In a decision concerning EP 2 061 575 B1, the Düsseldorf Local Division addressed four issues of broader relevance for UPC practice: (i) the limits of remedies in cases of indirect infringement, (ii) the requirements for interim damages under Rule 119 RoP, and (iii) the pleading standard for lack-of-inventive-step attacks in revocation actions, (iv) the admissibility of a revocation counterclaim against a third party (Drittwiderklage).
The Court held that orders for recall, removal from the channels of commerce and destruction will, as a rule, not be granted where only indirect infringement is established.
This statement, formulated as Headnote 1, reflects a proportionality-driven approach under Art. 64 UPCA. Where the attacked products are merely means relating to an essential element of the invention, and not infringing products as such, far-reaching measures such as recall or destruction will normally be disproportionate. The Court thereby draws a clear line between direct infringement, where such remedies may be the default, and indirect infringement, where they require specific justification.
Headnote 2 addresses interim damages. While Rule 119 RoP allows the Court to award interim damages on a lump-sum basis, the Düsseldorf Local Division emphasises that this procedural possibility does not lower the substantive threshold.
The claimant must provide a plausible estimate based on concrete facts. Abstract references to list prices, assumed sales volumes or general market presence are insufficient. In particular, the Court rejected an approach that would treat interim damages as a quasi-automatic consequence of a finding of infringement.
One of the procedural aspects of the decision concerns the revocation counterclaim directed against the patent proprietor as third-party defendant.
The Court confirmed the procedural admissibility of the thord party counterclaim ( “Drittwiderklage”) under Art. 32.1(e) UPCA in conjunction with Rules 25 and 42 RoP. However, it dismissed the revocation attack on the merits – in part due to insufficient substantiation.
In Headnote 3, the Court makes clear that a party alleging lack of inventive step must do more than list prior-art documents. It must: “explain the content of the relevant documents and specifically detail why and how a person skilled in the art would combine the individual documents to arrive at the claimed solution without exercising inventive activity.”
The Local Division further underlined that all revocation attacks must, in principle, be introduced with the counterclaim itself. Later attempts to “operationalize” additional documents – even if named in the counterclaim – or combinations amount to an amendment under Rule 263 RoP and require leave of the Court.
