BARDEHLE PAGENBERG combines the expertise of attorneys-at-law and patent attorneys. As one of the largest IP firms in Europe, BARDEHLE PAGENBERG advises in all fields of Intellectual Property, including all procedures before the patent and trademark offices as well as litigation before the courts through all instances.
Headnote: The claimant’s legitimate interest in the publication of a decision (Art. 80 UPCA) may, depending on the circumstances of the individual case, follow from the fact that the defendant has marketed the attacked embodiment by explicitly referencing to the key technology protected by the patent
Headnote: The claimant’s legitimate interest in the publication of a decision (Art. 80 UPCA) may, depending on the circumstances of the individual case, follow from the fact that the defendant has marketed the attacked embodiment by explicitly referencing to the key technology protected by the patent
Publication of the decision under Art. 80 UPCA (in public media; at the request of the applicant and at the expense of the infringer) is justified where the defendant explicitly marketed the infringing product by referencing the patented technology (here: “flying focal spot” technology; which was considered to represent the core of the claimed teaching).
Notably, if publication is permitted, it needs to be restricted in number of publications and targeted audience (e.g. public media targeting the medical industry in the respective technical field rather than daily newspapers) – here, the court follows the case law established by the Court of Appeal (UPC_CoA_464/2024, Decision of 25 November 2025, para. 199 – 200, Meril v. Edwards).
Spatially defined claim features must not be reduced to mere functionality; “inferior embodiments” incorporating all structural features still infringe literally even if they do not (fully) achieve the technical effect of the patent
From the decision: “If the contested embodiment incorporates all the spatial and physical features of the patent claim identically, the fact that the effects specified in the patent are not (fully) achieved does not mean that there is no infringement. Rather, even such an ‘inferior embodiment’ infringes the patent to the letter” (MN 108).
Private prior use rights under Art. 28 UPCA require a firm and final decision to commercialize before the priority date, with concrete preparatory acts
To prove private prior use, an invention notification alone is insufficient. The defendants failed to demonstrate a firm decision to commercialize, with development spanning 15 years across multiple disconnected projects and no evidence of continuous, systematic progression toward commercial use.
Furthermore, territorial constraints need to be considered when the right to private prior use is assessed.
The possibility of a software-based deactivation of a specific function necessary for the realization of the claimed technical teaching can only preclude destruction/recall/removal if it is ensured that the attacked embodiment cannot be restored to a patent-infringing state
LD Düsseldorf confirms their “case law” established for destruction (UPC LD Düsseldorf, decision of 14 January 2025, UPC_CFI_16/2024, Ortovox v. Mammut, headnote 2) and extends it to recall and removal. Proof of permanent and irreversible modification is crucial.
Proportionality of injunction for medical devices needs to be considered in view of interests of patients
The interests of patients justify an exception to the right to injunctive relief and corrective measures (only) if the infringing embodiment (i) is the sole available treatment method or (ii) represents an improvement compared to other available treatment methods that results in a notable enhancement of patient care.
2. Division
Düsseldorf Local Division
3. UPC number
UPC_CFI_758/2024
UPC_CFI_259/2025
4. Type of proceedings
Main infringement action and counterclaim for revocation
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.
