UPC Analytics
ENDE
Overview · Filed: —

ACT_6665/2024

FOAM RESIN STRUCTURAL PART FOR A FRAME OF A VEHICLE AND PRODUCTION METHOD THEREFOR

InfringementMain Infringement ActionDusseldorf LDInfringement Action—
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Erwin Härtwich and Yellow Sphere Innovations GmbH sued Knaus Tabbert AG before the Düsseldorf Local Division for infringement of EP 3 356 109 B1, a product-by-process patent for a foam resin structural part used in vehicle frames. The court found infringement, granted an injunction, ordered recall and removal from distribution channels, destruction of infringing products, and awarded EUR 100,000 in preliminary damages, while dismissing both the revocation counterclaim and the third-party counterclaim. The court also held that UPC jurisdiction covers Art. 67 EPC compensation for use during the patent application's publication period.

Accepted arguments
What the court agreed with — by party.

  • Product-by-process claims cover products with the technical properties conferred by the specified manufacturing process, regardless of how the infringer manufactures the product

    ClaimantLegal basis: Art. 25 UPCA; German patent law on product-by-process claims

    Note: The court held that the decisive question for product-by-process claims is how the skilled person understands the manufacturing process indications and what conclusions they draw for the technical properties of the resulting product; Knaus Tabbert's structural foam components were found to embody these properties.

  • UPC has jurisdiction over compensation for use of published EP application (Art. 67 EPC period)

    ClaimantLegal basis: Art. 32(1)(f) UPCA; Art. 24(1)(c) UPCA; Art. 67 EPC

    Note: The court held that compensation for use during the application publication period falls within UPC jurisdiction, applying Art. 67 EPC as national law on the basis of Art. 24(1)(c) UPCA since no unified rule exists. Claimants were required to plead the conditions for each individual member state.

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

  • Patent EP 3 356 109 is invalid (counterclaim for revocation)

    RespondentLegal basis: Art. 65 UPCA

    Reason: The revocation counterclaim was dismissed; the patent was upheld.

  • Third-party counterclaim (Dritt-Widerklage) against Alexander Christ should succeed

    Respondent

    Reason: The third-party counterclaim was dismissed.

  • Software-based deactivation of infringing function is an alternative to destruction

    RespondentLegal basis: Art. 64 UPCA

    Reason: The court ordered destruction rather than software-based deactivation, finding that deactivation could only be accepted if it were certain that the product could not be re-enabled into an infringing state.

Key legal principles
Doctrines and rules cited in the reasoning.
product-by-process claim construction: technical properties conferred by process are decisiveUPC jurisdiction over Art. 67 EPC compensation for use during application publication perioddestruction as corrective measure; software deactivation insufficient unless re-enablement impossiblecosts apportionment where both parties partially succeed

Browse other cases on this principle.

Claim construction notes

For product-by-process claims, the court applied a construction focused on what technical properties the claimed manufacturing process confers on the resulting product. The skilled person's understanding of the manufacturing process description and the resulting structural/material properties of the foam resin structural part is the decisive interpretive question, not the specific process steps as such.