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Hurom Co., Ltd. v. NUC Electronics Europe GmbH, WARMCOOK
ORD_11865/2025
Mannheim (DE) Local Division
Generic Order
EN
EP2028981
of national law and set out with a sufficient degree of substantiation why that rule of national law supports its argument.
Infringement action; applicable substantive law
Represented by Klaus Haft
Schwalbacher Strasse 76 - 65760 - Eschborn -
DE
FR
Represented by Christian
Kau
European Patent No EP 2 028 981
Panel of the Local Division in Mannheim
This decision is delivered by the presiding judge Tochtermann, the legally qualified judge Böttcher as judge-rapporteur and the legally qualified judge Perrotti.
LANGUAGE OF PROCEEDINGS: English
SUBJECT-MATTER OF THE PROCEEDINGS: Patent infringement action
DATE OF THE ORAL HEARING: 28 January 2025
A juice extractor comprising:
a cover (100) having an inlet port formed on one side of an upper part thereof and a rotary shaft hole (120) formed in the center of an inner part thereof;
a housing (500) installed on a lower part of the cover, and having a guide jaw formed on a bottom of the housing, a draff outlet port (570) and a juice outlet port (560) formed apart from each other on a lower end part of the housing, a waterproof cylinder having a through hole and formed in the center of the lower end part of the housing, and a pressure discharge passage formed around a lower part of the waterproof cylinder;
a screw (200) having an upper rotary shaft formed on an upper part of the screw (200) to be rotatably inserted into the rotary shaft hole, a plurality of screw spirals formed on an outer surface of the screw, an inner ring formed at a lower end of the screw to project downward and having a plurality of screw gears rotatably inserted into the pressure discharge passage, a lower space formed inside the inner ring to receive the waterproof cylinder therein, and a lower rotary shaft formed in the center of a lower part of the screw and a polygonal shaft hole formed thereon;
a mesh drum insertable into the guide jaw of the housing, the mesh drum (300) having a mesh structure formed on an outer wall of the mesh drum (300) to discharge juice to the juice outlet port, and a plurality of wall blades longitudinally formed on an inner surface of the mesh drum;
wherein the housing accommodating the screw is longitudinally fixed to an upper side of the drive unit (600) so as to press, grind and extract juice from materials put into the inlet port and to discharge the draff.
a screw (200) having an upper rotary shaft formed on an upper part of the screw (200) to be rotatably inserted into the rotary shaft hole, a plurality of screw spirals formed on an outer surface of the screw, an inner ring formed at a lower
end of the screw to project downward and having a plurality of screw gears rotatably inserted into the pressure discharge passage, a lower space formed inside the inner ring to receive the waterproof cylinder therein, and a lower rotary shaft formed in the center of a lower part of the screw and a polygonal shaft hole formed thereon;
a mesh drum insertable into the guide jaw of the housing, the mesh drum (300) having a mesh structure formed on an outer wall of the mesh drum (300) to discharge juice to the juice outlet port, and a plurality of wall blades longitudinally formed on an inner surface of the mesh drum; a rotary brush installed (400) between the housing and the mesh drum (300) to be rotated, and having a brush holder in which a brush for continuously sweeping the mesh drum and the housing is installed; and
wherein the pressure discharge passage of the housing is connected to the juice outlet port (560)
direct infringement of claim 2 EP 2 028 981 B1 - and/or,
a discharge jaw formed at an end of a lower part of the spirals of the screw (200) by internally cutting a lower border of the screw; a bottom ring formed at an end of a lower part of the mesh drum (300), and having an inner ring insertion hole formed thereon to accommodate the inner ring; a discharge slant surface formed on an upper surface of the bottom ring, the discharge slant surface being in the form of a circular arc of which the depth is increased in a rotating direction of the screw; a mesh drum discharge hole connected to an end of the discharge slant surface to discharge the draff out of the mesh drum (300) and a housing discharge hole formed on one side of the bottom of the housing and connected to the mesh drum discharge hole and the draff outlet port (570); wherein the discharge jaw discharges the draff to the draff outlet port (570) through the housing discharge hole by pushing the draff to the mesh drum discharge (360) hole as the discharge jaw is rotated along the discharge slant surface (350).
wherein a circular projection is formed at an edge of an inner side of the bottom ring (340), circular groove is formed on an outer side of the circular projection, an outer ring (260) is formed on an outer periphery of the inner ring (250) to project downward, and a circular projection insertion hole is formed between the inner ring (250) and the outer ring (260); wherein the outer ring is rotatably inserted into the circular groove to extend a contact area with the draff being guided by the discharge jaw (225), and the circular projection is inserted into the circular projection insertion hole to minimize an inflow of the draff to the pressure discharge passage.
