Working worse is no defence: a recent UPC order reinforces feature-based claim scope (UPC_CFI_630/2025)

1. The scope of protection of a device claim regularly extends to embodiments in which the claimed structural features are present, even if they do not fully and unrestrictedly realise the function or technical advantage intended for them in the patent specification (inferior embodiment). Limiting the scope of protection of the claim to the fulfilment of a technical function or a corresponding technical advantage that is apparent to a person skilled in the art but not claimed would not adequately protect the patent proprietor. 

2. If the defendant has specifically contested the applicant´s submissions, it is the defendant's responsibility to respond to this contestation by presenting facts which, with the certainty required for the ordering of provisional measures, allow the Court to make a corresponding finding. Unlike in main proceedings, there is normally no room for further clarification of the facts in summary proceedings, for example in the form of obtaining an expert opinion. 

3. In PI proceedings, the burden of presentation and proof of facts concerning the validity of the patent lies with the defendant. If both parties submit translations of a prior art document and their accuracy is disputed, the defendant is obliged to provide detailed reasons why its translation is correct. If the defendant fails to do so, the Court will base its order on the applicant’s translation.

The present UPC Order UPC_CFI_630/2025 of the Düsseldorf Local Division provides guidance on how to define the scope of protection of a device claim in the context of preliminary injunction (PI) proceedings. It also nicely illustrates that the alleged infringer has the burden on establishing invalidity in these proceedings.

While the claim wording remains the decisive reference point, the court expressly relied on the description and drawings to understand the technical meaning and context of the claimed features, including how they are realised in practice. The order thus confirms that in construing a patent claim, claim features are not to be interpreted in isolation, but are consistently to be read in light of the description and drawings. These principles of claim construction apply equally to the assessment of infringement and to the assessment of the validity of a European patent (UPC_CoA_335/2023; UPC_CoA_1/2024; UPC_CoA_182/2024). In this respect, the UPC closely mirrors the interpretative principles reaffirmed by the Enlarged Board of Appeal in G1/24.

The decision illustrates a significant principle: when assessing the scope of protection of a device claim, the structural features of the claim are key, not whether the intended technical advantage is fully realised. Specifically, the court held that if an embodiment incorporates all structural features recited in a device claim, the claim’s scope extends to that embodiment, even if it performs less effectively than the optimal or intended technical performance that is outlined in the description. The mere presence of the claimed structural features thus suffices to establish literal infringement in a PI context. Using non-optimal embodiments of an invention is not an infringement defence!

It also provides a concrete example of how the burden of proof for patent invalidity rests with the defendant. Where parties submitted conflicting translations of prior art documents, the court made clear that the defendant must justify its translation with sufficient detail. Failing to do so, the court will accept the applicant’s version of the translation. This reinforces the strict evidentiary expectations in preliminary measures at the UPC, where there is typically no scope for further fact-finding or expert evidence beyond the parties’ written submissions.