LD Duesseldorf, October 6, 2026, Decision, UPC_CFI_137/2025, UPC_CFI_512/2025

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Under Rule 171(2) RoP, a defendant is not required to provide counter-measurements if the claimant’s initial measurements regarding a claim feature are inherently unconvincing and inconclusive

Germany Intellectual Property

1. Key takeaways

Under Rule 171(2) RoP, a defendant is not required to provide counter-measurements if the claimant’s initial measurements regarding a claim feature are inherently unconvincing and inconclusive

Where the claimant’s experimental data fails to isolate the alleged buffering effect from the geometry of multiple casing inlets, the proof remains inconclusive on its face. In such circumstances, the defendant’s general denial is sufficient, and no obligation arises under Rule 171(2) RoP to produce experimental counter-measurements.

Under Rule 13.1(i) RoP, the scope of an infringement action extends beyond the tested sample to all products embodying the asserted technical features

The definition of the attacked embodiment is not confined strictly to the specific physical device inspected. It encompasses all products marketed or offered by the defendant in the relevant territories that embody the decisive technical features alleged by the claimant to infringe.

Pursuant to Art. 69 EPC, claims maintain primacy, meaning drawings and preferred embodiments cannot be used to restrict broad functional claim limitations

Claim interpretation must be identical for validity and infringement. Broad functional terms – such as reference gas inlets, conduits, or buffer chambers – are not limited to dedicated, sealed, or obstacle-free components merely because exemplary patent embodiments depict them as such.

Under Art. 123(2) EPC, added subject-matter is assessed technically rather than purely linguistically, permitting functionally synonymous reformulations supported by the original application as a whole

Amending restrictive language like “adapted to” to open phrasing like “permits to” does not violate Art. 123(2) EPC where both formulations express the same technical capability in context, and where the original specification explicitly supports mixing being permitted.

Under Art. 56 EPC, an inventive step challenge fails if the defendant demonstrates no pointer or technical motivation to combine the cited prior art

An obviousness finding requires establishing that the skilled person would—and not merely could—have arrived at the claimed solution. Without a technical motivation to combine distinct teachings, missing features disclosed in secondary art cannot be considered obvious.

Under Rule 150.2 RoP and Art. 69(1) UPCA, an interim cost award is unavailable in cases of split success where both opposing claims are dismissed

Rule 150.2 RoP presupposes an identifiable overall prevailing party and an amount clearly due. Where the claimant fails on infringement and the defendant fails on revocation, no single successful party exists, requiring cost recovery to await formal cost-decision proceedings.

2. Division

Local Division Duesseldorf

3. UPC number

UPC_CFI_137/2025, UPC_CFI_512/2025

4. Type of proceedings

Infringement action and counterclaim for revocation

5. Parties

Claimant / Counterdefendant: Inficon GmbH
Defendants / Counterclaimants: Elitech Technology, Inc., Elitech UK Ltd.

6. Patent(s)

EP 3 567 356 B1

7. Body of legislation / Rules

Rule 13.1(l) RoP
Rule 19.1 RoP
Rule 19.7 RoP
Rule 30 RoP
Rule 118.5 RoP
Rule 118.8 RoP
Rule 119 RoP
Rule 150.2 RoP
Rule 151 et seq. RoP
Rule 152.2 RoP
Rule 171(2) RoP
Rule 352.1 RoP
Art. 31 UPCA
Art. 32(1)(a) UPCA
Art. 33(1)(a) UPCA
Art. 33(3) UPCA
Art. 48 UPCA
Art. 69(1) UPCA
Art. 80 UPCA
Art. 54 EPC
Art. 56 EPC
Art. 69(1) EPC
Art. 123(2) EPC
Art. 138(1) EPC

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LD Duesseldorf, October 6, 2026, Decision, UPC_CFI_137/2025, UPC_CFI_512/2025

Contributor

1. Key takeaways

Under Rule 171(2) RoP, a defendant is not required to provide counter-measurements if the claimant’s initial measurements regarding a claim feature are inherently unconvincing and inconclusive

Under Rule 13.1(i) RoP, the scope of an infringement action extends beyond the tested sample to all products embodying the asserted technical features

Pursuant to Art. 69 EPC, claims maintain primacy, meaning drawings and preferred embodiments cannot be used to restrict broad functional claim limitations

Under Art. 123(2) EPC, added subject-matter is assessed technically rather than purely linguistically, permitting functionally synonymous reformulations supported by the original application as a whole

Under Art. 56 EPC, an inventive step challenge fails if the defendant demonstrates no pointer or technical motivation to combine the cited prior art

Under Rule 150.2 RoP and Art. 69(1) UPCA, an interim cost award is unavailable in cases of split success where both opposing claims are dismissed

2. Division

3. UPC number

4. Type of proceedings

5. Parties

6. Patent(s)

7. Body of legislation / Rules

Intellectual Property

Contributor

Germany