Key takeaways
Burden of proof for non-infringement
If the defendant claims that infringement is impossible due to factors outside the scope of the patent claim, the defendant must prove this. The claimant does not need to address such external factors.
In the decision, the defendant unsuccessfully argued that infringement was impossible due to the design of existing pile pipes. However, Defendant failed to prove it was technically impossible to manufacture a suitable pipe.
"Suitability" for infringement
A device infringes if it has the claimed capabilities, regardless of the user's intent or frequency of achieving the patented effect.
Even occasional achievement of the patented features is sufficient for infringement.
Claim interpretation
Claim terms are construed in context of the entire patent, including description and drawings.
The court rejected the Defendant's narrow interpretation of claim terms.
Patent validity and amendment
Patents can be amended during UPC proceedings to address validity challenges based on cited prior art.
While the original claim 1 was revoked for lack of novelty, the claimant's amended claim (auxiliary request 3) was upheld as novel and inventive.
Injunctions, recall, and destruction orders
Injunctions, recall, and destruction orders are available and proportionality objections require substantiation.
The court granted broad injunctive relief and corrective measures, rejecting the Defendant's proportionality arguments due to lack of evidence.
Costs and scope
Cost allocation depends on the parties' relative success. UPC decisions apply across all member states where the patent is valid.
Costs were split 80/20, and the judgment is immediately enforceable with penalties for non-compliance.
Division
Local Division Munich
UPC number
UPC_CFI_324/2024, UPC_CFI_487/2024
Type of proceedings
Main infringement action with counterclaim for revocation and requests for amendment of the patent
Parties
Tiroler Rohre GmbH (Claimant in infringement action and Defendant in counterclaim for revocation)
vs.
SSAB Swedish Steel GmbH, SSAB Europe Oy (Defendant in infringement action and Claimant in counterclaim for revocation)
Patent(s)
EP 2 839 083
Jurisdictions
UPC contracting member states where the European patent is valid (Germany, Austria, Belgium, Denmark, Finland, France, Italy, Luxembourg, Netherlands, Portugal, Slovenia, Sweden)
Body of legislation / Rules
Art. 33(1)(b), 33(3)(a), 34, 47(1), 54, 63, 65(2), 73(1), 76(2), 82 UPCA
Rule 118.8 RoP, 220.1(a), 224.1(a) RoP
Art. 138 EPC
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.
