Dolle v Fakro & Ors (UPC_CFI_461/2024)
Decision date:
05 November 2025
Osborne Clarke summary
- This decision concerned an infringement claim brought by Dolle against four Fakro group companies (including the alleged parent company based in Poland, a non-UPC state) in the Hamburg LD. The claim related to the German, Austrian, Danish and Swedish parts of Dolle's patent concerning a foldable attic staircase. Fakro counterclaimed for revocation, arguing that the patent was not infringed and it was invalid for added matter, lack of enablement, lack of right to priority, lack of novelty and lack of inventive step. Dolle also filed various auxiliary requests for amendment of the patent.
- The court considered claim construction in relation claim 1 as granted. First, it set out a number of relevant legal principles. According to Article 69 EPC and Article 1 of the Protocol on its interpretation, the patent claim is the decisive basis for determining the scope of protection of a European patent. Citing previous UPC case law, the Hamburg LD noted that the precise wording of the claim is not the only factor of importance – the description and drawings must always be consulted as aides to interpreting the patent claim. However, that does not mean that the claim serves merely as a guideline. Patent claims and the description explaining them, as well as drawings, must be interpreted as "a meaningful whole".
- Where a claim is comprised of multiple features, the skilled person will deduce the technical function assigned to a feature individually but considering the feature in the context of the entire patent claim. A patent specification may define terms independently and a patent may have its own lexicon. Therefore, by refence to the specification, the skilled person may attribute a meaning to a term that differs from general usage. Lastly, the court stated that the meaning of a sub-claim can, in principle, contribute to the correct interpretation of the main claim. However, examples of implementation of the main claim in a sub-claim, do not, in principle, limit a more extensive main claim.
- In light of these principles, the court construed various features of the claim, concluding that the revocation counterclaim was unsuccessful and that the patent was valid in its registered form.
- On added matter, the Hamburg LD cited the Court of Appeal's decision in expert v Seoul Viosys, finding that there was no inadmissible extension of claim 1. The subject matter of claim 1 did not go beyond the content of the originally filed application.
- Fakro's lack of enablement argument was dismissed swiftly. On the court's claim construction, the invention was clearly and completely disclosed.
- The Hamburg LD also held that Farko's ineffective priority claim failed. The court held that the term "the same invention" in Article 87 EPC should be interpreted as meaning that a claimed invention is to be regarded as the same invention as the invention in an earlier application if the skilled person can derive the subject-matter of the claim directly and unambiguously from the earlier application as a whole using their common general knowledge. This standard corresponds to the disclosure standard for added matter as set out by the Court of Appeal in Abbott v Sibio, whereby implicitly disclosed subject matter that is clearly and unambiguously derived from what is expressly stated is also regarded. Applying this approach, the court held that the patent validly claimed priority. The skilled person could "immediately and unambiguously" derive certain features of the claim from the priority document, even if the features were not explicitly stated.
- As for novelty, Fakro had claimed the patent was not novel over the priority document. However, as the court found that the patent effectively claimed priority, the priority document was not prior art. Novelty was also contested in relation to two further patent applications; however, these had the same priority date as the priority document and therefore did not constitute relevant prior art.
- Various lack of inventive step arguments were also dismissed and claim 1 of the patent as granted was upheld. The validity of the subclaims was therefore not considered.
- However, the court reinforced the procedural rules on when validity challenges must be brought. Fakro had sought to raise new validity attacks for the first time in oral proceedings, based on a document that was already in the proceedings. This was deemed inadmissible. Any attacks against the validity of the patent must be introduced at the same time as the counterclaim for revocation.
- The court then went on to consider infringement, finding direct infringement of claim 1 by all four Fakro entities. Infringement by the first, second and fourth defendants was not contested as they all offer the infringing embodiments within the UPC territory. "Passive legitimacy" of the third defendant was also established, with the third and fourth defendants being found to have acted jointly within the meaning of Article 25(a) UPCA. The court held that by linking to the website of the fourth defendant, the third defendant adopted the offers made by the fourth defendant as its own.
- The court granted an injunction covering Germany, Austria, Denmark and Sweden. It ordered the recall and permanent removal of the infringing products from Fakro's distribution channels. Fakro was also ordered to provide certain information relating to the infringement and to pay €3000 (the court fee) as provisional damages, with damages to be calculated separately. The court did not order Dolle to pay security for enforcement as Fakro had not presented any reasons that would have justified it. The Hamburg LD did, however, set penalty payments of at least €10,000 per infringing product for breach of the injunction by Fakro.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.