- within Intellectual Property topic(s)
- in United States
- with readers working within the Retail & Leisure industries
- within Intellectual Property, Transport and Environment topic(s)
In Raccords et Plastiques Nicoll v. First Plast France and others UPC_CFI_612/2024, 24 October 2025, the Paris Local Division (LD) of the UPC has applied a generalised approach to the test for infringement by equivalence, one already used by it and the Mannheim LD in earlier proceedings.
The decision on the merits addressed both literal infringement and infringement by equivalence in an action brought by Raccords et Plastiques Nicoll against First Corporation branches in France, Italy and Spain. The parties disagreed on which national test for infringement by equivalence to apply, with Raccords proposing a test consistent with the French, German and Italian national practices to assess equivalence and First Corporation putting forward the Dutch test comprising of four questions.
The Court had to determine a doctrine of equivalents (DoE) test to apply since there is no such specific test within the UPC Agreement (UPCA) provisions (although Art 24 UPCA includes as sources of law to be applied by the UPC, the European Patent Convention (EPC) which does refer to infringement by equivalence). The Court's conclusion was that, in the absence of agreement between the parties on the correct test to apply, it was necessary to adopt a harmonised approach. Put simply, to answer the question: Do the modified (or substituted) means essentially fulfil the same function to achieve the same effect?
The opportunity for parties to agree a different approach (see for example Plant-e v Arkyne (UPC_CFI_239/2023, 22 November 2024) where The Hague LD used a Dutch approach to DoE by agreement between all parties and again by agreement in Washtower v BEGA (UPC_CFI_479/2025, 11 September 2025) would still appear to be open, since the Court here set out its test after highlighting that there was no such agreement in place. However, the emphasis of the decision is that the test to be used in such a situation is one which encompasses the common features of DoE tests across UPC states; that for infringement by equivalence to be found, the modification or substituted element must fulfil the same function to achieve the same effect.
Background
This case concerned the alleged infringement of Raccords' EP3272938 for "invisible" gutter covers for drainage channels (hydraulic channel gratings) by First Corporation's "Ghost" cover, sold with its "Pratiko" gutter. The patent concerns an assembly of a gutter channel and a cover intended to be partially concealed beneath floor coverings. The cover includes at least two spacer elements separated by a drainage opening and aligned in the longitudinal direction with the height of the slot defined as the height of the floor covering. Raccords brought a claim for literal infringement, and in the alternative argued there was infringement by equivalence. The Defendants denied infringement and did not counterclaim for revocation.
Principles of patent interpretation
In assessing literal infringement, the Paris LD adopted the "standard of patent interpretation established by the UPC Court of Appeal" in NanoString Technologies and others v. 10x Genomics, Inc and another (UPC_CoA_335/2023, 6 August 2024) and SES-imagotag SA v. Hanshow Technology Co. Ltd and others (UPC_CoA_1/2024, 13 May 2024) in accordance with Article 69 of the European Patent Convention. The principles of the "standard of patent interpretation" were outlined as follows:
- "The patent claim is not only the starting point, but also the basis for determining the scope of protection of the European patent.
- The interpretation of a patent claim does not depend solely on the strict and literal meaning of the terms used. On the contrary, the description and drawings must always be used to aid in the interpretation of the patent claim and not only to resolve ambiguities in the patent claim.
- However, this does not mean that the patent claim serves only as a guideline and that its subject matter can extend to what the patent holder had envisaged, taking into account the description and drawings.
- The patent claim must be interpreted from the perspective of a person skilled in the art.
- By applying these principles, the aim is to combine adequate protection for the patent holder with sufficient legal certainty for third parties.
- These principles for interpreting a patent claim also apply to the examination of infringement and validity of a European patent. This follows from the function of patent claims which, under the European Patent Convention, serve to define the scope of patent protection under Article 69 EPC and thus the rights of the patent proprietor in the designated Contracting States under Article 64 EPC, while taking into account the conditions for patentability set out in Articles 52 to 57 EPC."
File wrapper – limitation of the patent's reach by statements made during prosecution
The Court also considered the representations made by the patentee in the course of the grant procedure, referencing the UPC CoA decision in Alexion v Samsung (UPC_CoA_402/2024, 20 December 2024) where the CoA concluded that the applicant's statements during the grant proceedings are only indicative: "the applicant's assertions during the grand proceedings ... can be seen as an indication of the view of the person skilled in the art at the filing date". The patentee was "squeezed" via statements made during the grant procedure which used an interpretation that if applied to the claims meant that the alleged infringing product was not caught by the patent under literal infringement.
Infringement by equivalence
As it was found that there was no literal infringement under Article 25 UPCA, the Paris LD turned to assess Raccords' argument in the alternative that there was infringement by equivalence. Referring to its own decision in NJ Diffusion SARL v. Gisela Mayer GmbH (UPC_CFI_363/2024, 1 August 2025) which itself referred to the Mannheim LD's decision in DISH Technologies L.L.C. and another v. AYLO Premium LTD and others (UPC_CFI_471/2023, 6 June 2025), the Paris LD stated that,
"in the absence of an agreement between the parties to apply a particular national law on [the DoE], it is appropriate to apply case law pursuing a harmonised approach to equivalence, using criteria derived from a compromise between the different doctrines used within the Member States, in order to comply with the objectives of the UPC."
In view of these decisions and also that of the Brussels LD (Nelissen v Orthoapnea UPC_CFI_376/2023, 17 January 2025) the Court concluded that for infringement by equivalence to be found, "it is necessary that at least the function be reproduced" and that "in the absence of such reproduction, there would in any case be no reproduction by equivalence".
Noting that the parties did not agree on an approach to the DoE, the Paris LD concluded that:
"... in the absence of agreement between the parties on an applicable test, it is necessary to adopt a harmonised approach and answer the following question: Do the modified (or substitute) means essentially fulfil the same function to achieve the same effect?"
This was the same generalised approach as that taken in Dish v Aylo. The function claimed to be reproduced by equivalence in the allegedly infringing products was that of the spacers. The Paris LD concluded that the function of these claimed by Raccords did not clearly follow from the characteristics in claim 1 of the patent and would not be easily deduced by a person skilled in the art, thus no infringement by equivalence was found. The Paris LD rejected Raccords' claims in full.
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.
