1. Key takeaways
Late submission of new attacks on validity
The nullity plaintiffs raised two new validity attacks during the oral hearing: a novelty attack based on D7 (Onsemi) and an inventive step attack combining D3 (Nguyen) and D4 (Lürkens). Neither of these new attacks was considered, as they were raised for the first time during the oral hearing.
The court reasoned that insofar as this may be seen as an amendment of the counterclaim pursuant to R. 263 RP, this must be rejected pursuant to R. 265 (2)(a), (b) RoP. The defendants should have raised these attacks with due care in the counterclaim rejoinder at the latest. The court referred to the decision UPC_CFI_265/2023, CD Paris, judgment of 29 July 2024, para. 23 et seq., which took an even stricter stance and rejected new attacks filed with the rejoinder (rather than already in the counterclaim). In addition, the court found that the late filing obstructed the nullity defendant in its conduct of the proceedings.
The court added that if the late filing was not seen as an amendment of the countercaim, it would nonetheless amount to a late-filed argument, which must be rejected in accordance with R. 9.2 RoP.
The court emphasizes that tactics aimed to achieve surprise effects and the introduction of new attacks based on a preliminary assessment in the oral hearing are not compliant with the Rules of Procedure.
No infringement
The accused embodiment did not infringe because it lacked the "Entkoppelelement" (decoupling element) as required by the asserted claim, which requires a complete separation of the signal path.
Costs
The patent was found valid but not infringed. The Claimant thus had to bear the costs of the infringement action, and the Defendants (= nullity plaintiffs) bore the costs of the revocation counterclaim. The court set the litigation value at EUR 500,000.00 for each action and capped reimbursable costs at EUR 112,000.00 in total.
2. Division
Local Division Dusseldorf
3. UPC number
UPC_CFI_459/2023
4. Type of proceedings
Infringement action and counterclaim for revocation
5. Parties
Claimant: Tridonic GmbH & Co. KG, represented by Dr. Markus B. Bölling and Dr. Christian Kraeh.
Defendants: CUPOWER Shenzhen Xiezhen Electronics Co., Ltd. and CUPOWER Europe GmbH, represented by Eva Geschke, Jan-Caspar Maiers, and Renate Weisse.
6. Patent(s)
European Patent EP 2 011 218 B1
7. Jurisdictions
Germany and France
8. Body of legislation / Rules
R. 263, R. 265 (2)(a), (b) RoP
R. 9.2 RoP
UPC_CFI_459 2023_LD Dusseldorf_March 7 2025 Download
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