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Overview · Filed: Oct 11, 2023

UPC_CFI_358/2023

FLUID EJECTION DEVICE

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

Hewlett-Packard Development Company brought infringement proceedings against LAMA France in the Paris Local Division concerning two inkjet printer cartridge patents (EP 2 089 230 and EP 1 737 669). The court found infringement of the fluid-ejection-device claims, rejected LAMA's invalidity counterclaim and exhaustion/competition-law defence, and ordered an injunction with astreinte, recall and destruction of infringing stock, and disclosure of sales data for a future damages assessment. Costs were split 50/50 reflecting partial success on both sides.

Accepted arguments
What the court agreed with — by party.

  • Direct infringement of EP 2 089 230 and EP 1 737 669 by LAMA France's inkjet cartridges without requirement of prior notice to defendant

    ClaimantLegal basis: Art. 25 UPCA; Art. 29 UPCA (exhaustion does not apply)

    Note: The Paris Local Division held that Art. 25 UPCA does not require the claimant to prove the defendant knew of the patent before infringement acts; knowledge is not a condition of direct infringement.

  • Claims are valid: for novelty, the invention must be found entirely in a single prior art document in the same form, arrangement and function for the same technical result

    ClaimantLegal basis: Art. 54 EPC (by analogy via UPCA)

    Note: The strict whole-contents novelty test was applied and the invalidity counterclaim was rejected.

  • UPC substantive law (Arts. 25-26 UPCA) applies to infringement acts occurring before 1 June 2023; national law references are not relevant

    ClaimantLegal basis: Arts. 25-26 UPCA

    Note: The Paris Local Division declined to apply national law for pre-June 2023 acts, holding that the applicable substantive law for defining infringement is Arts. 25-26 UPCA.

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

  • Exhaustion defence / competition law argument as a defence to infringement

    RespondentLegal basis: Art. 29 UPCA; competition law

    Reason: The competition-law-based defence was found obviously inoperative on the facts; the court did not need to refer the question to the CJEU under Art. 21 UPCA.

  • Invalidity counterclaim: patent claims lack novelty, involve added matter, lack inventive step, or are insufficient

    RespondentLegal basis: Arts. 54, 56, 83, 123(2) EPC

    Reason: The court applied the strict whole-contents novelty test and found the patents valid; no details of specific prior art defeats are visible in the excerpts.

  • UPC claim interpretation must be based on French-language patent application rather than the original English-language application

    RespondentLegal basis: Art. 69 EPC; UPC Court of Appeal orders UPC_CoA_335/2023 and UPC_CoA_1/2024

    Reason: The court found it appropriate to examine interpretation arguments with reference to the application as filed in English even in French-language proceedings.

Key legal principles
Doctrines and rules cited in the reasoning.
Direct infringement under Art. 25 UPCA does not require prior notice of the patent to the defendantUPC applies Arts. 25-26 UPCA as substantive infringement law, not national law, including for acts before 1 June 2023Novelty: invention must be found in its entirety in a single prior art document in the same form, arrangement, and functioning for the same technical resultIn French-language proceedings, claim interpretation arguments are assessed by reference to the application as originally filed in EnglishClaim interpretation follows UPC Court of Appeal standards (UPC_CoA_335/2023 and UPC_CoA_1/2024)

Browse other cases on this principle.

Claim construction notes

The Paris Local Division applied the UPC Court of Appeal's two-stage claim interpretation framework (UPC_CoA_335/2023 and UPC_CoA_1/2024), examining claim terms in their technical context with reference to the English-language application as filed even in French proceedings. The court found the claims of EP 2 089 230 and EP 1 737 669 (fluid ejection device / inkjet cartridge) read on LAMA's products.