Context: Unified Patent Court (UPC) infringement litigation is still heavily concentrated in the four German Local Divisions (LDs), followed by the Hague LD (January 7, 2025 ip fray article). But some plaintiffs have achieved good results by bringing cases in other venues.
What’s new: Today the UPC’s Vienna LD, which had previously (late 2023) adjudicated only a motion for a preliminary injunction (PI) in a coffee machine case, has rendered its first decision on the merits (PDF (in German)). Austrian company SWARCO Futurit, which specializes in traffic signal systems, has obtained a permanent (though obviously appealable) injunction against construction giant STRABAG over devices supplied by China’s Chainzone Technology.
Direct impact: STRABAG installed Chainzone products in several Austrian locations. Those devices will now, short of a stay and successful appeal, have to be recalled and destroyed, and SWARCO Futurit is entitled to a damages award to be determined in a subsequent proceeding. The injunction covers the following countries: Austria, Belgium, Denmark, France, Germany, Italy, Luxembourg, the Netherlands, Sweden and Slovenia. Chainzone may now find it difficult to sell its products to customers who plan to deploy them in those countries, given that SWARCO Futurit could bring further UPC actions. It appears to be determined vigorously to enforce its rights: a hearing on its application to preserve evidence involving a different company (Yunex) was held in the Munich LD in August 2024.
Wider ramifications: The decision is very well-structured, suggesting that plaintiffs can expect a similar level of quality from the Vienna LD as from the German LDs. Also, the case serves as an example of the consequences it can have when a defendant does not exercise its right to bring a revocation counterclaim. STRABAG did not (possibly because its supplier, which intervened in the proceedings, wanted to save costs), but raised an invalidity argument (insufficient disclosure) at a stage when the court declined to consider it.
Earlier today we reported on a UPC decision (in that case, the Paris seat of the Central Division (CD)) to revoke a patent because of a patentee’s default (January 16, 2025 LinkedIn post by ip fray). What happened in SWARCO Futurit v. STRABAG was the opposite: the invalidity attack on the patent was ignored by the court because of the infringement defendant’s failure to bring a revocation counterclaim while it had the chance.
At some point the defending side realized that its non-infringement defenses were not going to succeed and argued invalidity, but its invalidity contention (based on allegedly insufficient disclosure) was deemed inadmissible as the defendant had waived (by its failure to bring a revocation counterclaim while it could) its right to argue invalidity. The defendant sought to excuse that decision with litigation economics. But the UPC’s rules are clear in that regard.
The patent-in-suit, EP2643717 on a color-mixing convergent optical system, is not specific to traffic signal systems. It could also be used for scoreboards at sports events. But changing traffic signals are a key use case, and that is presumably why SWARCO made the invention in the first place.
Like many other countries, Austria is gradually replacing old-fashioned changing traffic signals with LED-based displays that are much more flexible. STRABAG is one of Austria’s largest companies and active in other European countries. It won a tender by ASFINAG (corporate website), the state-owned company that operates Austria’s highways. It installed Chainzone devices, though SWARCO (corporate website) would presumably have wanted to become STRABAG’s supplier for this purpose.
What complicated SWARCO’s efforts to identify and prove an infringement was the fact that those devices are installed near highways (where cars are not even allowed to stop). SWARCO requested the production of evidence in the form of a sample device, but the court was able to resolve the matter without it.
The only respect in which STRABAG defended itself successfully was that the court denied SWARCO’s request that the decision be published in certain industry media.
Panel: Presiding Judge (and here, judge-rapporteur) Dr. Walter Schober (July 20, 2024 ip fray interview), Judge András Kupecz (CD Munich) (August 30, 2024 ip fray interview), Judge Mocja Mlakar (Ljubljana, Slovenia) and Technically Qualified Judge Uwe Schwengelbeck.
Counsel for plaintiff SWARCO: NOMOS‘s MMag. Alexander Koller and Barger Piso patent attorney Dipl.-Ing. Werner Barger.
Counsel for defendant STRABAG: SONN‘s Dipl.-Ing. Dr. Rainer Beetz.
Counsel for intervenor Chainzone: Kliment & Henhapel‘s Dipl.-Ing. Bernhard Henhapel and Gassauer Fleissner‘s Dr. Dominik Goebel (“Göbel” in German).