revocation together and revoked the patent in its entirety. Claims 1 and 8 as granted lacked novelty over a single prior-art document, the Court holding that a disclosed operation panel for controlling content played back on the external device self-evidently discloses the claimed display of operating information and the transmission of the second user operation. Applying the CoA inventive-step framework of Meril v Edwards and Amgen v Sanofi, the Court found auxiliary requests 3 to 9c obvious over two combinations of prior art, adopting The Hague LD's rule that a plurality of routine modifications without functional interdependency is a mere aggregation of obvious features; auxiliary requests 12 and 13 failed for added matter because the application disclosed information indicating a UTF-8 character encoding item, not information that is itself UTF-8-encoded. The infringement action was dismissed without an infringement analysis, and costs followed the parties' agreement at the EUR 600,000 representation-cost ceiling plus the court fee.

The Mannheim Local Division decided an infringement action together with a conditional counterclaim for revocation and found the patent valid and infringed. On validity it held that an express statement in a prior-art document that a technical arrangement is absent cannot be read as an implicit disclosure of that arrangement, and that a skilled person will not undertake a fundamental redesign of a realistic starting point without a pointer. On the licence defence it held that a defendant must substantiate its defence in the UPC proceedings themselves; a reference to written submissions in parallel national proceedings, filed without their exhibits, does not satisfy R. 24 RoP. On attribution it applied Belkin v Philips and held that shareholder status alone does not make a holding company an infringer, while a former licensee that knows of its subsidiary's infringement and does not instruct it to stop has those acts attributed to it. It refused a stay under R. 295(m) RoP because the proceedings were at an advanced stage and the licence defence failed in any event.

1) Ein absolutes Verfahrenshindernis im Sinne der R. 362 VerfO ist ein Umstand, der die Durchführung oder Fortsetzung eines Verfahrens (vor dem Gericht) aus Rechtsgründen ausschließt, und zwar endgültig. Ein absolutes Verfahrenshindernis steht nicht zur Disposition der Parteien und kann auch nicht durch Nachreichung eines Schriftsatzes oder Nachholung beseitig oder geheilt werden. 2) Für die Bestimmung der Rechtskraft einer Entscheidung eines nationalen Gerichts ist das nationale Recht maßgeblich. 3) Ein substantiiertes („konkretes“, „specifically“, „spécifiquement“) Bestreiten gemäß R. 171.2 VerfO kann nicht verlangt werden, wenn es sich bei der vorgebrachten Tatsache um eine solche handelt, die außerhalb des Wahrnehmungs- und Verantwortungsbereichs der Partei liegt. Liegt die vorgebrachte Tatsache außerhalb des Wahrnehmungs- und Verantwortungsbereichs der Partei, ist es ihr möglich, sich mit Nichtwissen zu dieser Tatsache zu erklären. Die Tatsache gilt dann nicht als unstreitig, sie ist vielmehr beweisbedürftig. 4) Ist die Benutzung der technischen Lehre eines Patents aufgrund eines Vorbenutzungsrechts in einem Vertragsmitgliedstaat rechtmäßig, können die Handlungen in diesem Vertragsmitgliedstaat keine Begehungsgefahr hinsichtlich der Patentbenutzung in einem anderen Vertragsmitgliedstaat begründen. Die Begehungsgefahr erfordert die Feststellung einer rechtswidrigen Benutzung des Patents.

The Court of Appeal settled how a final national revocation judgment binds the Court. The res judicata of such a judgment is an absolute procedural bar under R. 362 RoP, the word absolute qualifying the bar rather than the effect of the judgment, and the bar leaves the Court no discretion to continue. Which effects that judgment has is determined by the national law of the state in which it was given, reached through the recognition rule of Brussels Ia and, in the alternative, through Art. 24(1)(e) UPCA. Applying German law, each ground in Art. 138(1) EPC is a separate cause of action and the grounds collected in Art. 138(1)(a) EPC form one, so the counterclaim was barred as to lack of patentability and admissible as to insufficiency. The Court also held that a party may declare ignorance of a fact lying outside its own sphere of perception and responsibility, so that R. 171.2 RoP does not deem the fact admitted but leaves it to be proved, and that lawful use under a prior-use right in one contracting member state can never found a threat of infringement in another, because a threat presupposes unlawful use.

