In its judgment of June 6, 2025 (UPC_CFI_471/2023), the Local Division Mannheim ruled on the doctrine of equivalence with regard to the infringement of European bundle patents.
Unlike the Local Division The Hague in 2024, which applied – without further discussion – the principles developed by Dutch case law to the examination of equivalent infringement (UPC_CFI_239/2023), the Local Division Mannheim distinguishes between acts of infringement committed before June 1, 2023, and those committed after that date.
According to the Division, acts to which the substantive national law of the contracting member states of the UPC is applicable (acts prior to June 1, 2023) are subject to the principles of equivalence of the respective Contracting Member State. The UPCA does not give – so the Division – the UPC a mandate to harmonize the law of its contracting member states for acts that are subject to their national substantive law, including case law. This also applies to the doctrine of equivalence of the respective member state (see DISH v. AYLO, para. 165).
However, in the Division’s view, acts performed after the entry into force of the UPCA are subject to its substantive law. For these, the UPC must develop its own rules of equivalence, if necessary by referring to the traditions of the UPC member states. Substantive national law or the principles developed by national case law should not apply – so the Division. The member states have transferred to the UPC the application of the EPC and thus also the development and harmonization of law as far as acts that took place on or after June 1, 2023 are concerned.
Unfortunately, the Local Division did not develop principles of equivalent patent infringement in its decision. In a review of the rules of equivalence, developed by the member states, it merely found that they had in common that equivalent patent infringement was ruled out if there was no technical-functional equivalence of the substitute. This is the case if the modified means does not essentially fulfill the same function in order to achieve essentially the same effect. Insofar as the national equivalence principles do not refer to the same function, they at least – so the Division – refer to essentially the same effect. This is the lowest common denominator of the equivalence principles of the member states (see in this regard a previous decision of the Local Division Brussels of January 17, 2025 (UPC_CFI_376/2023).
The Division comments on the wording of the claims in the event of equivalent patent infringement, namely that it is not necessary to include in the claim the specific design of the substitute in the contested embodiment. More abstract descriptions are not objectionable, even taking into account the requirement of certainty, as long as the specific design of the substitute is unambiguously apparent from the statement of claims, which must always be used for interpretation.