1. Key takeaways
Cost decision on a counterclaim for revocation
If the patent is considered valid only in a form which is not claimed to be infringed, the patentee shall bear the costs of the counterclaim for revocation. However, if the counter claimant seeks revocation of claims not asserted against it, and those claims are upheld, a compensation of costs is in order, depending on the circumstances.
An invalid priority claim can be fatal, turning a patentee's own disclosures into prior art (Art. 87 EPC)
The case turned on the patent's invalid priority claim. Because the feature of "data cleaning" was not disclosed in the priority document, the patentee's own promotional video became the closest prior art, which was then used to successfully challenge the patent's validity.
Applied principle on costs: the losing patentee pays, but the counterclaimant's recovery is reduced for unsuccessfully attacking valid claims which are not asserted against the counterclaimant (Art. 69 UPCA)
The patentee, having lost on the asserted claims, must bear the costs of the revocation counterclaim. However, the defendant's cost recovery was reduced by 15% because they also (and unsuccessfully) attacked the valid Conditional Request 3, which had not been asserted against them.
No infringement if the patent is only valid in an amended, non-asserted form
The infringement action was dismissed in its entirety. Since the patent was only maintained in the amended form of Conditional Request 3, and the patentee had not asserted this version of the claims against the defendant, there could be no finding of infringement.
2. Division
Local Division The Hague
3. UPC number
UPC_CFI_327/2024, ACT_36388/2024 (claim), CC_53523/2024 (counterclaim)
4. Type of proceedings
Main infringement action and counterclaim for revocation
5. Parties
Claimant: Winnow Solutions Limited
Defendant/Counterclaimant: Orbisk B.V.
6. Patent(s)
EP 3 198 245
7. Jurisdictions
UPC (France, Germany, Netherlands, Italy)
8. Body of legislation / Rules
Art. 69 EPC (Claim construction), Art. 56 EPC (Inventive step), Art. 87 EPC (Priority), Art. 83 EPC (Sufficiency of disclosure), Art. 25 UPCA (Right to prevent direct use of the invention), Art. 69 UPCA (Costs), R. 25 RoP (Counterclaim for revocation), R. 118(5) RoP (Costs)
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.
