UPC Analytics
ENDE
Overview · Filed: Jan 26, 2024

UPC_CFI_33/2024

COLOR-MIXING CONVERGENT OPTICAL SYSTEM

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

SWARCO FUTURIT sued STRABAG Infrastructure & Safety Solutions at the Vienna Local Division for infringement of EP 2 643 717, a patent covering a color-mixing convergent optical system used in traffic signals. The court found infringement, granted an injunction, recall, disclosure, and destruction orders, and awarded SWARCO its costs; the invalidity defence raised by Strabag was held inadmissible because no counterclaim for revocation had been filed. SWARCO's request for publication of the judgment was refused.

Accepted arguments
What the court agreed with — by party.

  • Strabag's traffic signal products infringe EP 2 643 717 (color-mixing convergent optical system)

    ClaimantLegal basis: Art. 25 UPCA

    Note: The Vienna Local Division found direct infringement and granted full injunctive relief including recall and destruction.

  • invalidity cannot be raised in proceedings where no counterclaim for revocation has been filed under R. 25 and R. 42 RoP

    ClaimantLegal basis: R. 25 RoP; R. 42 RoP

    Note: Strabag raised added-matter invalidity as a shield but had not filed a counterclaim for revocation; the court held this bars substantive consideration of the invalidity argument (Leitsatz 1).

  • permanent removal from distribution channels is an independent measure separate from recall under UPCA

    ClaimantLegal basis: Art. 63 UPCA

    Note: Court accepted this as a distinct remedy (Leitsatz 2), subject to the infringer having legal and factual ability to carry it out.

  • intervener who causes additional costs to the winning party should bear at least its own costs

    ClaimantLegal basis: R. 315.4 RoP (by analogy)

    Note: Court derived from R. 315.4 RoP that an intervener is treated like a party for cost purposes and must bear its own costs if the supported party loses.

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

  • publication of the judgment in trade press should be ordered

    ClaimantLegal basis: Art. 80 UPCA

    Reason: Under Art. 80 UPCA the court has discretion; publication is appropriate only when claimant's interests outweigh prejudice to defendant and are not already secured by other remedies; claimant did not demonstrate a concrete prevention interest.

  • patent is invalid due to added matter (Überschreitung der Ursprungsoffenbarung)

    RespondentLegal basis: R. 25 RoP; R. 42 RoP

    Reason: Because Strabag raised invalidity only as a defence without filing a counterclaim for revocation as required by R. 25 RoP, the court declined to consider the invalidity argument on the merits.

Key legal principles
Doctrines and rules cited in the reasoning.
invalidity may only be raised as a defence through a formal counterclaim for revocation under R. 25 and R. 42 RoP; bare invalidity defence without counterclaim is inadmissiblepermanent removal from distribution channels is a distinct and independent remedy from recall under Art. 63 UPCApublication of judgment under Art. 80 UPCA requires specific preventive interest; not granted automaticallyintervener bears its own costs if the supported party loses (derived from R. 315.4 RoP)

Browse other cases on this principle.

Claim construction notes

The patent claims a color-mixing convergent optical system, with disputes touching on whether Strabag's LED traffic light systems embodied the claimed convergent optics; substantive claim construction analysis is in the 27-page body not fully reproduced.