wherein a plurality of engagement jaws are formed on a border of a lower end part of the cover (100), a plurality of engagement projections are formed on an outer periphery of an upper end of the housing (500), and engagement hooks are formed on the drive unit; wherein the housing (500) that is secured to the cover (100) by the engagement of the engagement jaws with the engagement projections is detachably secured to the drive unit by the engagement hooks.
wherein the brush (400) is composed of a net brush (410) attached to an inner surface of the brush holder (430) to continuously sweep the outer wall of the mesh drum (300), and a housing brush attached to an outer surface of the brush holder to continuously sweep the inner wall of the housing (500).
wherein a brush gear (440) is mounted on a lower part of the brush holder (430), and an intermediate gear is rotatably mounted on the lower surface of the housing (500) to be engaged with the brush gear (440); wherein the intermediate gear, which is engaged with the screw gear, rotates the brush gear.
wherein a slant surface is formed on a lower end surface of the inlet port of the cover (100) in the rotating direction of the screw (300).
direct infringement of claim 6 EP 2 028 981 B1 -
direct infringement of claim 7 EP 2 028 981 B1 -
direct infringement of claim 8 EP 2 028 981 B1 -
direct infringement of claim 9 EP 2 028 981 B1 -
III. to order, that in the event of any violation of the injunction in accordance with no. II above, the Defendants shall pay severally to the Court a penalty sum of at least EUR 2,000 per infringing unit and/or a penalty sum of at least EUR 10,000 for each day of violation of this injunction.
I. to hold that the Defendants shall pay damages to the claimant compensating all losses caused by the infringing acts of EP 2 028 981 in
-France since 2 April 2019 and as long as EP 2 028 981 B1 is in force;
-Germany since 14 April 2015 and as long as EP 2 028 981 B1 is in force
-Italy, The Netherlands, Denmark, Romania, Poland, Spain, United Kingdom, Turkey since 23 September 2015 and as long as EP 2 028 981 B1 is in force
II. to order the Defendants to pay to the Claimant EUR 50.000 (fifty thousand euros) in compensation for the moral prejudice suffered;
III. to order the Defendants to inform the Claimant to the extent of which they have committed infringing acts referred to under C.I., stating
i. the origin and distribution channels;
ii. the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained;
whereby details requiring confidentiality may, at the discretion of the court, be redacted or made available only to certain persons;
iii. within twenty-one days of the date of service of the decision, supported by evidence verified by an independent accountant, under a penalty of EUR 10.000 per delay day from the month following the date of service of the judgment to be handed down;
IV. to order the Defendants to pay the Claimant interim awards on damages in the amount of EUR 25,000 as provided under Rule 119 of the Rules of Procedure pending the communication of the requested accounting information, the Claimant retaining the right to bring an action at a later date for the determination of the damages;
V. to order the Defendants to destroy at their own expense the products, material and/or implements referred to under A. II. - as a subsidiary request: referred to
under B.II. - which are in their possession and/or ownership within Germany, Denmark, France, Italy, The Netherlands and to provide the Claimant with proper evidence certified by an independent bailiff as to how and when the destruction was carried out;
VI. to order the Defendants to recall the products referred to under A. II. - as a subsidiary request: referred to under B.II. - which have been placed on the market from the channels of commerce, with reference to the infringement determined by a court of law (judgement of […] on […]) and with the binding promise to reimburse any fees and to assume any necessary packaging and transport costs as well as customs and storage costs associated with the return and to take back the products,
whereby an exhaustive list of all recipients is to be provided to the Claimant;
'On [date of decision], the Unified Patent Court has ruled that NUC Electronics Europe GmbH and WARMCOOK infringed European Patent No.2 028 981 held by Hurom Co., Ltd., by selling, and offering for sale Kuvings 'AUTO 10'. As a consequence NUC Electronics Europe GmbH and WARMCOOK were ordered to terminate all commercial activities related to these products in Germany, Denmark, France, Italy, The Netherlands immediately. We apologize for any inconvenience this may cause and will be reaching out directly to commercial clients and customers to offer an appropriate solution.'
"NUC Electronics Europe GmbH and WARMCOOK have infringed Hurom's European Patent No.2 028 981 with its products Kuvings AUTO 10. Those products may no longer be offered for sale or sold in Germany, Denmark, France, Italy and The Netherlands, either on- or offline. We hereby request you to remove (images of) these products from your websites, from your shops and from other promotional and sales channels, to cease all sales and offers for sale of these products, and to return to us these products within seven days from the date of this letter. We will refund the purchase price and all costs associated with the return of the products to you."
