Key takeaways
No stay of the proceedings due to national nullity proceedings re. German part of patent-in-suit
- Requirements of R. 295(a) RoP not fulfilled, appeal of the German Federal Court of Justice (FCJ) against the first instance decision of the German Federal Patent Court (FPC) is not expected to be given rapidly.
- A stay according to R. 295(l) RoP, Art. 30(1) Brussels I Regulation is also not appropriate, if applicable at all in addition to the special R. 295(a) RoP: UPC has exclusive jurisdiction for revocation actions (Art. 32 UPCA) and the jurisdiction of the FPC and FCJ is limited to the German part of the European patent, contrary to the UPC (Art. 34 UPCA).
No stay of the proceedings due to parallel infringement proceedings in Germany
There are no longer any German infringement proceedings pending as the Düsseldorf Higher Regional Court has dismissed the appeal in the national infringement proceedings against the Defendants 2) and 4). There is also no res judicata with regard to Defendants 2) and 4) due to the exceptions made in the claim requests.
Standard of claim interpretation
- The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense; rather, the description and the drawings must always be taken into account as explanatory aids for the interpretation, and not only be used to eliminate any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline and that its subject-matter also extends to that which, after examination of the description and the drawings, appears to be the patent proprietor's desired scope of protection (UPC_CoA_335/2023). As stated in the Protocol to Art. 69 EPC, when interpreting a patent claim, a balance must be struck between adequate legal certainty for third parties and adequate protection for the patent proprietor.
- The skilled person reads the patent claim in a way that makes technical sense and takes into account the entire disclosure of the patent. Claims are read with a mind willing to understand them in context (cf. EPO, decision of March 6, 2001, Ref. T 190/99). The same applies to the description and the drawings, taking into account their purpose, namely to describe or illustrate the basic concept of a claimed invention by means of detailed examples.
The LD Munich dealt in its decisions with the claim interpretation of the Düsseldorf Regional Court and of the FPC, but made its own claim interpretation.
Late submission of further prior art document
Insofar as the Defendants based their revocation action on document D7 for the first time in the reply to the counterclaim, this submission was late and was not admissible:
- The introduction of a further document with the reply to the counterclaim for a lack of inventive step attack with regard to the granted version, constitutes a new factual submission and thus an extension of the counterclaim for revocation.
- Defendants have not submitted anything which, pursuant to R. 263.2 RoP, could justify the admission of this extension of the counterclaim despite the delay.
Liability – Legal Standard
Liability as "infringer":
- According to Art. 63, 64, 67 and 68 UPCA, injunctions and orders can be issued against the infringer.
- Provisions of the UPCA for determining patent infringement, the legal consequences of patent infringement and the debtor of claims and measures are to be interpreted autonomously, i.e., without recourse to national law, in compliance with Union law (s. LD Düsseldorf, order of September 6, 2024, UPC_CFI 166/2024).
- The term "infringer" is a concept under EU law that goes back to the Directive 2004/48/EC, and must therefore be interpreted in accordance with the principle of primacy and respect for Union law (Art. 20 UPCA) and the binding decisions of the CJEU in this respect (Art. 21 UPCA).
- An "infringer" is anyone who uses a patent contrary to Art. 25 or Art. 26 UPCA without the consent of the patent proprietor.
- The CJEU clarified in a decision relating to trademark law (C-148/21, C-184/21 – Christian Louboutin/Amazon Europe Core Sàrl et al.) that the term "use" in its ordinary meaning presupposes active conduct and direct or indirect control over the act of use, because only the person who directly or indirectly has control over the act of use is actually in a position to terminate the use and thus comply with the prohibition; examples of active acts: offering and marketing of goods.
- In view of the uniform European legal framework for the enforcement of intellectual property rights and the similarity of acts of use with regard to products protected by patent law or by trademark, there is no reason not to apply the case law of the CJEU on the concept of infringer in trademark law to patent law as well. Thus, an "infringer" within the meaning of Art. 25 and 26 UPCA is anyone who actively carries out the acts of use in question, which also includes legal persons.
Liability due to participation?
- LD Munich left open whether, in addition, on the basis of a dynamic interpretation of the UPCA regarding the legal principles generally recognized in the contracting member states or on the basis of national provisions applicable in individual cases, there is, e.g., for CEOs of a company, a liability for participation in the infringement according to Art. 63(1) sentence 1 UPCA.
