ACT_39091/2024

Wig and manufacturing method thereof

InfringementMain Infringement ActionParis LDInfringement Action—

Overview Decisions Reasoning Citations Documents Timeline

Plain-English summary

N.J. Diffusion SARL (in collective insolvency proceedings) sued Gisela Mayer GmbH before the Paris Local Division for direct and equivalent infringement of EP 2 404 516, a patent covering an edge-to-edge ribbon design method for making wigs. The court dismissed all infringement claims: Gisela Mayer's products did not fall within the claims' edge-to-edge scope, and the equivalence claim also failed because the modified means did not perform essentially the same function to achieve essentially the same effect. Costs of EUR 50,000 were fixed as a claim against N.J. Diffusion's insolvency estate.

Accepted arguments

What the court agreed with — by party.

The scope of protection of EP 2 404 516 is limited to edge-to-edge placement of ribbon strips as expressly defined in claim 1; the overlapping/superposition embodiment in the description does not fall within the patent's scope of protection
RespondentLegal basis: Art. 69 EPC and Protocol on Interpretation; purposive claim construction
Note: Court held that the claims expressly limit the scope to 'bord à bord' (edge-to-edge) placement and cited Hamburg LD (Agfa v Gucci, UPC_CFI_278/2023) that description specifications inconsistent with granted claims cannot serve as basis for broader interpretation.
Infringement by equivalence (doctrine of equivalents) claim submitted after the statement of defence is admissible as it constitutes adaptation of the claimant's case in response to defence arguments and did not change the nature of the procedural strategy
ClaimantLegal basis: UPC Rules of Procedure; admissibility of late claims
Note: Court held the equivalence claim was not tardy (filed at reply stage, not initially) because it was a justified response to defence arguments and defendant had the opportunity to reply in its rejoinder.

Rejected arguments

What the court did not agree with — and why.

Direct infringement of EP 2 404 516 (wig/hairpiece patent — edge-to-edge ribbon design) by Gisela Mayer
ClaimantLegal basis: Art. 69 EPC
Reason: Patent scope is limited to edge-to-edge placement as defined in the claims; Gisela Mayer's products did not fall within this scope.
Infringement by equivalence of EP 2 404 516
ClaimantLegal basis: Art. 26 AJUB (Art. 26 UPCA); Art. 69 EPC and Protocol on Interpretation; doctrine of equivalents
Reason: Equivalence claim failed on the merits; the court applied the 'same function, same effect' test (smallest common denominator among UPC member state approaches) and found the modified means in Gisela Mayer's product did not essentially perform the same function to achieve essentially the same effect.
Personal condemnation of the judicial administrator and mandataire judiciaire (insolvency practitioners) for costs
RespondentLegal basis: EU Regulation 848/2015 (lex concursus); French commercial law Art. L.622-22
Reason: Under French insolvency law (lex concursus), liability of insolvency officers requires a characterised autonomous fault; Gisela Mayer merely showed they chose to continue the litigation, which does not demonstrate such fault.

Key legal principles

Doctrines and rules cited in the reasoning.

Purposive claim construction — claims define scope of protection; description embodiments not reflected in claims cannot broaden scope Doctrine of equivalents — UPC applies harmonised test: do the modified means perform essentially the same function to achieve essentially the same effect?Admissibility of equivalence claim raised at reply stage — permissible where it responds to defence arguments and defendant had opportunity to reply Insolvency proceedings — liability of insolvency practitioners for costs requires characterised fault under lex concursus

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Claim construction notes

EP 2 404 516 covers a wig manufacturing method using ribbon strips placed 'bord à bord' (edge-to-edge). The court construed the scope of protection as limited to this edge-to-edge mode; the description also mentioned a superposition/overlapping embodiment but this was inconsistent with the granted claims and therefore outside the scope of protection. The court cited Hamburg LD (Agfa v Gucci) as support for this principle.