TRUMPF Laser v IPG Laser (UPC_CFI_735/2024)

• TRUMPF is the registered proprietor of a patent concerning an optical apparatus for combining laser light. IPG develops, manufactures and distributes fibre lasers across Europe. TRUMPF brought an infringement action against IPG, in relation to its "YLS-AMB" range of dual-beam fibre lasers. IPG counterclaimed for revocation on the basis of lack of novelty, lack of inventive step and added matter.
• The Mannheim LD found that IPG infringed the patent – the contested embodiments made direct literal use of the teaching of claim 6 of the patent. IPG's revocation counterclaim was dismissed in its entirety.
• On validity, the panel applied the Court of Appeal's established standard on added matter – as set out by the Court of Appeal in Abbott v Sibio and expert v Seoul Viosys. To determine whether there is added matter, it is necessary to ascertain what the skilled person, using their common general knowledge and viewed objectively, would immediately and unambiguously derive from the application as filed. If the patent is a divisional application, this requirement applies to each earlier application. Applying that standard, the panel found that the patent did not extend beyond the original application.
• On novelty, the Mannheim LD followed the Court of Appeal’s approach in Mammut v Ortovox – the decisive factor is whether the subject matter of the claim, with all its features, is directly and unambiguously disclosed in the prior art. Using this approach, two of the claim features were found not to be disclosed in the prior published patent application.
• In considering inventive step, the court applied the Court of Appeal's test from Amgen v Sanofi and Meril v Edwards. It found that the subject matter of the claim involved an inventive step over the primary prior art alone or in combination with other prior art documents or the common general knowledge.
• The court granted TRUMPF injunctive relief across seven UPC member states. It also made orders for recall, removal and destruction, disclosure of information, a declaration of liability for damages, and provisional damages.

This analysis is based on a machine translation of a decision not available in English.