1. Key takeaways
Claim Interpretation of Product-by-Process Claims
Product-by-process claims should be interpreted based on the technical features imparted to the product by the process, not the process itself (Art. 69 EPC, Protocol on the Interpretation of Art. 69 EPC).
The court held that the key feature in this case was the ability to create a structural part with a flexible form language, achieved by using a self-expanding foam resin molded in a mold ("Gussteil in einer Gussform", feature 2; "selbstaufquellendes Schaumharz", feature 3.).
In this specific case, the court found that the claimed process involved using a self-expanding foam resin molded in a mold that replicates the three-dimensional outer shape of the structural part. This process imparted the technical feature of flexibility in form ("Formensprache", mn. 130), which was not achievable with prior art methods that used linear extrusion processes (see mn. 127 to 130). The court concluded that this technical feature was central to the inventive nature of the product and justified the protection conferred by the product-by-process claim.
Jurisdiction also for Claims based on Infringing Actions before June 1, 2023
In line with the order of the Local Division Munich issued on 10 February 2025 (UPC_CFI_342/2024, Phoenix Contact v. Industria Lombarda Materiale Electrico) the court confirmed its jurisdiction also for claims based on infringing actions before the UPCA came into effect (Art. 32(1)(f) UPCA).
Compensation for Pre-Grant Use subject to National Law
For compensation related to pre-grant use, the court must apply Art. 67 EPC with Art. 24(1)(c) UPCA. Thus, the claimant must prove the requirements for compensation under each national law of the relevant Contracting Member State. Here, compensation was only awarded for Germany, as Claimants only provided evidence under German law.
No Prior Use Right
The Court held that Defendant's evidence did not meet the requirements for establishing a prior use right. re. a prior useright according to Art. 28 UPCA to be assessed in this case under German law
- No ownership of invention: The court already denied ownership of invention. as the structural parts used by the defendant were not the same as the claimed invention. The parts in question were identified as "Füllelemente" (filling elements) rather than structural parts forming a part of the vehicle's frame. The court emphasized that the claimed invention was a frame for a vehicle with structural parts that form a load-bearing part of the frame, which was not demonstrated by the defendant's evidence.
- Insufficient acts of use: Moreover, the court held that the defendant had not taken sufficient steps to use the claimed invention commercially as defendant did not show a firm and final decision to use the invention or preparatory actions to implement such a decision.
2. Division
Local Division Dusseldorf
3. UPC number
UPC_CFI_50/2024
4. Type of proceedings
Infringement action and counterclaim for revocation
5. Parties
Claimants:
- Yellow Sphere Innovations GmbH (Claimant 1) in infringement action)
- Erwin Härtwich (Claimant 2) in infringement action)
Defendant: Knaus Tabbert AG (Defendant in infringement action, Counterclaimant in invalidity action)
Third Party Counterclaim Defendant: Alexander Christ (Counterclaim Defendant and joined proprietor with Claimant 2))
6. Patent
EP 3 356 109 B1
7. Jurisdictions
UPC, particularly Germany, France, Italy, Slovenia
8. Body of legislation / Rules
Rule 5 RoP
Art. 24(1)(c) UPCA
Art. 32(1)(f) UPCA
Art. 67 EPC
Art. 69 EPC
Protocol on the Interpretation of Art. 69 EPC
Art. 63(1) UPCA
Art. 68(1) UPCA
Art. 64(2)(b) and (4) UPCA
Art. 64(2)(e) and (4) UPCA
Rule 191 sentence 1 alternative 2 RoP
UPC_CFI_50-2024_LD_Dusseldorf_2025-04-10_product-by-process-claim Download
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