IX. In any case, to order the Defendants to pay the claimant the sum of EUR 56.000 as an interim award on the legal costs and other expenses as provided under Article 69 of the Unified Patent Court Agreement and Rule 118(5), 119 and 150(2) of the Rules of Procedure.
I.1. to declare and judge that the Claimant has not demonstrated that the Defendants infringes the claims 1 to 4 and 6 to 9 of the European patent EP 2 028 981;
I.2. Consequently, to dismiss and reject the Claimant's action of April 2, 2024 (ACT_17336/2024) in its entirety.
II. In the alternative, it is requested as a subsidiary request
to grant the Claimant's action of April 2, 2024 (ACT_17336/2024) on the basis of the auxiliary claim in part B. only, subject to the specification that the claim expressly includes the specific model no. 'KHS-2520CE' in addition to the name of the contested product 'AUTO10'.
III. With regard to the Claimant's further requests (part C.), the following is requested also in the alternative as a subsidiary request:
a. temporally
aa. for acts of infringement in Germany for the period after March 5, 2024;
bb. for acts of infringement in Denmark for the period after June 1, 2023;
cc. for acts of infringement in France for the period after April 18, 2024;
dd. for acts of infringement in Italy for the period after June 1, 2023 and
ee. for acts of infringement in the Netherlands for the period after April 18, 2024;
b. territorially, to the countries of Germany (for the Defendant 1), and France (for the Defendant 2); and as a subsidiary request to countries that are Contracting Member States;
3 to dismiss the Claimant's claim for information pursuant to request C. III. Insofar as it relates to the production of the infringing items and to the sale/delivery to noncommercial customers, and to reduce the penalty payment further requested in part C. III. iii) to a reasonable rate not exceeding EUR 250 per day of delay, the delay starting only after a period of 30 days after the communication of the Court's decision pursuant to Rule 118.8 S. 1 RoP;
IV. In addition, it is requested, to order the Claimant to pay to the Defendants the amount of EUR 45,000 as an interim award on the legal costs incurred.
pressure discharge passage has the function of supporting the removal of liquid, which excludes a groove, in which juice remains, to be regarded as pressure discharge passage. Accordingly, there have to be means to drain the juice such as a connection to the juice outlet.
therefore, being below the bottom of the housing, is not suitable for draining juice or draff accumulated therein. They further point out that the screw gears of the contested embodiment are only formed on an outer side of the inner ring of the screw, whereas the inner ring is closed on its inner side (contrary to Fig. 4 of the patent-in-suit), thus not pumping juice or draff out of the groove.
general terms are admissible, in particular sufficiently specific, because such requests and consequently the order whereby the injunction is issued have to be interpreted in the light of the underlying reasoning (cf. Court of Appeal, order of 14 February 2025, UPC_CoA_382/2024 mn. 158). To other requests nothing else applies. By submitting pictures of the contested embodiment and elaborating on which properties, according to Claimant's view, infringe the patent-in-suit, the Claimant made the subject matter of the alleged infringement sufficiently clear. Therefore, contrary to the Defendants, it is not necessary to designate the model number either even if there were several different products marketed under the indications 'Kuvings', 'Auto10' or 'slow juicer' as Defendants suggest.
certified the agreement by affixing its 'dojang' stamp. The Defendants do not challenge the legal effect of 'dojang' stamps. Contrary to the Defendants, the fact that the inventor's 'Dojang' stamp on the agreement and on its written affidavit (exhibit P 29) deviate from each other, do not cast any doubt. In the interim procedure, the Claimant was given the opportunity to elaborate in writing on the issue, and the Defendants were heard in writing (workflow to ORD_65318/2024). The inventor declared convincingly in his second written affidavit (exhibit P36) that he has merely replaced the old 'Dojang' stamp in the meantime. In addition, the head of Claimant's intellectual property department declared equally convincingly in his written affidavit (exhibit P37) that he then explained the details of the agreement to the inventor up-front and that he was present when the inventor affixed his 'dojang' stamp later on. Moreover, the additional documents (exhibits P14, P15) confirm the transfer.
burden of demonstration and proof of its ownership (which would be not mitigated if no indicative effect of register entries applied), the defendant has to make specific objections against the validity of a transfer agreement. In this regard, nothing else applies as with regard to substantive national laws of the UPCA member states when a party wishes to rely on such deviating national laws favorable for its legal position (cf. below under 'applicable law'). On the instant facts, the Defendants would have to demonstrate which specific provision of Korean law prohibits the assumed participation of the inventor and that the assumed participation results in the invalidity of the approval and consequently of the agreement itself even in cases where the forbidden vote was not decisive in view of the other votes cast. This is all the more true as the Claimant is the registered proprietor of the patent in suit. As far as the Defendants challenge the alleged authority of KIPA to certify agreements, similarly, they do not elaborate on the issue, but restrict themselves to point out only that Art. 52 (Establishment of Korea Invention Promotion Association)) and 53 (Business Activities) of the Korean Invention Promotion Association by their wording do not confer such an authority to KIPA (brief of 7 January 2025 in the interim procedure, para. 8 et seqq.).