The Munich Local Division (Panel 2) upheld EP 4 213 033 as granted against a counterclaim for revocation and found the Netflix streaming software to indirectly infringe the claimed client-side playback method under Art. 26(1) UPCA. On validity the panel applied the Court of Appeal's added-matter test (Abbott v Sibio: a feature of an embodiment may be omitted where it is not objectively necessary for the purpose of the claimed feature), held the primary reference not to disclose a 'media sequence' at all, and rejected every inventive-step attack for want of a motivation to arrive at a request queue that is flushed on a user instruction, expressly departing from the EPO Opposition Division's preliminary opinion on that point. On infringement the panel held that non-physical software is a 'means' under Art. 26(1) UPCA, that the client is the device together with the software so a queue maintained by the browser still counts, and that a claimant who has analysed one software variant and asserts the others are identical in the relevant functions has pleaded sufficiently unless the defendant contests specific differences. On remedies the panel held that means under Art. 26 UPCA are 'infringing products' for the information claim under Art. 67(1) UPCA, that no confidentiality restriction attaches to information ordered under Art. 67 UPCA and R. 191 RoP without an R. 262A RoP application, that penalty payments may be framed as minimum amounts per day, and that no enforcement security was warranted because the defendants' evidence of the claimant's finances was insufficient and the patent expires within eighteen months. The Court also admitted the EPO Opposition Division's preliminary opinion under R. 36 RoP so that Office and Court decide on the same basis.

1. The requirement in Art. 138(1)(e) of the European Patent Convention that a European patent may be revoked if the proprietor is not entitled under Art. 60(1) should be interpreted as meaning that the proprietor does not have any rights to the patent. The burden of presentation and proof for facts establishing that the proprietor is not entitled lies with the claimant. It is therefore not sufficient for this ground of revocation to be successful that a claimant demonstrates that it has rights to parts of the subject-matter disclosed in a patent, e.g. as a co-inventor or the co-inventor’s successor in title. 2. Dependent claims are part of the patent and may be used as fall-back positions in revocation actions. At least in a stand-alone revocation action, where no infringement claim has been brought and it is therefore not yet clear which claims a patent holder may decide to rely on for what purpose, a claimant therefore may have a legitimate interest in having the validity of dependent claims assessed, even if the independent claim is deemed valid. Although the Court is not generally required to take a decision regarding dependent claims in such a situation, it should at least have the discretion to do so if considered appropriate based on the circumstances of the case.

The Munich Central Division answered two questions that had not been settled. First, the entitlement ground in Art. 138(1)(e) EPC requires that the proprietor has no rights at all to the patent: a claimant that shows only rights to parts of the disclosed subject matter, as a co-inventor or a co-inventor's successor, does not make the ground succeed, and the burden of presentation and proof lies on it. Whether an unrelated third party may raise the ground at all was left open, because it suffices for invoking it that the claimant's own entitlement case is not prima facie implausible on a cursory review. On the facts the evidence pointed to the registered inventor being at least a co-inventor, so the ground failed. Second, although the Court of Appeal has held that dependent claims need not be decided where a counterclaim fails against the independent claim, dependent claims are part of the patent and may serve as fall-back positions; in a stand-alone revocation action, where no infringement claim shows which claims the proprietor will rely on, the claimant may have a legitimate interest in their assessment and the Court has a discretion to give it. Exercising that discretion, the Court found claims 21 and 22 insufficiently disclosed because they contradict claim 19, and maintained the patent under an auxiliary request deleting them.

The Düsseldorf Local Division revoked the granted claims of a media-sharing patent for lack of novelty, upheld it in the wording of the tenth auxiliary request examined and found indirect infringement of that amended claim by a streaming service. The order on information and accounting is the substantial part: the right under Art. 67 UPCA with Art. 68(3)(a) and (b) UPCA and R. 191 RoP covers supporting documents and, at the Court's discretion, confirmation by a sworn auditor or an affidavit, for which no express legal basis in the UPCA or the Rules is needed because it is a matter of evidence. Since the Court of Appeal has held that there is no implicit limitation on the use of information obtained under Art. 67 UPCA, a use limitation was written into the operative part, and access was restricted to outside counsel and two named representatives by a separate confidentiality order under R. 262A RoP, which applies at least mutatis mutandis to information a party must disclose under a decision rather than information in its own pleadings. Enforcement security was refused because the defendants put forward nothing to justify it and did not answer the claimant's evidence of solvency, and the interim award of damages was dismissed as unjustified.

