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Overview · Filed: Mar 12, 2024

UPC_CFI_114/2024

SINTERED METAL PREPARATION AND ITS USE FOR JOINING COMPONENTS

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

Heraeus Electronics sued Vibrantz for infringement of EP 3 215 288 covering a sintered metal preparation for joining electronic components, at the Munich Local Division. The court partially revoked the patent on Vibrantz's counterclaim and dismissed the infringement action entirely because Vibrantz established a prior commercial use right in Germany, France, Italy and Romania. Costs were split 60% claimant / 40% respondent, reflecting mixed success.

Accepted arguments
What the court agreed with — by party.

  • prior public use (betriebliches Vorbenutzungsrecht) in DE, FR, IT, RO as defence to infringement

    RespondentLegal basis: Art. 28 UPCA; national prior-use provisions of DE, FR, IT, RO

    Note: The court upheld Vibrantz's prior-use right, which was a key reason the infringement action was dismissed after partial revocation.

  • counterclaim for partial revocation of EP 3 215 288 for added matter / lack of novelty over prior public use

    RespondentLegal basis: Art. 138(1) EPC; Art. 65 UPCA

    Note: The revocation counterclaim was partially successful; the patent was maintained in amended form for certain claims and revoked for others.

  • national res judicata effect of a prior German nullity judgment does not automatically bind the UPC on the same validity question

    ClaimantLegal basis: Art. 24(1)(e) UPCA; applicable national law

    Note: The court accepted that national law governs binding effect of prior national nullity judgments (Leitsatz), which it resolved by resort to national law.

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

  • the infringement action should succeed on the remaining valid claims

    ClaimantLegal basis: Art. 28 UPCA

    Reason: The infringement action was dismissed because the respondent's prior public use right neutralised liability even where the patent was not fully revoked.

  • full revocation of EP 3 215 288 including all amended claims

    RespondentLegal basis: Art. 138 EPC

    Reason: The Nichtigkeitswiderklage was only partially allowed; the patent survived in an amended form for certain claims (claims 4, 54, 65, 76, 87, 98 of the amended set).

Key legal principles
Doctrines and rules cited in the reasoning.
national law governs binding effect of prior national nullity judgments under Art. 24(1)(e) UPCA (res judicata)prior commercial use right (betriebliches Vorbenutzungsrecht) as a defence to infringement under national law applicable via UPCApatent amendment to maintain partial validity in revocation counterclaim proceedingsextension of territorial scope to Romania following its UPCA accession on 1 September 2024

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • prior public use / offenkundige Vorbenutzung of sintered metal preparation by VibrantzNovelty-destroying
Claim construction notes

The case turned on whether the prior public use covered the claimed subject-matter (metal sintering preparation with specified particle components), but the substantive claim construction reasoning is in the redacted body of the 73-page decision and not reproduced in the excerpts.