2025 Week 42
This week we report on two decisions from the UPC that are totally different, but both important in their own way. The first is a down-in-the-detail first instance case on infringement and validity where the technology is all about egg boxes. And the second is the UPC Court of Appeal dealing with objections to the legality of the Unified Patent Court itself, its relationship with the European Union and the effects of Brexit.
Egg boxes – handle with care
Hartmann v. Omni-Pac was a decision from the UPC Local Division Düsseldorf on infringement and validity of EP 2755901 B1. The patent has independent claims 1 and 6, defining a package and a method for making a package, respectively. We’ll focus on claim 1 here. The technology is very simple but the claim as granted was long, so an abbreviated version is shown below, retaining just the features worth discussion.
1. A display and distribution package (2) for eggs, said package being formed of a fibrous material, the package (2) comprising:
- a bottom part (4) …
- a cover part (6) …
…
- the bottom part (4) comprising a back side (22), a front side (24), two end sides, and at least one upwardly extending retainment projection (26) extending from the front side (24) of the bottom part (4),
- the cover part (6) being provided with a label (42) covering the top surface (10) and a substantial part of the front surface (12) of the cover part (6),
characterized in that the upwardly extending retainment projection (26) having a downwardly and outwardly extending nose (28) for locking engagement with one or more co-operating apertures (30) in the front surface (12) of the cover part (6), …
The features of the claim that needed particular interpretation or attention are shown in purple text.
Most of the structure of the egg box is exactly what you will probably be used to, except maybe for the way in which the cover locks in place. In the embodiments, this is by the nose 28 clicking into the apertures 30 in the front of the cover 6. Here are some drawings to show what is going on – the numbers in red are added to indicate the cover 6 and the bottom part 4.
The LD were particularly interested in the discussion of the prior art set out in the patent. This explained that known egg boxes used a flexible flap extending from the front of the bottom part of the egg box, with protrusions for engagement with corresponding holes in the front part of the cover. This reduces the available area at the front part of the cover for a label. It is also suggested that the reliability of this closure is questionable, with paragraph 0009 of the patent saying:
[0009] It is therefore a further object of the present invention to provide an egg package - without the provision of a traditional locking flap - which may be reliably closed and locked in a substantially error free manner by a machine.
Narrower-than-literal claim interpretation
If you look again at claim 1, you’ll see that actually the claim does not clearly exclude a flexible locking flap. It just requires an upwardly extending retainment projection with a downwardly and outwardly extending nose for locking engagement with apertures in the cover. The court, however, decided that the claim should be interpreted as requiring that the retainment projection is not flexible, in contrast to the flexible locking flap of the prior art. Instead, in order to achieve some of the benefits explained in the patent, it must have such dimensional stability and rigidity that it enables the cover to be closed in a single step by sliding the cover over the projection to engage with the nose.
Entitlement to priority
We have not heard much from the UPC about priority entitlement up to now. But in this case there were two claimed priority dates, with the priority applications presenting different disclosure. So the court took the opportunity to confirm that the test for entitlement to priority is the same as the test for added matter. In this case, on the facts, claim 1 was entitled to the earliest priority date but claim 6 was not. This meant that different prior art was available to attack the different independent claims.
Validity
The defendant’s own prior art EP 1389590 A1 was relied on. Fig. 1 is shown below:
The court decided that this showed all of the structural features of the claim, including the (rigid) retainment projection and nose. However, claim 1 was novel because of the requirement for fibrous material – the prior art did not specify the material used for its own disclosure, although it did itself refer to prior art that used fibrous material.
You can probably see where this is heading. When considering inventive step, the court decided that the skilled person would know that fibre-based materials are useful in egg boxes and would implement the egg box of the prior art using such a material without the need for an inventive step.
Claim 6, as granted, was considered to be valid.
Auxiliary requests
The court considered two auxiliary requests filed by the patentee. The first of these was dismissed for lacking inventive step. In the second auxiliary request, both claims 1 and 6 were amended. Claim 1 was amended like this (still with some features removed):
1. A display and distribution package (2) for eggs, said package being formed of a fibrous material, the package (2) comprising:
- a bottom part (4) …
- a cover part (6) …
…
- the bottom part (4) comprising a back side (22), a front side (24), two end sides, and at least one upwardly extending retainment projection (26) extending from the front side (24) of the bottom part (4),
- the cover part (6) being provided with a label (42) covering the top surface (10) and a substantial part of the front surface (12) of the cover part (6),
characterized in that the upwardly extending retainment projection (26) having a downwardly and outwardly extending nose (28) for locking engagement with one or more co-operating apertures (30) in the front surface (12) of the cover part (6), said label (42) covering said nose (28) and said apertures (30), said nose (28) working as a hook that hooks onto a lower edge of the said aperture (30), …
The court decided that this claim was valid over the available prior art.
