Proceeding Decision

1) Concerning the discussion on the admissibility of unconditionally amended claims of the patent as requested by the Claimant, the Defendant argues an inadmissibility on the grounds of added matter based on an alleged unallowable intermediate generalisation. However, the argument from the Defendant that no less than eight features are inextricably linked is unfounded, as the Defendant has not demonstrated the link, and the skilled person would understand that in describing an embodiment, features may be used to illustrate its working that are not necessarily an essential part of the invention. Consequently, the amended claims do not comprise added matter. 2) Concerning the argument that an objection based on Art. 34 UPCA falls in the scope of R. 19 RoP: the Court considers that the issue in dispute is the territorial scope of the UPC's decisions. A preliminary objection under R. 19 RoP is limited to three matters: the jurisdiction and competence of the UPC, the competence of a division and the language of the Statement of claim. Under R.19 RoP, the international jurisdiction of the UPC (Article 31 UPCA), the substantive jurisdiction of the UPC (Article 32 UPCA) and the territorial jurisdiction amongst divisions (Article 33 UPCA) may be challenged. A distinction must be made between, on the one hand, the jurisdiction of the UPC (Articles 31, 32 and 33 UPCA) and, on the other hand, the territorial scope of the UPC’s decisions, as defined in Article 34 UPCA related to "Territorial scope of decisions". In other words, Article 34 UPCA “relates to the scope of the effect of the decisions” (UPC_CFI_159/2024, LD Mannheim, Decision 11 March 2025, §107). The territorial scope of a UPC decision does not concern matters of jurisdiction or competence falling within the scope of application of R. 19 RoP. It follows from this that the Defendants' objection based on Article 34 UPCA is admissible. 3) Concerning claims for infringement remedies in a territory outside CMS: the patent owner’s claim concerning alleged acts of infringement o n Polish territory is admissible in light of the decision handed down by the CJEU in BSH v Electrolux, as has already been stated by several divisions of the UPC concerning non-Contracting Member States (concerning either EU States or third States, UPC_CFI_355/2023, LD Düsseldorf, 28 January 2025; UPC_CFI 702/2024, LD Paris, 21 March, 2025; UPC_CFI 792/2024, Milan LD, 15 April, 2025: all decisions on long-arm jurisdiction). However, on the merits, the Claimant bears the burden of proof for the alleged facts in accordance with R.13m RoP and R. 171.1 RoP. In the case at hand, no factual element has been introduced into the proceedings concerning the alleged infringement facts relating specifically to the alleged infringing products referred to in this application. It is only alleged that the Defendants’ websites are accessible throughout Europe, and the turnover achieved by Defendant 1 in Europe is given without any indication as to whether the latter actually relates to the allegedly infringing products. Consequently, the Claimant’s request for infringement based on the national part of the patent as granted for Poland cannot be considered as well-founded.

Admissibility of the amendment of the patent, Added-matter, Intermediate generalisation, Article 138(1)(c) EPC, Preliminary objection and Territorial scope of the UPC decisions, R.19 RoP and Article 34 UPCA., Burden of proof, Infringement action, R. 13m RoP and R. 171.1 RoP.