No. 156 - 10 November 2026
A patent proprietor relying on auxiliary requests in revocation proceedings must present the corresponding infringement allegations at the same time as the amended claims. The Düsseldorf Local Division has clarified that extending the infringement action to those claims only during the interim proceedings may be too late.
CUP&CINO sued ALPINA Coffee Systems for infringement of EP 3 281 569, concerning a milk-foaming device. ALPINA counterclaimed for revocation.
CUP&CINO filed 16 auxiliary requests to defend the patent. However, it was only during the interim proceedings that it expressly extended its infringement case to eight of those requests.
The Court acknowledged that a patent proprietor must be able to adapt its infringement action to amended claims. However, this must be done when the amendments are introduced.
Under R. 30.2 RoP, an application to amend the patent must explain why the amended claims are infringed.
CUP&CINO argued that the accused product and its technical features remained unchanged and that only the infringement assessment needed to be adapted.
The Court disagreed. Each amended claim required a separate assessment of its scope and infringement. Introducing eight new infringement allegations during the interim proceedings would have required the defendant to prepare additional defences outside the ordinary timetable.
The Court therefore refused to admit the late submissions, whether assessed under R. 30.2, R. 263 or R. 9.2 RoP.
The Court also confirmed that granted dependent claims may be defended without a formal amendment request. However, the proprietor must identify and substantiate the specific claim combinations it wishes to defend.
Where a multiply dependent claim covers several combinations without further specification, all those combinations must be valid. If one fails, the dependent claim cannot be maintained in that form.