transfer the materials put into an inlet. According to the patent in suit, such juice extractors require wide space when used or kept in custody. Since the juice extraction is performed as the materials are horizontally moved, the juice-extracting speed becomes low, and thick juice cannot flow downward well, but remains in the drum. Since, in conventional juicers, a rotary shaft is provided on one side of the screw only, the screw is shaken when rotating, and collides with wall blades formed on an inner wall of the juice-extracting net, which results in noise and abrasion of the screw (cf. para. [0002]-[0005]). Against this background, the patent in suit sees the aim of the invention in providing an extractor which can prevent beans or vegetables from becoming stale, can heighten the juice extraction speed and can make extracted juice well flow downward without remaining in a housing, irrespective of the kinds of vegetables or fruits. Furthermore, it should, by preventing the shaking of the shrew, reduce noise and abrasion. In addition, the juice extractor should be able to make material automatically move downward without pressing, and should be able to be used continuously without the necessity of frequently disassembling and cleaning it (cf. para. [0001], [0007]-[0010]).
[1A] A juice extractor comprising:
[1B] a cover (100) having an inlet port formed on one side of an upper part thereof and a rotary shaft hole (120) formed in the center of an inner part thereof,
[1C] a housing (500) installed on a lower part of the cover,
[1D] [the housing] having a guide jaw formed on a bottom of the housing ([1C.1]) ,
a draff outlet port (570) and a juice outlet port (560) formed apart from each other on a lower end part of the housing, ([1C.2])
[1E] a waterproof cylinder having a through hole and formed in the center of the lower part of the housing, ([1C.3])
[1F] a pressure discharge passage formed around a lower part of the waterproof cylinder, ([1C.4])
[1G] a screw (200) having
an upper rotary shaft formed on an upper part of the screw (200) to be rotatably inserted into the rotary shaft hole ([1G.1]) ,
[1H] [said screw (200) further having] a plurality of screw spirals formed on an outer surface of the screw, ([1G.2])
[1I] [said screw (200) further having] an inner ring formed at a lower end of the screw to project downward and having a plurality of screw gears rotatably inserted into the pressure discharge passage, ([1G.3])
[1J] a lower space formed inside the inner ring to receive the waterproof cylinder therein, and ([1G.4])
a lower rotary shaft formed in the center of a lower part of the screw and a polygonal shaft hole formed thereon, ([1G.5])
[1K] a mesh drum insertable into the guide jaw of the housing, the mesh drum (300) having a mesh structure formed on an outer wall of the mesh drum (300) to discharge juice to the juice outlet port, and [the mesh drum (300) having] a plurality of wall blades longitudinally formed on an inner surface of the mesh drum,
[1L] a rotary brush (400) installed between the housing and the mesh drum (300) to be rotated, and having a brush holder in which a brush for continuously sweeping the mesh drum and the housing is installed,
[1M] a drive unit (600) having a polygonal shaft that is inserted into the polygonal shaft hole through the through hole of the waterproof cylinder, and rotating the screw (200) at a low speed,
[1N] wherein the housing accommodating the screw is longitudinally fixed to an upper side of the drive unit (600) so as to press, grind and extract juice from materials put into the inlet port and to discharge the draff.
