Wonderland Nurserygoods Co., Ltd. v. Cybex GmbH & Ors (UPC_CFI_807/2024, UPC_CFI_334/2025)
Decision date:
27 May 2026
Osborne Clarke summary
- This case relates to a patent for a swivel-locking device for the wheels of a stroller or buggy. The patentee, Wonderland Nurserygoods, alleged that the defendants had infringed its patent under the doctrine of equivalents. The defendants counterclaimed to revoke the patent. The Düsseldorf LD found the patent valid but not infringed. However, it considered the test to be applied for equivalence, applying thecriteria previously set out by The Hague LD.
- The court applied the established case law of the Court of Appeal to reject the defendants' allegations of added matter, lack of novelty and obviousness.
- For their obviousness attacks, the defendants had relied on a total of 14 supposedly realistic starting points, citing a wide range of documents as potential combinations. Following the approach to inventive step set out by the Court of Appeal in Meril v Edwards and Amgen v Sanofi, there can be more than one realistic starting point. However, the Düsseldorf LD noted that this approach requires several steps to be taken to demonstrate a lack of inventive step. In this case, the defendants had failed properly to assess in their pleadings whether the skilled person, starting froma specific realistic starting point and wishing to solve an objective problem, would (not only could) have arrived at the claimed invention.
- Instead, Wonderland had applied the EPO's problem-solution approach. Further, some of the combinations had simply been mentioned in passing, without any explanation. The court invited Wonderland to select one or more combinations and explain them in more detail at the oral hearing. However, not even these attacks were successful.
- In relation to infringement, the Court of Appeal has yet to rule on the criteria or equivalence to be used in the UPC. Several first instance decisions have considered the issue, but most have found that there was no equivalent function or effect and have not set out a complete test. The exception is the Hague LD, which had carried out a full analysis of equivalence in Plant-e v Arkyne and Washtower v BEGA.
- Under the Hague LD's test, a variant is equivalent if four questions are answered in the affirmative:
- Technical equivalence: does the variant solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
- Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee? This needs to be assessed in view of the patentee’s contribution to the art and taking into account the question whether it is obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement).
- Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Is the allegedly infringing product novel and inventive over the prior art?
- The Düsseldorf LD considered that the Hague LD's criteria to "form a coherent whole and are, as such, suitable for examining patent infringement by equivalent means". There were no grounds for applying a different standard in the present case.
- On question 1, the court found no technical equivalence. It stated that, while the claim must be considered as a whole, it is necessary to determine the function of each substituted feature in relation to the claim. That allows a comparison between the technical functions of the claimed and substitute means. Therefore, it is "not sufficient to focus solely on the objective task of the patent. Rather, what matters is the function of each exchanged features [sic] inachieving this task". In Wonderland's case, the court considered that it had reduced the entire invention to a secured connection between rotatable and non-rotatable elements, and not sufficiently explained how this was to be achieved according to the patent’s teaching.
- Question 2, on fair protection, was also answered in the negative. The court rejected Wonderland's arguments that it was obvious "to simply reverse" the arrangement of components. To reach the alleged infringement, several parts would have to be rearranged simultaneously. This would amount to a "fundamental redesign", which would not have been obvious to the skilled person. Wonderland had also failed to explain the patent's contribution to the art; the court left this issue open, but noted that nothing could be inferred in Wonderland's favour in that regard.
- Question 3, on reasonable legal certainty, was again answered in the negative. Wonderland's arguments had failed to consider that the claim set out specific requirements for the arrangement of components, and it was precisely this arrangement that achieved the desired secured connection between rotatable and non-rotatable elements. The skilled person would not understand that "such significant modifications in almost all parts" would be covered by the patent.
- Having answered questions 1 to 3 in favour of the defendants, the court did not consider it necessary to consider question 4, whether the infringing products were novel and inventive over the prior art.
- See our Insight here for more details.
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.