Claims maintained in hybrid form
The court decided that, since claim 6 as granted was valid, they would allow the patentee to have an amended set of claims consisting of claims 1-5 of the second auxiliary request, and claims 6-8 as granted. Note that the second auxiliary request had included amendments in claim 6, so these amendments were not used because they were not needed.
Infringement … by equivalence?
The court went on to consider infringement. As you might expect based on the discussion above, this all ended up turning on the locking mechanism for the cover. The alleged infringement looked like this:
Infringement therefore depended on whether the feature at the front can be considered to be an upwardly extending retainment projection having a downwardly and outwardly extending nose and functioning to hook into the aperture in the cover.
The court decided that the alleged infringement instead was an example of a traditional flexible locking flap.
The patentee argued for infringement by equivalence. The court decided this argument was raised too late in the procedure, and so would be dismissed at least for this reason. However, they also considered the substance. Once again, the court declined to set out a detailed test for infringement by equivalence, but noted that one would at least require that the alleged infringement would use a variant that essentially fulfils the same function in order to achieve essentially the same effect. For more on this, see UPC Weekly 2025 w24 - Where have we got to with the UPC doctrine of equivalents?
In this case, we are in the slightly odd situation that the in-context interpretation of the relevant feature of the claim was narrower than the literal scope of the feature. Therefore it made sense for the court to close down this infringement argument based on there being no technical-functional equivalence. However, just one awkward thought from me … the second auxiliary request included a further technical requirement for the relevant feature. With this amendment in place, should the narrower, non-literal, interpretation still apply to the original feature of the claim, or can this feature be given a broader, more literal interpretation? Should it be impossible to read that feature more broadly, after amendment, in view of Article 123(3) EPC?
In the end, the patent was considered to be valid in the amended form, but not infringed. The costs for the infringement action were placed on the patentee, but the majority of the costs for the counterclaim for revocation were placed on the defendants.
UPC Court of Appeal confirms UPC’s legitimacy
Roku v. Dolby is one of three identical decisions from the UPC Court of Appeal (CoA). We reported on the first instance decisions in UPC Weekly 2025 w12 and said that we would come back to the appeal decision, so here we are.
In an infringement action based on EP 3490258 B2, a preliminary objection was filed, challenging the jurisdiction of the UPC. Normally, such an objection would be based on arguments such as parallel proceedings in another court, the patent being opted out from the UPC, the language of the proceedings being wrong, the UPC having no jurisdiction over the defendant or its activities, or that the action had been started in the wrong division of the UPC. But here the main argument was whether the treaty establishing the UPC was compatible with fundamental EU law.
Somewhat unsurprisingly, the CoA decided that the UPC is fully compatible with EU law. This issue had been addressed by amendments to the draft UPC Agreement and by amendment of the EU Brussels Regulation. The CoA also refused to refer the question to the CJEU, on the basis that there was no doubt as to the compatibility of the UPC with EU law.
What was more interesting (to me at least) was how the CoA addressed further arguments in the appeal about the locations of the courts themselves. The UPC Agreement came into force on 1 June 2023, still in its original agreed form. The Agreement included Article 7(2) UPCA specifying that the Central Division of the UPC would have its seat in Paris, with sections in London and Munich. But following Brexit, the UK decided also to withdraw from the UPCA. Recognising that it would no longer be possible to have a section of the Central Division in London, the Administrative Committee of the UPC amended the UPCA on 26 June 2023 to replace London with Milan. This amendment was done using Article 87 UPCA, rather than by re-opening the entire agreement at a diplomatic conference.
The appellant argued that the absence of a London Central Division of the UPC had a potential impact on the composition of the panel of judges selected in particular cases, leading to a violation of the right to “an independent and impartial tribunal previously established by law” – a requirement of EU and European human rights law.
The CoA held that the Administrative Committee did have the power to delete London from the UPCA, and that it also had the power to replace London with Milan. The CoA considered that the position of the UPC in relation to Brexit and the hard-wiring of London into the original UPCA had led to an “unintended regulatory gap”. Article 87 UPCA envisages amendments to the UPCA by the Administrative Committee to bring it into line with an international treaty relating to patents or EU law. The view of the CoA was that it should be understood that the Administrative Committee also has the power to make amendments to the UPCA to address obstacles to the implementation of the UPCA. Therefore the Administrative Committee had discretion, not only to delete London from the UPCA, but also to replace it with Milan.
This tone of the decision of the CoA is clear – these matters are considered settled.
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