Liability as "intermediary":
- A natural person who acts as CEO/director of a company that commits acts of use that infringe patents may be considered an intermediary (Art. 11 sentence 3 2004/48/EC) and held liable accoding to Art. 63(1) sentence 2 UPCA.
- In order for an economic operator to qualify as an "intermediary" within the meaning of Art. 63(1) sentence 2 UPCA, "it must be established that he offers a service which is likely to be used by another person to infringe one or more intellectual property rights, without it being necessary for him to have a special relationship with that person or those persons." (CJEU, C-494/15 – Tommy Hilfiger Licensing LLC and Others v Delta Center a. s., on Art. 11 of Directive 2004/48/EC). The only decisive factor is that the service can be used to infringe an intellectual property right (here: patent).
- The term "intermediary" is not limited to providers of intermediary services within the meaning of Regulation (EU) 2022/2065. Decisive is in the context of Art. 63 UPCA that the intermediary does not use the subject matter of the patent itself, but merely offers a service that is used for infringement and thereby creates a prerequisite for the infringer to be able to carry out its patent-infringing act.
- The activity of a CEO is to be classified as the "provision of services" insofar as the characteristic obligation of the legal relationship between the CEO and the company implies the performance of a specific activity for remuneration. The characteristic service of a CEO is the management of the company's business and he is therefore in a position to (co-)determine the entrepreneurial activities.
- The liability of CEOs as intermediaries according to Art. 63(1) sentence 2 UPCA corresponds to the normative objective to ensure legal protection also by injunctions against persons who are not themselves infringers, but who are in a position to prevent infringements due to a service provided by them in the context of the infringement and used by the infringer. The service provided to the company by a CEO gives the company the capacity to act and thus creates a prerequisite for the company to be able to carry out its infringing act; the service provided by a CEO in this way has a significantly higher risk propensity with regard to possible infringing acts than the activity of, e.g., the lessor of market stalls.
- This also applies in the case of a multi-member management body of a patent infringing company for members of the management body whose primary area of responsibility does not lie in manufacturing and/or distribution, but for example in the area of finance or human resources. This is because such members of the management body generally also provide services for the infringing company that cannot be disregarded without the specific infringing acts ceasing to exist.
Liability of Defendants 2), 3) and 4) – Companies
Liability of the companies was confirmed due to various infringing activities demonstrated: offering of infringing goods on the website, sales activities, mentioning in EU-Declaration of Conformity, warranty declarations and general terms of conditions, holding of domain, etc.
Liability of Defendants 1), 5) and 6) – CEO/Directors
- Defendant 1) – as CEO of Defendant 2) and Director of Defendant 4) – and Defendants 5) and 6) – as Directors of Defendant 4) – can be held liable as an intermediary pursuant to Art. 63(1) sentence 2 UPCA due to the possibility of influencing the activities of Defendants 2) and 4) by virtue of their functions.
- As CEO and Director they provided services in relation to Defendants 2) and 4) which were used by them to infringe the patent-in-suit, and thus created a prerequisite for Defendants 2) and 4) to be able to carry out their patent-infringing acts at all. As CEO/director they could and can also influence the infringing acts by issuing corresponding instructions to the subordinate employees.
- The limitations laid down in the national legal systems regarding the liability of organs of legal persons, such as the requirement of a breach of duties of care, have only been reflected in the UPCA to the extent that intermediaries are only liable for injunctive relief, but not for damages.
Division
LD Munich
UPC number
UPC_CFI_390/2023, ACT_583273/2023, CC_584891/2023
Type of proceedings
Infringement action: Decision on the mertis
Parties
Claimant: Koninklijke Philips N.V.
Defendants: 1) Stephen Edrich, 2) Belkin GmbH, 3) Belkin International, Inc., 4) Belkin Ltd., 5) Marc Cooper, 6) Paul McKenna
[Clarification on our own behalf: The representatives of the parties were incorrectly assigned in the published judgment]
Patent(s)
EP 2 867 997
Jurisdictions
Germany
Belgium
France
Finland
Italy
Netherlands
Austria
Sweden
Body of legislation / Rules
Art. 29, 21, 25, 26, 32, 34, 63, 64, 67, 68, 69, 80, 82 UPCA, R. 118, 119, 263, 295, 354 RoP, Art. 29, 30, 36 Brussels I Regulation
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