require that the inlet port extends above the basic level of the cover. Only preferred embodiments call for a certain design of the inlet port, e.g. a design which provides a lower end surface of the inlet port on which a slant surface may be formed (cf. subclaim 9, para. [0019], [0026], [0032]). An extension above the level of the cover is not implied by the word 'port' either. In other contexts, the patent description, which established its own lexicon and can define terms that deviate from common usage, differentiates between a hole and a port (cf., e.g., para. [0013] ('housing discharge hole' and 'draff outlet port'), para. [0045] ('housing discharge hole'), para. [0041], [0042] ('mesh drum discharge hole')). However, this distinction does not demand an understanding according to which a port has to extend beyond the surface of its surroundings. The respective design of draff outlet, juice outlet and inlet ports shown in Fig. 1 (prior art) and Fig. 2 to 6 are exemplary designs only with no sufficient pointer in the patent specification that a port is restricted to such a design. The patent in suit specifies an opening to be a port merely if the opening establishes a connection to the outside of the juice extractor with respect to those (non-exhaustive) elements which are listed in claim 1, in particular with respect to the housing. As far as the patent description states in paras. [0024], [0080] that the materials are naturally moved downward by the gravitation and the rotation of the screw, this relates to the transport within the housing. As far as paras. [0026], [0085] and similar [0059] state that the material are automatically put in the inlet port without pressing the materials downward, the same applies. In addition, these paragraphs (as paras. [0082], [0083]) concern a preferred embodiment, i.e. one with a slant surface on the lower side of the lower surface of the cover. Should claim 1 call for the ability to extract juice from vegetables with branches and leaves, this ability relates to the extraction process itself only (cf. para. [0003], [0079]). Even if an ability required by claim 1 to move the materials automatically downward without pressing and to extract juice from vegetables with leaves and branches implied an ability of the inlet port to support this, the patent would leave the measures to achieve such ability open and would not limit the skilled person in finding appropriate designs. There is no sufficient indication in the patent description that the inlet port is restricted to a port that provides a guiding function in itself. In particular, claim 1 does not exclude further elements like a rotating blade or knife, which convey the material to the screw.
an inlet port, as long as an opening through the cover exists. A requirement that the inlet port has to be formed as one single integral body does not exist. As far as para. [0031] states that the inlet port is eccentrically formed from the center in which the rotary shaft hole (120) is positioned, this concerns a preferable embodiment only ('It is preferable that…'). Apart from that, as the function shows, the eccentric position would be fulfilled as long as the inlet port's part, which forms the actual connection between the spaces above and below the cover, is positioned eccentrically.
maximum height of the liquid level in the housing. As far as paras. [0061], [0062] (and para. [0083] accordingly) mention the risks that, without a connection of the pressure discharge passage to the juice outlet port, the juice overflows the waterproof cylinder into the through hole and may cause pollution of inter alia the motor of the drive unit, these paragraphs deal with an exemplary embodiment only (cf. paras. [0028], [0058] and caption 'Best Mode' before para. [0028]). Even in the embodiment of para. [0061], the through hole is not protected by the shape of the waterproof cylinder alone, but the protection needs additional means like the connection with the juice outlet port. Apart from that, the description in particular in paras. [0061], [0062], [0083] does not impose a strict requirement that the aforementioned risk has to be avoided. At least the description leaves it open to the skilled person how to protect the through hole.
[0086]). However, the description offers no indication that this has to be achieved by avoiding a packing. This is rather achieved by the longitudinal (instead of horizontal) alignment of the juice extractor and the brushes cleaning the mesh (paras. [0024], [0065], [0071], [0080], [0086], [0010]). These measures result in less draff/juice to be removed, which is caught in the meshes.
embodiment of para. [0072] to [0076] (Figs. 6, 7) is an alternative to the preferred embodiment of para. [0056] with respect to the engagement hooks, the term 'secure' has the same meaning as in [0056], and the function addressed in para. [0075] in this regard is the same as in para. [0056].
alignment. Rather, these indications of orientation are the mere consequences of feature [1N] calling for a longitudinal alignment when the housing is fixed to the drive unit. Apart from that, the fact that a vertical alignment may be deduced from other parts of claim 1 does not exclude emphasizing the vertical alignment in feature [1N] where the engagement of the housing with the drive unit is specifically addressed.
EurPatentprozess-HdB/Sonntag § 147 mn. 147; Nieder, GRUR 2014, 627 (628)). As main argument these authors refer to Art. 3 (c) UPCA and Art. 34 UPC, respectively. According to this view, the territorial scope stipulated by Art. 34 UPCA presupposes an accordingly unified substantive law (cf. Tilmann/Plassmann/v. Falck/Dorn, EPGÜ Art. 34 mn. 15). For traditional European bundle patents, which are subject to the UPCA, Art. 25 et seqq. UPCA form the national law of the UPC member states within the meaning of Art. 2 (2), Art 64 (1), (3) EPC (cf. Nieder, GRUR 2014, 627 (628)). According to another view, the traditional European patent is to be regarded as an independent international patent, the content of which, pursuant to Art. 2 (2), Art. 64 EPC, is defined by reference to national law. In this context, Art. 64 (3) EPC obliges the EPC member states to apply their national procedural law to infringements (cf.Tilmann/Plassmann/W. Tilmann, EPGÜ Einf. mn. 74 et seqq.). The UPCA would use the authorization pursuant to Art. 142 EPC to restrict the reference to national law pursuant to Art. 64 (1) EPC to the extent that the rights conferred by a European bundle patent are harmonized by provisions of the UPCA (cf. Tilmann/Plassmann/W. Tilmann, EPGÜ Einf. mn. 89). Art. 24 UPCA is considered to constitute a hierarchy of norms which places the UPCA above the EPC (cf. Haedicke, GRUR 2014, 119 (120); Schroer, GRUR int 2013, 1102 (1107)).
