Hartmann Packaging v Omni-Pac (UPC_CFI_115/2025 and UPC_CFI_377/2024)
Decision date:
15 October 2025
Osborne Clarke summary
- This was a case relating to infringement and validity of a patent for egg boxes. Hartmann issued proceedings against Omni-Pac in the Düsseldorf LD for infringement of the German, French and Dutch designations of its patent for "A display and distribution package for eggs". Omni-Pac counterclaimed for revocation.
- Hartmann argued that Omni-Pac's products infringed on a literal basis. It subsequently sought to introduce a claim for infringement by equivalence in its rejoinder to the reply to the counterclaim revocation. Omni-Pak challenged the priority of certain claims and argued the patent lacked novelty and inventive step.
- Regarding priority, the court stated that "[t]he term "the same invention" in Article 87 EPC must 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 general technical knowledge". It noted that this standard corresponded to the disclosure standard for added matter, as set out by the Court of Appeal in Abbot v Sibbio. The decisive factor was what the skilled person, using their common general knowledge, can directly and unambiguously derive from the earlier filing, including any implicitly disclosed subject matter.
- The court held that claim 1 could validly claim priority to the first priority document. Even though Figures 8 to 16 of the patent were not found in the first priority document, the essential features of claim 1 including “two substantially planar end surfaces” were disclosed. On the other hand, claim 6 could not claim priority from the first priority document. Features relating to the claimed manufacturing method were not disclosed. Claim 6 was entitled to the second priority date.
- The novelty attack failed. The first piece of prior art (EP 1 389 590 A1) did not disclose feature 1 of claim 1, which required the packaging to be made of fibrous material. The second piece of prior art (EP 1 373 100 B1) did not disclose features 2.2, 2.2.1 and 5. In particular, it disclosed flexible flaps, not the claimed retainment projection/nose arrangement, and did not clearly disclose a label covering the top and a substantial part of the front. Claim 6 was novel over the intervening prior art, WO 2013/164664. There was no clear and direct disclosure of features 3 to 5.
- For inventive step, the court applied an objective obviousness assessment under Article 56 EPC rather than the EPO’s problem-solution approach. It referred to the Munich CD's decision in Sanofi v Amgen and noted that the assessment always requires a case-by-case evaluation taking into account all relevant facts and circumstances. The subjective ideas of the applicant or inventor were irrelevant. The only relevant factor is what the claimed invention actually contributed to the state of the art.
- The court decided that claim 1 as granted lacked inventive step. Starting from EP 1 389 590 A1, the only difference was in the packaging material. The court stated that "a person skilled in the art is accustomed to selecting a suitable material from among those known to be suitable for a particular purpose. The selection of a material from a narrowly defined range of possible suitable materials available to the person skilled in the art does not normally require any special skills and therefore does not constitute an inventive step." Pulp was a leading material for egg cartons and it was obvious to use it. Arguments that pulp cartons could not be reused hygienically were rejected; there was no such teaching in the patent.
- On the other hand, claim 6 was upheld. WO 2013/164664 did not disclose the method steps for positioning the retainment projection and aperture during moulding to compensate cover part deformations, removal from the mould, and oven drying. When considering the three prior art documents in combination, they did not render the specific method, including the required label coverage of the top surface, obvious.
- Auxiliary request 1 failed to overcome obviousness. Auxiliary request 2 (adding a feature that the nose of the fastening works as a hook) succeeded, and claim 1 was maintained in that form.
- On the court's construction, the infringement claims failed. The allegedly infringing packages employed a flexible closure flap rather than the retainment projection required by the claims. Claim features requiring an upwardly extending projection with a downwardly and outwardly projecting nose were not implemented.
- The argument of infringement by equivalence had been late filed and was held inadmissible under Rule 9(2) RoP. In any event, there was no technical-functional equivalence so infringement would have been rejected.
Issue
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