UPC’s Paris Local Division may have to choose or design test for infringement by equivalence in gutter patent case

Context:

• On Friday (September 12, 2025), we attended a hearing in the Unified Patent Court’s (UPC) Paris Local Division (LD), as we mentioned on LinkedIn and in section 7.1 of our latest UPC Roundup. The claimant, Raccords et Plastiques Nicoll (RPN), is suing First Corporation and some of its subsidiaries over EP3272938 (“Gutter, gutter assembly and assembly method”).
• The doctrine of equivalence (DOE; actually called “doctrine of equivalents” in terms of “equivalent function and equivalent means” in the U.S., where it came from) is a legal standard on which the UPC’s Court of Appeal (CoA) has not yet decided. The Mannheim LD said in a DISH v. Aylo case that the UPC would have to develop its own DOE while applying national DOE case law to pre-UPC-start infringing acts (June 10, 2025 ip fray article). Previously, the Hague LD adopted the Dutch test its Plant-e v. Arkyne decision (November 22, 2024 ip fray article). Both parties presented their arguments under that one.

What’s new: The parties argued both literal infringement and the DOE. As is obviously the purpose of a gutter, water must be evacuated. The defendants described their product, named GHOST, as an indivisible single piece, while the claimant emphasized the means to improve water evacuation. This is a rare outlier case in which there is no invalidity defense, neither in the form of a revocation (counter)claim in the UPC nor, given the age of the patent, an opposition proceeding in the European Patent Office (EPO). The decision will be handed down on October 24, 2025.

Direct impact: The three-judge panel did not indicate an inclination at the Friday hearing. Structurally it appears to be one of the numerous patent infringement cases that turn on claim construction, with multiple permutations. For example, the claimant has a second bite at the apple if the court does not find literal infringement. Different potential DOE tests could have divergent outcomes (as discussed further below). All in all, this looks like a case that two equally reasonable courts could decide differently, but the defendants have reduced their chances by not challenging validity.

Wider ramifications: While this case potentially raises the question of equivalence, it does not appear to be the perfect vehicle for ultimate appellate clarification. However, if the Paris LD reaches that one (which is not a given) and takes a position on what test the UPC should apply, its decision could influence other first-instance UPC divisions until the CoA has spoken out on the subject.