1257/2012 of the European Parliament and the Council of 17 December 2012 implementing enhanced cooperation in the area of creation of unitary patent protection, hereinafter 'UPR') establishing the European patent with unitary effect refers to Art. 142 EPC, whereas the UPCA does not mention Art. 142 EPC - just as it does not mention Art. 149a EPC either - and may undisputedly be regarded as special convention on a common court in the meaning of Art. 149a (1) EPC (cf. McGuire, GRUR Patent 2024, 466 mn. 44), is not decisive. The same applies to the facts that the drafting history may suggest that Art. 25 et seqq. UPCA are the result of a shift of the substantive law from the UPR to the UPCA, and that the extension of the UPC's jurisdiction to traditional European bundle patents was the result of a policy decision to ensure sufficient case load (cf. McGuire, GRUR Patent 2024, 466 mn. 28). All these aspects, still, are not sufficient to assume that the contracting member states of the UPCA intended that the UPC should apply the national patent laws to future acts infringing traditional European bundle patents within the territories of said member states, and thus to consider the wording of Art. 25 to 28 UPCA to be a mere oversight. Such an assumption would result in an overly complicated fragmentation of law and would undermine the second recital of the UPCA, which clearly highlights 'that the fragmented market for patents and the significant variations between national court systems are detrimental for innovation'. This aim is not - at least not explicitly - restricted to European patents with unitary effect. Moreover, the fact that Art. 29 UPCA governing exhaustion explicitly (and consequentially) refers to traditional European bundle patents only, because, for European patents with unitary effect, exhaustion is governed by Art. 6 UPR, serves as a further indication that the contracting member states chose the wording intentionally and leads away from an assumption of a mere mistake in the wording of Art. 25 to 28 UPCA. Similarly, Art. 34 UPCA again refers specifically to traditional European bundle patents only, because the effect of decisions concerning European patents with unitary effect is self-explanatory. Finally, the drafting history clearly contradicts the assumption that the applicability of Art. 25 et seqq. UPCA to traditional European bundle patents is a mistake. In fact, the previous versions of Art. 25 et seqq. UPCA did relate to traditional European bundle patents only and were extended to European patents with unitary effect afterwards (cf. Art. 2 (3), Art. 14c et seqq. UPCA draft version of 14 May 2008 (Council document 9124/08), Art. 2 (5), Art. 14f et seqq. UPCA draft version of 12 October 2012 (Council document 14750/12), (adopted) proposal by the then Presidency of the Council of the European Union Cyprus of 17 October 2012 (Council document 14963/12)). Thus, there was from the outset a clear
intention to harmonize the substantive law applicable to European bundle patents (cf. also W. Tilmann, GRUR Patent 2025, 51 mn. 101).
either the UPC or the competent national court if the UPC applies Art. 25 et seqq. UPCA to such acts. There may be significant differences between the substantive law of the UPCA and the national law outside the UPCA (cf. McGuire, GRUR Patent 2024, 466 mn. 3 et seq. as well as Vissel GRUR 2015, 619 et seqq. pointing inter alia at the example of an indirect infringement which under section 10 German Patent Act only amounts to infringement in case of acts directed at the territory of Germany whereas according to Art. 26 UPCA acts in any contracting member state suffice so that there may be factual scenarios in which there is no indirect infringement under section 10 German Patent Act but under Art. 26 UPCA). However, the fact that the claimant would have the right to determine the content of the claim and to choose between different claims - at least in the transitional period - respectively is nothing unknown to European Union law (cf. e.g. Art. 3 of Directive 1999/44/EC of the European Parliament and of the Council of 25 May 1999 on certain aspects of the sale of consumer goods and associated guarantees). Assuming such right, the claimant would make the choice by filing its statement of claim either with the UPC or the national court which then would find its basis in the legislatory decision of the contracting member states allowing for two parallel regimes in the transitional period. In this case, the issues as to from what point in time the choice would be binding and which implication the withdrawal of an opt-out pursuant to Art. 83 UPCA may have in that context can be left open on the instant facts.
