First UPC permanent injunction

The Local Division of the Unified Patent Court (UPC) based in Düsseldorf has recently ordered the first ever permanent injunction since the court’s establishment.

The case (Franz Kaldewei v Bette GmbH & Co, UPC_CFI_7/2023) was an infringement action brought by the owner of EP 3 375 337 relating to a ‘bathtub sanitation device’. The defendant filed a counter-claim for invalidity and although the decision found that the patent in its granted form lacked inventive step, an auxiliary claim request was found to be valid and infringed. A prior use defence raised by the defendant was unsuccessful.

The Court issued a permanent injunction covering France, Italy, the Netherlands, Belgium, Denmark, Austria and Luxembourg. Bette were also ordered to pay 10,000 Euros by way of preliminary damages and warned that further damages would be due should the infringing acts be continued. Infringing products were ordered to be recalled from relevant third parties with Bette bearing any costs, shipping, customs etc., associated with their return. Costs in relation to the partially successful revocation action were shared equally between the parties however Bette bore the majority of other costs associated with the case.

The Court’s deliberations and reasoning appeared to be in line with what one might expect from the EPO. A fairly strict approach to novelty was taken, akin to the EPO’s ‘clear and unambiguous’ disclosure test and the approach the Court took on inventive step would be recognisable to those familiar with the EPO’s ‘problem-solution’ analysis.

Patentees may take some confidence from this case as it shows that it is possible to obtain a wide-reaching injunction via the UPC. It also shows that claimants are able to receive judgements in good time with the decision coming just over a year after the official opening of UPC in June 2023. Although whether this pace is maintained as more cases are filed remains to be seen. An appeal may be expected and so it will be interesting to see whether the Court of Appeal support or deviate from the Düsseldorf division and what lessons for practitioners can ultimately be learned.