Für eine unmittelbare Verletzung eines Erzeugnisanspruchs ist entscheidend, ob die angegriffene Ausführungsform aufgrund ihrer Beschaffenheit und ihrer Verwendungstauglichkeit objektiv in der Lage ist, die Merkmale des Patentanspruchs zu erfüllen. When determining whether a product claim has been directly infringed, the decisive factor is whether the challenged embodiment is objectively capable of fulfilling the features of the patent claim, given its nature and suitability for use.

The Düsseldorf Local Division found direct literal infringement of a product claim to a rotary osteotome and dismissed the revocation counterclaim in full. Its headnote states the test for direct infringement of a product claim: what matters is whether the challenged embodiment is objectively capable, by its nature and its suitability for use, of fulfilling the features of the claim. The defendants' argument that their burs are only ever rotated in the direction in which the alleged cutting faces trail therefore failed, since nothing prevented rotation in the other direction and their own brochure warned that reverse rotation produces high cutting performance. On the pleading standard, the Court held that once the claimant has substantiated infringement with a detailed party expert report, a broad denial does not put the allegation in issue; the defendants had to answer with comparable detail, if necessary with an expert report of their own. Standing was established under Art. 47(2) UPCA through a chain of exclusive licence and sublicence, whose validity despite identical signatories on both sides was governed by Michigan law and unrebutted. On validity, prior art recommending a rake angle of about 0° was held to point away from making that angle negative, so the person skilled in the art would not, rather than merely could not, arrive at the claim.

1. For competition law reasons, the patent holder is only required to indicate to the patent user one licensing route that satisfies the FRAND requirements (concurring with LD Munich, decision of 18 December 2024 – UPC_CFI_9/2023 – Huawei v Netgear, p. 136). 2. However, there are constellations where the implementer can demand a bilateral licence instead of a pool licence. Such constellations are for example, but non exclusively, given when the implementer expressed its desire to obtain a multi standard-licence or to sign cross-licencing agreements with the individual patent proprietors. The same applies when an implementer had already advanced with a significant number of other pool contributors to conclude bilateral licences for the whole pool portfolio. 3. Choosing the bilateral route does not ease the implementer’s obligation to show its willingness to take a licence throughout the course of the negotiations. In particular, an implementer’s insistence on bilateral licensing can still indicate unwillingness when the implementer fails to present comprehensible reasons for its decision to opt for bilateral agreements, failed to conclude bilateral agreements with the other SEP pool licensors within reasonable time, and refrained from placing a security. This is even more true when initially being provided a FRAND pool offer.

The Hamburg Local Division found the patent infringed, dismissed the counterclaim for revocation and rejected both the exhaustion defence and the FRAND defence of a standard-essential patent implementer. On the FRAND question the Division held that a SEP holder need indicate only one licensing route satisfying FRAND, so an uncontested pool offer discharges its obligation, but that in defined constellations an implementer may demand a bilateral licence instead — provided it gives comprehensible reasons for that choice. The implementer here gave none, concluded bilateral licences with only a fraction of the pool licensors over nine years and placed no security, which together showed it was not genuinely willing to take a licence. The Division expressly declined to follow the LD Munich and the German Federal Court of Justice in treating a missing security as an automatic bar to the FRAND defence, treating it instead as one further indication of unwillingness. Because willingness was absent, the Huawei v ZTE assessment terminated and the SEP holder's own offers were never examined for FRAND compliance.