objectives or their general scheme that such effect must be given to them (cf. ECJ, judgement of 22 June 2022, C-267/20, GRUR-RS 2022, 14015 mn. 31 - Volvo AB ua/RM; judgement of 21 December 2021, C-428/20, BeckRS 2021, 39569 mn. 31 and the case-law cited - Skarb Państwa). Second, any retroactive effect requires justification. For instance, the application, for the purpose of calculating fines imposed for competition infringements, of new guidelines and in particular of a new method of calculating the amount of a fine contained therein, even to infringements committed before the adoption or the amendment of those guidelines, does not breach the principle of non-retroactivity in so far as those new guidelines and that new method were reasonably foreseeable at the time when the infringements in question were committed (cf. ECJ, judgement of 26 January 2017, C604/13 P, BeckRS 2017, 100513 mn. 42 and the case-law cited). The aforementioned principles are part of the primary Union law such as the Treaty on European Union (TEU) und the Treaty on the Functioning of the European Union (TFEU) (see ECJ as cited supra).
categorize such acts not in a formalistic manner which only takes into account, if, when viewed from a purely natural perspective, such acts can be referred to as separable acts, but which looks at the scenario from a normative and therefore evaluative perspective. Before this backdrop it is justified to apply the UPCA as a harmonized set of national law of the contracting member states of the UPCA to ongoing acts, if the infringer continues its infringing behaviour although he could have stopped the infringement in the light of the entry into force of the new regime on 1 June 2023. Therefore, it is not decisive that the alleged infringer manually started its production line every day anew so that one could regard all infringing acts of manufacture separately on a daily basis as individual acts of past use before or after the entry into force of the UPCA. What is decisive is that from an evaluative perspective the alleged infringer could have stopped its ongoing production in the light of the entry into force of the UPCA but still made the decision to continue. An overly formalistic view would also have to differentiate between the different acts of use of the invention as it may be argued that a decision to offer the infringing product based on a marketing campaign which started before 1 June 2023 and continues thereafter is inseparable so that information concerning the campaign has to be rendered based on Art. 67 UPCA for all time periods alike, whereas for acts of manufacture it had to be differentiated between acts of manufacture before and after 1 June 2023. Under these circumstances, it appears to be justified to apply the rules of the UPCA and Rules of Procedure to , when viewed from an evaluative perspective, such ongoing acts which had been committed prior to the entry into force as well as to the acts committed after the entry into force. However, in order to avoid potential hardship, the party concerned may rely on the provisions of the respective national law in force prior to the entry into force of the UPCA with regard to acts of past use which lie before 1 June 2023. Thus, a defendant may defend itself by pointing to advantageous provisions of the respective national law as well as a claimant may base its claims on provisions of national law being favourable to its position compared to the provisions of the UPCA and the RoP. In both cases, the party which advances the argument based on national law has to elaborate on such rules of national law and set out with a sufficient degree of substantiation why that rule of national law supports its argument. It is not for the UPC to determine and analyse the legal arguments based on various national laws ex officio. It were not only unrealistic to expect that the panels of the UPC even though consisting of judges from different jurisdictions mastered the national laws of all participating member states but it also does not
amount to an undue burden to have the party which is now - based on a legislative decision of the member states - allowed to advance its case or defend itself in one unified forum to elaborate on provisions of different national laws where acts of infringement occurred in various territories. The same were true, if the case had been heard by one national court having jurisdiction to adjudicate upon infringement allegations based in multiple jurisdictions. Moreover, the UPCA and the Rules of Procedure foresee in various scenarios that the party concerned will have to elaborate on national law (see e.g. Art. 32 (1) (f), 24 (2) (c) UPCA (compensation derived from the provisional protection conferred by a published European patent application), Art 28 UPCA (private prior use rights), Art. 72 UPCA (certain aspects of periods of limitation, cf. McGuire GRUR Patent 2024, 466 mn. 52). For these reasons, it is also not for the court in the first place to appoint a court expert to provide expertise on foreign law. According to Art 57 UPCA the court has a discretion whether or not to appoint a court expert (cf. Tilmann/Plassmann/v. Falck/Dorn, Einheitspatent, Art 53 EPGÜ para 45 et seqq.). As with finding of facts, it is for the party to submit its legal arguments on national law in the first place. In this context, a party may consider to either submit arguments on national law by its representatives and/or support these arguments by party-appointed expert opinions or suggest to furnish the court with such party-expert opinion in case the court deems this appropriate. Only where the legal opinions on national law submitted by the parties do not converge and the court itself is not able to evaluate the question of national law appropriately, the court will have to consider, if a court-appointed expert will have to be appointed, which may be suggested by the party concerned (cf.: Bopp/Kircher/Böttcher, Handbuch Europäischer Patentprozess, 3 ed, § 23 paras 175 et seqq.; Ahrens GRUR 2017, 323, 325, Haft/Lohr, GRUR Patent 2023, 69, 71).
