- within Technology topic(s)
1. Key takeaways
Making a counterclaim for revocation conditional upon a finding of infringement is permissible under Art. 33(3) UPCA and promotes procedural economy.
Where the defendant requests, and the claimant does not object, that the counterclaim be decided only if infringement is found, the court may examine infringement first and defer the validity analysis to a later stage, if at all needed.
This intra-procedural conditioning aligns with established case law from other Local Divisions and the Court of Appeal, allowing the court to avoid a redundant validity assessment once infringement is not established, thereby saving procedural resources.
The claimant bears the burden of proving infringement, and a claim scope excluding transmission of additional corrective data cannot be satisfied by an implementation relying on such data.
The claimant must establish that the accused standard-compliant products necessarily implement every claimed feature, based on the claim as construed in light of Art. 69 EPC and its Interpretative Protocol, from the perspective of the skilled person.
Where the accused implementation relies on a mechanism transmitting additional corrective information to resolve aliasing at a coding transition, this falls outside the claimed solution, since the patent expressly presents avoidance of such additional data transmission as its technical contribution.
This conclusion applied irrespective of whether the corrective mechanism was optional or mandatory under the relevant industry standard, since the decisive question was whether the claimed technical effect could be achieved without transmitting extra data.
2. Division
Paris Local Division
3. UPC number
UPC_CFI_301/2025; UPC_CFI_713/2025
4. Type of proceedings
Infringement action with conditional counterclaim for revocation (decision on the merits)
5. Parties
Claimant: Orange SA
Defendant: HMD Global Oy
6. Patent(s)
EP 2 345 029
7. Jurisdictions
France, Germany, Italy
8. Body of legislation / Rules
Art. 33(3) UPCA, Art. 69 EPC
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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