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1. Key takeaways
Claim construction: The patent is its own lexicon, “purposive non-use” excludes intent not contamination, and claim features can be technically interdependent.
The term “alkali-free” was interpreted not as a complete absence but as a concentration below a specific threshold defined in the patent itself.
The prohibition on “using neither arsenic nor antimony” was held to mean the purposive non-use of these elements, meaning unintentional residual contamination does not fall foul of the claim.
The Court found the various compositional and process features of the claim to be technically linked and working together to solve the underlying problem.
Inventive step (Art. 56 EPC): An invention is not obvious if prior art teaches away from it. Foreign judgments based on different legal standards are not persuasive.
The defendant failed to show that a skilled person would have been motivated to combine prior art teachings to arrive at the claimed invention.
The Court explicitly dismissed the relevance of a Chinese judgment invalidating the corresponding patent, highlighting that the Chinese legal standard for inventiveness is materially different from the EPC’s.
Infringement by uncontested facts (R. 171.2 RoP): Past infringement is held as true if a defendant fails to specifically contest the claimant’s substantiated allegations.
The defendant only stated it was currently not infringing but did not specifically deny the claimant’s detailed allegations of past infringement.
The Court applied R. 171.2 RoP to hold the uncontested facts of past infringement as true, making it unnecessary to assess the evidence provided by the claimant.
Holding company liability (Art. 25 UPCA): A holding company is not liable for a subsidiary’s infringement without proof of operational control or acting as an accomplice.
The claimant failed to substantiate its contested allegation that the parent holding company exercised decisive control over the specific infringing activities of its subsidiary.
Following Court of Appeal case law, the Court confirmed that mere shareholder status is insufficient to establish liability for infringement.
Remedies: Past infringement creates a risk of repetition justifying an injunction (Art. 63 UPCA). Damages liability may be subject to a post-grant “grace period”.
The Court granted an injunction, reasoning that the established past infringement creates a factual presumption of future risk, which was not rebutted by the defendant.
While declaring the defendants liable for damages (Art. 68 UPCA), the Court applied a one-month “grace period” from the patent’s grant date, limiting liability to subsequent acts.
The claimant’s requests for an interim award of damages and for publication of the decision at the defendant’s expense (Art. 80 UPCA) were denied.
Costs and Value of Dispute: The value of dispute is fixed considering the objective interest pursued at the time of filing (R. 370.6 RoP). Costs are allocated based on each party’s degree of success (Art. 69 UPCA).
The Court rejected the defendant’s request to reduce the value of dispute following the claimant’s partial withdrawal of the action against other parties
Costs for the main action were split to reflect the claimant’s partial success, while the defendants had to bear the full costs of their unsuccessful counterclaim for revocation
2. Division
LD Mannheim
3. UPC number
Claim for Infringement: UPC_CFI_819/2024,
Counterclaim for Revocation: UPC_CFI_414/2025
4. Type of proceedings
Infringement action and Counterclaim for revocation
5. Parties
Claimant: Corning Incorporated
Defendants: TCL Deutschland GmbH & Co. KG; TCL Deutschland Verwaltungs GmbH; TCL Operations Polska, Sp. z o.o.; TCL Belgium, SA
6. Patent
EP 3 296 274
7. Jurisdictions
Germany (infringement); Germany and France (revocation)
8. Body of legislation / Rules
Art. 25, 63, 64, 68, 69, 80 UPCA
Art. 56, 138 EPC
R. 171.2, 370.6 RoP
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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