UPC Analytics
ENDE
Overview · Filed: Jun 17, 2024

UPC_CFI_324/2024

PILE SHOE

InfringementMain Infringement ActionMunich LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Tiroler Rohre GmbH (Austria) sued SSAB Swedish Steel GmbH and SSAB Europe Oy for infringement of EP 2 839 083 B9, a patent for a driving pile tip device (Rammspitze) used in foundation pile construction. The Munich Local Division found infringement of the patent as amended pursuant to auxiliary requests, granted an injunction, and ordered recall, destruction and information disclosure; SSAB's invalidity counterclaim was upheld against the original claims but the amended claims were maintained, with costs split 20% claimant and 80% defendants.

Accepted arguments
What the court agreed with — by party.

  • The accused pile tip device has the required capability under the patent claim even if the patented function is only occasionally or accidentally achieved

    ClaimantLegal basis: Art. 25 UPCA; Art. 54 EPGÜ

    Note: Court held that infringement exists where the device has the required capability; whether the patented effects are regularly, occasionally, or accidentally achieved and whether the user intends to achieve them is irrelevant.

  • Burden of proof for impossibility of infringement lies with defendants, not the patentee

    ClaimantLegal basis: Art. 54 UPCA

    Note: Where defendants argue infringement is impossible due to features outside the patent claim, they bear the burden of proof for that assertion; claimant need not address features outside the claim.

  • Patent as amended (auxiliary requests) avoids invalidity and is infringed

    ClaimantLegal basis: R. 30 RoP; Art. 65 UPCA

    Note: Court accepted patent amendments via auxiliary requests, maintaining the patent in amended form and finding infringement of the amended claims.

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

  • Invalidity of EP 2 839 083 B9 as originally granted (revocation counterclaim)

    RespondentLegal basis: Art. 65 UPCA

    Reason: Patent was maintained in amended form via auxiliary requests; original invalidity finding did not defeat the infringement claim.

  • Infringement is impossible due to features outside the patent claim that prevent the patented function from being achieved

    RespondentLegal basis: Art. 25 UPCA

    Reason: Defendants bear the burden of proof for this impossibility argument; infringement turns on capability under the claim, not on whether the patented effect is always or ever intended.

Key legal principles
Doctrines and rules cited in the reasoning.
Device infringement requires only capability (Eignung) to achieve the patented function, not regular or intended achievementDefendant bears burden of proving impossibility of infringement when relying on features outside the patent claimClaimant under Art. 54 UPCA not required to address features outside the claim scopePatent can be maintained in amended form via auxiliary requests to avoid invalidity while preserving infringement finding

Browse other cases on this principle.

Claim construction notes

The case concerned EP 2 839 083 B9, a pile shoe (Rammspitze) patent. The court's capability-based infringement test focused on whether the challenged pile tip embodied the structural features recited in the amended claims, irrespective of whether concrete poured through the device's channels actually achieved the patented distribution effect in every use.