Evac v VacDrain – Düsseldorf Local Division, 22 June 2026 (UPC_CFI_811/2024)
In a infringement decision concerning two patents relating to vacuum sewer systems, the Düsseldorf Local Division addressed a wide range of substantive and procedural issues. Besides infringement, indirect infringement, exhaustion, implied consent, forfeiture, applicable law and jurisdiction, the Court clarified an important point regarding limitation periods under the UPCA.
The Court held that the five-year limitation period of Article 72 UPCA applies only to claims seeking financial compensation. Injunctions are forward-looking remedies and therefore are not subject to Article 72 UPCA. This appears to be the first express UPC decision addressing the scope of Article 72 UPCA.
Evac asserted two European patents relating to vacuum sewer systems against several defendants. One patent concerned a discharge valve for such systems, while the second related to an active vacuum buffer device.
The defendants challenged infringement and raised several additional defences. They argued, among other things, that the claimant had tolerated the allegedly infringing activities for years, had implicitly consented to them through previous commercial dealings, that any claims were forfeited, and that they were in any event time-barred. They also relied on exhaustion with respect to the replacement vacuum buffer devices.
The Court ultimately found infringement against some defendants, while dismissing the claims against one defendant because the claimant had failed to establish its liability.
The defendants argued that the injunction claim was already time-barred. In their view, Article 72 UPCA merely establishes a maximum limitation period, while national limitation rules – specifically the three-year limitation period under German law – continued to apply to injunction claims.
The Düsseldorf Local Division rejected this argument.
According to the Court, Article 72 UPCA expressly applies to "actions relating to all forms of financial compensation." An injunction, however, is fundamentally different. Since an injunction regulates future conduct rather than compensating past harm, it is not covered by Article 72 UPCA and is therefore not subject to its five-year limitation period.
The LD Düsseldorf confirms the approach, first developed by the Mannheim Local Division in Hurom v NUC, regarding the applicable substantive law for acts spanning the entry into force of the UPCA.
Where allegedly infringing conduct began before 1 June 2023 but continued afterwards, the UPCA applies as a default, provided that the infringement itself continued after the Agreement entered into force. The Court emphasised that this assessment requires a normative evaluation rather than a purely formal approach.
Interestingly, the Court considered a sale occurring after 1 June 2023 sufficient to establish such continued infringement, whereas merely refusing to provide a cease-and-desist declaration would not have been enough.
Another aspect concerns the defence of implied consent.
The defendants argued that they had maintained a long-standing commercial relationship with companies that later became part of the claimant's corporate group. According to the defendants, these dealings amounted to an implied authorisation to market the disputed products.
The Court rejected this defence. Previous commercial relationships with acquired group companies did not establish consent by the patent proprietor to exploit the patents. Moreover, once the claimant became aware that allegedly infringing products formed part of those commercial dealings, it instructed its subsidiary to cease purchasing such products.
Accordingly, the Court found no express or implied licence.
The defendants further argued that supplying replacement vacuum buffer devices merely constituted permissible repair of an exhausted product.
The Court disagreed and found indirect infringement.
The decision confirms that whether replacement of a component constitutes permissible repair or impermissible reconstruction remains a fact-specific assessment. Here, the Court concluded that the patented technical teaching was embodied in the vacuum buffer device itself and therefore replacement was not protected by exhaustion.
The judgment also contains useful guidance on UPC jurisdiction.
For the German defendant, jurisdiction followed from Article 4 Brussels Ia in conjunction with Article 71b Brussels Ia and Article 33(1)(b) UPCA.
For the Chinese manufacturer and its shareholder, the Court relied on Article 7(2) Brussels Ia together with Article 71b(2) Brussels Ia and confirmed that the UPC may exercise jurisdiction over alleged infringements committed in UPC territory regardless of the defendants' domicile. The Court also referred to recent UPC case law confirming that a test purchase within UPC territory is sufficient to establish jurisdiction at this stage.
