In the UPC's first substantive decision on the merits (ACT_459767/2023), the Düsseldorf Local Division has issued a permanent injunction in a dispute between two German bath ware manufacturers. The injunction prevents the Defendant, Bette, from offering and selling infringing products in seven UPC countries: Austria, Belgium, Denmark, France, Italy, Luxembourg and The Netherlands. The Court has also ordered Bette to provide information as to its infringing acts, a recall of infringing products, and EUR 10,000 in provisional damages.
Coming just over one year after proceedings were issued, the Court's decision represents a delivery on its aim of holding the hearing within a one-year timeframe (albeit it is possible that there will be an appeal).
Background
On 1 June 2023 (the day that the UPC began operations), Kaldewai sought an injunction to prevent its German competitor Bette from offering and selling its product in Austria, Belgium, Denmark, France, Italy, Luxembourg and The Netherlands, alleging both direct and indirect infringement of its European patent EP 3 375 337 B1 (the Patent) entitled "Bathtub Sanitation Device". Notably, Germany was not included in the infringement action, despite being the domestic market for both companies. Claim 1 of the Patent is directed to a sanitary-tray device.
Bette counter-claimed for revocation of the Patent on the grounds of lack of novelty and inventive step. In addition to asserting the Patent as originally granted, Kaldewai sought to assert its patent based on an auxiliary request where claim 1 was limited to the subject-matter of granted claims 2 and 3. Bette opposed maintenance of the Patent in this amended form also.
The Düsseldorf Local Division heard the action on 16 May 2024.
Products
The claim was directed at two embodiments of Bette's product: shower trays (embodiment 1) and a minimum tub carrier (embodiment 2). Kaldewai alleged direct infringement of the Patent in relation to embodiment 1, and indirect infringement in relation to embodiment 2. Indirect infringement may arise when any unauthorised third party supplies or offers to supply, within the territory of the contracting member states in which the relevant patent has effect, any person other than a party entitled to exploit the invention, with means, relating to an essential element of the invention, for putting it into effect, where the third party knows, or should have known, that those means are suitable and intended for putting the invention into effect (Article 26 UPCA).
Embodiment 1 is pre-assembled in a factory, and embodiment 2 is a separately available moulding set that can be retrofitted under a shower tray. Bette offered embodiment 1 for sale on a German website via distributors located in each of the relevant seven contracting member states. It offered embodiment 2 for sale to distributors in each of the seven contracting member states at issue and delivered them there.
Prior use
Article 28 UPCA provides that anyone who had prior use rights in a contracting member state with regard to a corresponding national patent shall enjoy the same rights in that member state in respect of a European patent or a unitary patent for the same invention.
Bette made several arguments in support of its counter-claim that it had possession of the invention in September 2016 (i.e., before the 13 March 2017 priority date of the Patent) and that it was therefore entitled to continue working the invention due to a prior use right.
However, the Court adopted a narrow interpretation of the prior use provision in Article 28 UPCA. Bette's submissions focussed on showing a prior use right in Germany, but not in the seven contracting member states at issue before the UPC. This was not sufficient; the narrow wording of Article 28 UPCA made it clear that a prior use right must be claimed for each of the member states under their own national laws – there was no European/UPC wide right of prior use.
Validity
Bette argued that the claims of both the main and auxiliary request lacked novelty in view of an earlier German patent and were not inventive in view of the same patent, and separately, of a combination of two other prior art patents.
In considering these issues, the Court noted that the UPC Court of Appeal has already confirmed in its decision in 10x Genomics v Nanostring that questions of validity and infringement should be decided in light of Article 69 of the European Patent Convention (EPC) in conjunction with the Protocol on the Interpretation of Article 69 EPC. It is interesting to note that questions have recently been referred to the Enlarged Board of Appeal of the EPO on this topic, in light of divergent case law.
Main request
The Court held that claim 1 was novel, but that it lacked an inventive step over the prior art. When assessing novelty, the Court stated that only that which is directly apparent to a skilled person from the prior art document should be considered. In relation to inventive step, the Court considered that the distinguishing feature of the claim (the fact that the mouldings are made of rigid plastic foam) was simply a matter of routine further development and would not have required a creative effort on the part of the skilled person. Interestingly, when considering inventive step, the Court did not explicitly refer to the problem-solution approach used at the EPO, but similar reasoning appears to have been applied.
Auxiliary request
When considering the auxiliary request, the Court held that the new features introduced by previous dependent claims 2 and 3 (further limitations on the mouldings) were inventive over the cited prior art. The auxiliary request was therefore considered novel and inventive.
Infringement
The Court held that both embodiments of Bette's product fell within the scope of the claims of both the invalid main request, and the valid auxiliary request – this was not disputed by Bette. Given that embodiment 1 was clearly offered on Bette's own website it was found to directly infringe the Patent as upheld based on the auxiliary request. Embodiment 2 was considered an essential means of the claimed invention, Bette met the requisite knowledge requirement, and Bette offered embodiment 2 in each of the concerned contracting member states to its authorised dealers and delivered to them there where local installation companies/craftspersons put the invention into effect. Accordingly, the double territorial requirement for indirect infringement was met. Because of this finding, the Court did not consider the requirements of indirect infringement of a European patent which is subject to the UPCA but is not a Unitary Patent further i.e., is it necessary for the offer/delivery and use of the product to be in the same member state, or is it sufficient that offer/delivery is made in one member state and use be made in one of the another member states?
Remedies
As well as issuing a permanent injunction, the Court directed Bette to provide Kaldewai with information on the extent to which it had committed infringing acts, and to recall infringing products and permanently remove them from distribution channels. It further ordered EUR 10,000 in provisional damages and awarded costs equally in relation to the counterclaim for revocation, but unequally in terms of the infringement action (with Kaldewai bearing 15% of the costs).
It seems likely that the case will be appealed to the Court of Appeal, so the case should continue to be monitored.