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ACT 459767/2023

—·EP3375337B1

Case details
Status
—
Action
Infringement
Category
Main Infringement Action
Parties
Claimants
Reps: Cordula Schumacher (Arnold Ruess); Benjamin Schnäbelin (Arnold Ruess)
Division
Dusseldorf LD
Judges
Technology
Consumer Goods · Bathroom Fixtures
Language
—
First decided
Jul 3, 2024
Claims
At issueall
Infringedall
Notes: Düsseldorf Local Division found infringement of EP 3 375 337 B1; excerpt does not enumerate specific claim numbers in the operative part, infringement found across the patent.
Decisions
  • 2024-07-03
    InfringedInjunction grantedInfringement meritsInfringement Action

    Decision of the Düsseldorf Local Division finding infringement of EP 3 375 337 B1 by Bette GmbH & Co. KG in an action by Franz Kaldewei GmbH & Co. KG concerning bathroom basin technology. The defendant was ordered to cease and desist, recall and remove products from distribution channels, and pay EUR 10,000 as a provisional award of damages with a declaration of further damages liability. The revocation counterclaim was partially successful (50% costs for revocation). Key holdings address prior use rights under Art. 28 UPCA (must be proven country by country), the scope of the information right under Art. 68 UPCA, and the concept of permanent removal from distribution channels as distinct from recall.

    Legal issues:Patent infringement Art. 25 UPCAPrior use rights Art. 28 UPCA (national basis required)Information right Art. 68 UPCARecall and permanent removal from distribution channelsPartial validity challenge (revocation counterclaim)
    Damages: 10,000
Documents
  • 55B6A3D3EBD78D7A01A3718ACFCE149B_de.pdf2024-07-03DE
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Franz Kaldewei GmbH & Co. KG sued Bette GmbH & Co. KG before the Düsseldorf Local Division for infringement of EP 3 375 337 B1 (bathroom basin technology patent). The court found direct infringement, ordered injunction, recall and removal from distribution channels, and EUR 10,000 provisional damages. Key holdings established that the prior use right under Art. 28 UPCA must be pleaded and proven country-by-country under the national law of each member state, and that the right to book inspection is limited to damages proceedings and not available in infringement proceedings; the revocation counterclaim was partially successful (costs split 50/50).

Accepted arguments
What the court agreed with — by party.

  • Direct infringement of EP 3 375 337 B1 (bathroom basin technology) by Bette GmbH & Co. KG in the relevant UPC member states

    ClaimantLegal basis: Art. 25(a) UPCA

    Note: Düsseldorf Local Division found direct infringement; injunction, recall, removal from distribution channels, and EUR 10,000 provisional damages awarded.

  • Prior use right under Art. 28 UPCA must be established separately for each UPCA member state based on the national law of that state

    ClaimantLegal basis: Art. 28 UPCA

    Note: Court accepted that the prior use right is country-by-country and Bette failed to adequately plead it for each protected state.

  • The right to information under Art. 68 UPCA in combination with R. 191 RoP includes the right to request information about cost factors relied upon by defendant in calculating profits, as well as supporting documents (invoices or delivery notes)

    ClaimantLegal basis: Art. 68(3)(a)(b) UPCA; R. 191 RoP

  • Permanent removal from distribution channels is a distinct and separate measure from recall

    ClaimantLegal basis: Art. 68 UPCA; R. 191 RoP

    Note: Court confirmed these are separate, flanking measures; removal is conditional on the infringer having the actual and legal means to effect it.

Rejected arguments
What the court did not agree with — and why.

  • Prior use right defense under Art. 28 UPCA

    RespondentLegal basis: Art. 28 UPCA

    Reason: Defendant failed to adequately plead the prior use right country-by-country as required; the right under Art. 28 UPCA is governed by the national law of each protected member state and must be established separately for each.

  • Right to inspection of books (Offenlegung der Bücher) in the infringement proceedings

    ClaimantLegal basis: Art. 68 UPCA; R. 131.1(c); R. 141 RoP

    Reason: Court held that inspection of books under Art. 68 UPCA / R. 131.1(c) / R. 141 RoP is part of the damages quantification procedure and cannot be ordered in the main infringement proceedings; it is only applicable after a damages declaration.

  • Retrospective extension of time limit for procedural submissions

    RespondentLegal basis: UPC Rules of Procedure

    Reason: Request for retrospective time extension must be made no later than at the same time as the submission for which it is sought; a subsequent retrospective request has no prospect of success.

Key legal principles
Doctrines and rules cited in the reasoning.
Prior use right under Art. 28 UPCA is governed by national law of each UPCA member state and must be pleaded country-by-countryRight to information under Art. 68(3) UPCA and R. 191 RoP covers cost factors used in profit calculation and supporting documents (invoices / delivery notes) but not full book inspection in infringement proceedingsBook inspection (Offenlegung der Bücher) only available in damages quantification proceedings, not infringement proceedingsRecall and permanent removal from distribution channels are distinct, independent remediesRetrospective time extension must be sought no later than simultaneously with the submission in question

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