1. For competition law reasons, the patent holder is only required to indicate to the patent user one licensing route that satisfies the FRAND requirements (concurring with LD Munich, decision of 18 December 2024 – UPC_CFI_9/2023 – Huawei v Netgear, p. 136). 2. However, there are constellations where the implementer can demand a bilateral licence instead of a pool licence. Such constellations are for example, but nonexclusively, given when the implementer expressed its desire to obtain a multistandard- licence or to sign cross-licencing agreements with the individual patent proprietors. The same applies when an implementer had already advanced with a significant number of other pool contributors to conclude bilateral licences for the whole pool portfolio. 3. Choosing the bilateral route does not ease the implementer’s obligation to show its willingness to sign a licence throughout the course of the negotiations In particular, an implementer’s insistence on bilateral licensing can still indicate unwillingness when the implementer fails to present comprehensible reasons for its decision to opt for bilateral agreements, failed to conclude bilateral agreements with the other SEP pool licensors within reasonable time, and refrained from placing a security. This is even more true when initially being provided a FRAND pool offer.

The Hamburg Local Division granted an injunction on a standard-essential patent for the AAC audio standard, dismissing both an exhaustion defence and a FRAND defence. On the pool-versus-bilateral question it held that for competition law reasons a patent holder need only point the implementer to one licensing route that satisfies FRAND, but recognised that in defined constellations an implementer may demand a bilateral licence instead of a pool licence, for instance where it seeks a multi-standard licence or cross-licences with the individual proprietors, or where it has already advanced with a significant number of pool contributors towards bilateral licences for the whole portfolio. Choosing the bilateral route does not relax the implementer's duty to demonstrate willingness throughout the negotiations: insistence on bilateral licensing still indicates unwillingness where the implementer gives no comprehensible reasons, fails to conclude bilateral agreements with the other pool licensors within a reasonable time, and provides no security. The Court expressly declined to follow the automatic-security trigger adopted by the Munich Local Division and the German Federal Court of Justice, treating the absence of security as one indication of unwillingness among others rather than a freestanding bar. On exhaustion it held that Art. 29 UPCA regulates the matter exhaustively and extends to method claims, but that a software library requiring compilation and integration is not an end-user product within the pool licence relied on.

Where two patents are the subject of the proceedings and the claim or application is successful in respect of only one patent, it is generally appropriate to apportion the costs in proportion to the values of the two patents. However, it may also be regarded as appropriate to order the unsuccessful party to bear the costs attributable to the respective patent.

The Court of Appeal set aside the Paris Local Division's refusal of provisional measures and ordered a preliminary injunction for France and Germany, holding that the patent is more likely valid than invalid and more likely than not infringed. On construction it applied the rule that identical terms in one claim carry the same meaning unless the description and the function of the features indicate otherwise, held that covering the chamber requires no airtight closure, and held that a second lid is "configured to couple" wherever it has its own means of interaction — a complementary press-fit shape suffices, and support from an external part does not remove that interaction. On novelty it held that an implicit disclosure exists only where the skilled person would inevitably regard the feature as necessarily implied, that the prior document must be read as a whole from the skilled person's perspective at the priority date, and that expert opinions directed at single figures rather than the whole disclosure are unsuitable, while patent documents do not generally show common general knowledge. Evidence filed for the first time on appeal was disregarded under R. 222.2 RoP. On the balance of interests it confirmed that irreparable harm is not a precondition, that a risk of lost sales between directly competing, interchangeable products suffices, and that speculative further invalidity grounds carry no weight. The headnote concerns costs: where two patents are in issue and the applicant succeeds on only one, costs are generally apportioned in proportion to the values of the patents, but it may also be appropriate to make the unsuccessful party bear the costs attributable to the respective patent.

1. The subject-matter of an action for revocation before the Unified Patent Court is determined not only by the grounds for revocation invoked within the meaning of Article 138(1) EPC, but also by the prior-art documents and arguments relied upon in support of the revocation. 2. The concept of being concerned by a patent, as laid down in Article 47(6) UPCA for revocation actions, is to be interpreted broadly. A distinction must be drawn between private and commercial acts, as Article 27(a) UPCA makes clear. Since legal persons cannot act “privately”, their acts must always be classified as commercial. As a general rule, legal persons are always to be regarded as being “concerned” within the meaning of Article 47(6) UPCA. They have, as a matter of principle, an interest in ensuring that patents which should not have been granted because a ground for revocation exists are not maintained. This applies irrespective of whether they are already active in a relevant industry.

