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UPC issues two first instance decisions on infringement

July 2024

Last week, just over one year since it became operational, the UPC handed down its first major decision in an infringement action. Here, the UPC met one of its primary aims: to hear issues of infringement and validity at first instance within one year of a claim being filed.

On 3 July 2024, the UPC Dusseldorf Local Division ordered its first permanent injunction preventing German company Bette from selling and manufacturing a range of shower trays and related products, protected by Franz Kaldewei’s granted patent. The injunction covers 7 UPC member states: Austria, Belgium, Denmark, France, Italy, Luxemburg and the Netherlands.

Franz Kaldewei alleged that Bette had been selling a range of goods which infringed their patent EP 3375337 “Bathtub Sanitation Device” and sought damages, costs and an injunction. Bette counterclaimed for invalidity of the patent and also claimed it was entitled to rely on prior use.

The UPC concluded Kaldewei Patent EP’337 was invalid in its granted form but accepted an auxiliary request to amend the claims.  Kaldewei’s patent EP’337 was therefore maintained in amended form.  The Court held that prior user rights are territorially limited and that Bette had (at best) only made submissions in relation to Germany, which was not a contracting member state in dispute; therefore, they could not rely on this point.

The judges concluded that Bette had infringed in the 7 UPC member states listed above and ordered a permanent injunction.

The next day, the UPC Paris Local Division released its judgment regarding Dexcom’s action against Abbott’s alleged infringement of its blood glucose remote monitoring patent EP 3435866.  Abbott counterclaimed for revocation based on added matter, lack of novelty and lack of inventive step.

Dexcom argued that the UPC did not have jurisdiction to hear the revocation claim in relation to the German national part of the European patent because Abbott Defendants 1, 2 and 8 were not party to its corresponding infringement claim on the German national validation.  Additionally, Dexcom relied on the fact that Defendant 8 had already brought national revocation proceedings in Germany, prior to the UPC’s commencement date, arguing jurisdiction had therefore been seized in Germany.

The UPC ruled that it did have jurisdiction to decide whether to revoke the entirety of the European patent, including the German national part. The Court reasoned that not all of the parties involved in the German action were party to the UPC action, making it a “related” action, in which the UPC had discretion as to whether to exercise jurisdiction.  One factor in its decision was that the UPC could get to its decision far sooner, with the German Court having listed the oral hearing for 29 January 2025.  Bearing in mind its objective of reaching decisions efficiently and expeditiously, the Court did not consider it in the interests of the proper administration of justice to decline jurisdiction.

The patent was deemed obvious since there were only 4 choices of transmission protocol available for Dexcom to select from all of which were common general knowledge. Therefore the patent was invalid and the infringement action was dismissed.

Both decisions are open to appeal to the UPC’s Court of Appeal within two months.


This article was prepared by Senior IP Solicitor Christie Batty.

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