innovation (recital No2 to the UPCA). In most cases where a claimant seeks to enforce its patent rights it will only be bound to do so for lack of knowledge to which extent infringement occurred in the different territories. Once in possession of sufficient information it will then concentrate on the most important territories and will only embark upon the tedious task of the determination of damages caused in the economically most important countries and thereby alleviate the disputants as well as the court from examining various national laws. Furthermore, the claimant will in many instances not know in which temporal scenario his case resides. It may be uncertain, if infringement only occurred prior to the entry into force of the UPCA, or if the case concerns a scenario extending beyond 1 June 2023 or if claimant is faced with a scenario where all relevant facts only lie after 1 June 2023 so that solely the UPCA and RoP apply. Hence, it is only after the information under Art. 67 UPCA had been rendered that claimant will know if and to what extent rules of national law play a role and may limit or extend claimant's claims compared to the rules enshrined in the UPCA and the RoP and are worth being litigated upon. In consequence, it is not for the operative part of the decision on the merits according to R. 118 RoP to limit the extent of information time-wise up-front based on arguments of national law applicable to acts lying before 1 June 2023. Rather information is to be rendered in accordance with the requests of the claimant and is limited by the date of the grant of the patent or the publication date of the patent application respectively on the one hand and, as applicable, by Art. 72 UPCA on the other hand.
clarifies that the additional features of the subclaims do not appear relevant in the absence of a counterclaim for revocation (cf. Reply, para. 169), the request has to be interpreted to aim at claim 1 only. To that extent, the declaration of the infringement serves the legitimate interest of Claimant to have it confirmed in the operative part of the decision that infringement has been found, in particular towards the operator of the Amazon marketplace, where the Defendants operate a web shop .
disproportionality from the outset but would concern the foundation of the statement the claim only.
exempted from the calculation of damages. Apart from that, since the assignment encompasses claims for compensation for the past use, the date from which the patent in suit is enforceable for the Claimant towards third parties is at the most relevant only for the relevant person on whom the damage calculation has to be based on, which can be determined even more so in the subsequent proceedings on the amount of damages anyway.
quires special circumstances which goes beyond the usual consequences of an infringement suffered by the patent holder and which are not fully compensated by the other remedies. The Claimant did not bring forward any specific fact which would justify such compensation. As far as substantive national law applies, the Claimant did not underpin such claim either.
because the information obtained must not be used for any other purpose than the purposes mentioned above. In case of an indication of a specific risk of misuse, the information can be further protected by protective orders pursuant to R. 262A RoP.
takes due account of the interests of both parties. The auditor's costs if the infringer makes use of this option are part of the costs of providing information, which must be borne by the infringer.
verify the destruction, the infringer has an obligation to prove the execution of the destruction towards the claimant. However, there is no need to order such obligation separately because it lies in the vital interest of the infringer to indicate the fulfilment of its obligation beyond any reasonable doubts towards the claimant in order to avoid an enforcement proceedings. The way how the infringer achieves this is for the infringer. The claimant regularly has no right to have the evidence presented through a bailiff. Such right would presuppose special circumstances, e.g. in the event of established unreliability on the infringer's part. Such special circumstances, for which the burden of demonstration and proof lies on the claimant, are not brought forward on the instants facts.
is the infringer's responsibility how he achieves such success in order to fulfil his obligation. Therefore, the order of the general-held measures requested by Claimant at hand is neither justified nor necessary either.
A.
B.
C.
whereby the Defendants each reserve the right to disclose the names of their non-commercial customers to an impartial auditor only, chosen by Claimant and paid by the respective Defendant, who, upon Claimant's request, confirms or denies whether a specific non-commercial customer is contained in the disclosure and who, in all other cases, is subject to confidentiality towards the Claimant.
Order no. ORD_68865/2024 in ACTION NUMBER: ACT_17336/2024
UPC number: UPC_CFI_159/2024
Action type:
Infringement Action
Delivered in Mannheim on 11 March 2025
Presiding judge Tochtermann
Legally qualified judge Böttcher
Legally qualified judge Perrotti
For the Sub-Registrar: Kranz, Clerk LD Mannheim
An appeal against the present Decision may be lodged at the Court of Appeal, by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of its notification (Art. 73(1) UPCA, R. 220.1(a), 224.1(a) RoP).
Information about enforcement (Art. 82 UPCA, Art. Art. 37(2) UPCS, R. 118.8, 158.2,
354, 355.4 RoP)
An authentic copy of the enforceable decision or order will be issued by the DeputyRegistrar upon request of the enforcing party, R. 69 RegR.