Context: Unified Patent Court (UPC) litigation is still heavily concentrated in Germany, though The Hague is also becoming a major hotspot (November 5, 2024 ip fray article). One of the infringement lawsuits filed with the Paris Local Division (LD) is HP v. LAMA. The printer manufacturer wants to shut down the importation and sale of allegedly infringing third-party ink cartridges. A discovery request by HP concerning LAMA’s suppliers was limited to imports from outside the EU (item 5 of this August 6, 2024 ip fray article). As a result of another procedural order, it became known that the parties had filed close to 2,000 pages in this litigation (item 9 of this August 24, 2024 ip fray article).
What’s new: Today, the Paris LD handed down its final judgment in this case over two patents (PDF (in French)). LAMA’s revocation counterclaim succeeded against one of HP’s patents (non-novel as granted, non-inventive as amended), but not the other, which was then also deemed infringed. LAMA’s antitrust defense failed for lack of a serious market definition, therefore also rendering unnecessary a preliminary reference to the European Court of Justice (ECJ). The court would, however, have entertained an antitrust defense in principle. As for past damages, the court declined to apply national law to the part of the damages period that predates the start of the UPC.
Direct impact: It appears very likely that LAMA will appeal and will also seek a stay of the enforcement of the injunction.
Wider ramifications: None of the clarifications is surprising. On claim construction principles, the decision applies prior guidance by the Court of Appeal (CoA). It also does not appear that an appeal can raise a fundamental question of law. In terms of venue choices, patentees may have underrated the Paris LD, where a high-profile filing became discoverable two weeks ago: ArcelorMittal v. XPENG (November 1, 2024 ip fray article).
The well-written and well-structured decision lays out the court’s reasoning, and comes across as reasonably balanced.
EP2089320 (“Fluid ejection device with data signal latch circuitry”) is revoked. The Paris LD rejected LAMA’s half-dozen of theories of an impermissible addition of subject matter, but deems the patent anticipated by a prior art reference that is called EP172211. ip fray believes that one digit was omitted and what is meant is almost certainly EP1172211 (“Printhead, head cartridge, printing apparatus, and printhead element substrate”), a 2001 patent application by HP rival Canon. In order to salvage the patent, HP proposed, as an auxiliary request, to insert “pre-charged” in various positions, but LAMA successfully argued that this would lack an inventive step given that pre-charging was described in a U.S. patent application (US 2005/230 493 A1).
This revocation decision applies to the countries that the revocation counterclaim relates to (Germany, Austria, Belgium, Denmark, France, the Netherlands, Portugal and Sweden, but not Italy, where a nullity action is pending in a court in Genoa).
The older one of the patents-in-suit, EP1737669 (“Fluid ejection device”), fared better. Revocation was denied, and the patent was deemed infringed by certain ink cartridges sold by LAMA.
With respect to claim construction, the Paris LD recites the principles laid out by the CoA in NanoString’s appeal against 10x Genomics (PDF) and VusionGroup’s appeal against Hanshow (PDF). The oversimplified version is that the name of the game is the claim, but the claim is interpreted in light of the specification including the drawings, just that it must not be unduly narrowed or broadened that way.
The Paris LD does not rule out that defendants to patent infringement actions may have an antitrust defense under Art. 102 TFEU. They point to Art. 29 UPCA in that regard. But in this particular case, the Paris LD threw out LAMA’s theory of HP abusing a dominant market position as, in the court’s opinion, LAMA failed to provide a serious definition of the relevant antitrust market. Allegedly, LAMA merely pointed to media reports about HP’s printer sales and that claims have been brought against HP by others under consumer protection law. As a result, the court did not see a reason for making a preliminary reference to the ECJ.
The decision also discusses the probative value of certain pieces of evidence adduced by HP with respect to the infringing acts, and decided to take that evidence into account.
The injunction over EP’669 covers Germany, Austria, Belgium, Denmark, France, the Netherlands, Portugal and Sweden. LAMA also has to provide information HP needs for an accounting so it can calculate a damages claim.
Either party bears 50% of the costs as one patent assertion succeeded and another failed.
Panel: Presiding Judge and judge-rapporteur Camille Lignieres, Judge Carine Gillet and Judge Professor Peter Tochtermann (Mannheim, Germany).
Counsel for HP: August Debouzy’s Grégoire Desrousseaux.
Counsel for LAMA: Germain Maureau’s Henri Bourgeois.
As an aside, this present article was written in a French-speaking country, and despite recent advances in machine translation, ip fray prefers to read court rulings in their original language versions whenever possible (presently that applies to English, German, French, Italian and, with limitations, Portuguese decisions; should Spain join the UPC, then also Spanish decisions).