In a headnoted decision the Milan Central Division decided a standalone revocation action brought by a company whose business is seminars and publications, coordinated with the defendant of a parallel infringement action. It held that the subject-matter of a UPC revocation action is determined not only by the grounds of revocation invoked but also by the prior art and arguments relied on, so that a revocation action resting on different prior art is not lis pendens with a pending appeal on a revocation counterclaim over the same patent. It then held that the requirement in Art. 47(6) UPCA that a revocation claimant be concerned by the patent is not displaced by Art. 65(1) UPCA and is to be read broadly: since legal persons cannot act privately, their acts are always commercial and they are as a general rule always concerned, whether or not they are active in the relevant industry. The straw-man objection failed on the facts and the question whether the UPCA prohibits straw-man actions at all was left open, as was a request for a default decision, the claimant's lawyer holding 40% of its shares not being barred from representing it. On the merits the claim as granted was anticipated by a 1958 US patent because a suitability feature in a device claim requires only that the prior device be suitable, while the attacks on the first auxiliary request failed both because they rested on prior art introduced only with the reply and, on substance, for want of substantiation.

The Court of Appeal decided three appeals against one Düsseldorf Local Division decision on an infringement action and the counterclaim for revocation of a patent for a moulded-fibre egg package. On procedure it confirmed that R. 222.2 RoP governs requests, facts and evidence and not legal arguments, so a new legal argument resting on first-instance facts is admissible while newly filed annexes were refused, and it held part of the patentee's appeal inadmissible because it rested on blanket references to first-instance submissions the impugned decision had addressed. On construction it read the disputed feature as excluding the traditional flexible locking flap, relying on the way the specification distinguishes itself from the prior art it describes, and expressly declined the first instance's rigidity-based reasoning because the patent discloses no rigidity requirement; the distinction it drew instead is where the nose sits and whether the part carrying it must flex to release, which the patentee accepted at the oral hearing. On validity it confirmed that choosing pulp from the small set of materials known for egg packaging is obvious over a starting point that leaves the material open, additionally revoked the method claim as granted for lack of inventive step because the missing manufacturing step would follow from routine testing, and maintained both independent claims in the amended form of auxiliary request 2. Infringement failed on the construction adopted, and the partial success on appeal was held too minor to disturb the first-instance cost allocation.

1. Es ist zulässig, eine Widerklage auf Nichtigerklärung davon abhängig zu machen, dass eine Verletzung des Patents festgestellt wird. 2. Der Übergang von einer bedingungslosen Widerklage auf Nichtigerklärung zu einer, die vom Eintritt einer verfahrensinternen Voraussetzung (d. h. einer Feststellung der Patentverletzung durch das Gericht) abhängt, bedeutet weiterhin, dass die Widerklage gemäß R 263.3 VerfO bedingungslos beschränkt ist (bleibt). 3. Wird gemäß dem Antrag der Widerklägerin keine Entscheidung über die Nichtigkeitswiderklage getroffen, hat die Widerklägerin grundsätzlich die Kosten der Nichtigkeitswiderklage zu tragen.

The Munich Local Division dismissed an infringement action and, on the defendants' own request, took no decision on their revocation counterclaim. It first dismissed the preliminary objection: it is exclusively competent under Art. 32 UPCA, and neither a declaration of no jurisdiction nor a stay under Art. 30 Brussels Ia was appropriate, because the earlier-seised national action concerns a divisional with different subject matter and the alleged acts relate to different territories, so the situation of fact and law is not the same and there is no risk of irreconcilable decisions. Construing the asserted claims under Art. 69 EPC and its Protocol, the panel read a conditional method step in the language of programming logic on an IF...THEN...(ELSE) pattern, so the claimed determination must be the direct and immediate cause of the claimed reaction; conduct triggered by any other condition falls outside the claim, and the claimant's evidence did not establish the disputed features with the necessary certainty. A late application to produce the defendants' source code was refused for want of feature-by-feature pleading of the information gap. The Court held that making the decision on a revocation counterclaim conditional on a finding of infringement is permissible and still an unconditional limitation under R. 263.3 RoP, but that the counterclaimant then bears that counterclaim's costs as unnecessary costs under Art. 69(3) UPCA, producing a 60/40 cost split against the defendants notwithstanding their win on infringement.