Franz Kaldewei v Bette (CFI, 3 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 3 July 2024 (UPC_CFI_7/2023), the Düsseldorf Local Division ruled on Franz Kaldewei’s infringement action against Bette based on EP 3 375 337 (a sanitary bathtub assembly supported by rigid plastic foam profile strips) and on the counterclaim for revocation. Claim 1 as granted lacks inventive step, but the patent is upheld as amended by the auxiliary request, which combines claims 1 to 3, the infringement action is held admissible and well founded, for both direct and indirect infringement. The decision is of note for reading Article 28 UPCA as a mere reference to national prior-use rights and for finding indirect infringement without deciding whether a double territorial link is required. The Division granted an injunction, information supported by invoices, recall, cancellation of pending orders and an interim award of EUR 10,000, and split the costs.

Facts and procedure

Kaldewei, the patent proprietor, alleged that Bette offered and marketed the « Bette Floor », « BetteFloor Side » and « Bette Ultra » tubs (direct infringement) and the « Flex » profile strip set (indirect infringement) in Austria, Belgium, Denmark, France, Italy, Luxembourg and the Netherlands. The action was filed on 1 June 2023. Bette counterclaimed for revocation of claims 1 to 3, relying in particular on lack of novelty and inventive step over DE 197 10 945 C1 (« DE 945 »), and pleaded a prior-use right based on activities in Germany. Kaldewei defended the patent with an auxiliary request. The oral hearing took place on 16 May 2024.

The applicable law

Validity and infringement are assessed on a single claim construction, in line with Article 69 EPC and its Protocol (sections A and C). The UPC’s exclusive jurisdiction over the counterclaim follows from Article 32(1)(e) UPCA, no opt-out being in force (section B.II). Inventive step falls under Article 56 EPC, direct and indirect infringement under Articles 25(a) and 26 UPCA, prior use under Article 28 UPCA, remedies under Articles 63, 67 and 68 UPCA.

Question

Is claim 1, as granted or as amended, valid over DE 945 and over KMG 9 and KMG 10? Can a prior-use right based on acts in Germany be relied on, and does supplying the profile strip set amount to indirect infringement?

Decision

The defendant’s request for a retroactive extension of the deadline for final documents (Rule 9.3(a) RoP) was refused, as it should have accompanied the pleading concerned (section B.III). Claim 1 as granted is novel over DE 945, but using rigid plastic foam for the profile strips does not go beyond routine development (section D.I.2). The auxiliary request, which adds the upper fixing section with a compressible oversize and the foot section projecting beyond the lower edge, is admissible, novel, since DE 945 does not clearly and unambiguously disclose those features, and inventive over DE 945 and over the combination of KMG 9 and KMG 10 (section D.II). Article 28 UPCA does not create a European prior-use right but refers to the national law of each state. The defendant relied only on acts in Germany, which was not in issue (section E.II). The strip set is an essential element of the invention. Whether a double territorial link is required was left open, as the objective conditions are met on either view, and knowledge follows from the marketing of the set as a « practical retrofit kit » (section E.IV). An injunction is justified, a general assertion that the acts had ceased being insufficient (section F.I.1). The information claim under Article 67 UPCA is proportionate, disclosure of the books belonging to the procedure for the determination of damages (section F.I.2.a). Article 68(3)(a) and (b) UPCA, read with Rule 191 RoP, does however allow the court to order, in the infringement decision itself, disclosure of the cost factors relied on by the infringer in calculating its profits and of invoices, or failing that delivery notes, supporting the information, efficiency arguing against deferring this to a second procedure (section F.I.2.b). Recall rests on Article 64(2)(b) and (4) UPCA, definitive removal from the channels of commerce is a separate measure, limited to what the infringer can do in fact and in law, here asking commercial customers to cancel their orders, and refused for the kit, which can be used in Germany (sections F.I.3 and F.I.4). The minimum penalty for measures other than the injunction was reduced to EUR 250 per day, and an interim award of EUR 10,000 was made under Rule 119 RoP (sections F.I.5 and F.I.6).

The operative part revokes the patent for Austria, Belgium, Denmark, France, Italy, Luxembourg and the Netherlands to the extent it goes beyond amended claim 1 and otherwise dismisses the counterclaim. It enjoins Bette from offering and marketing the tubs and supplying the kit in those states, subject to a penalty of at least EUR 1,000 per product, orders within thirty days information from 29 June 2022, recall and cancellation of orders, makes the interim award and declares liability for damages. Costs of the counterclaim are split equally and those of the action borne 85% by Bette, the ceilings for representation costs are set at EUR 47,600 and EUR 8,400 for the action and at EUR 28,000 per party for the counterclaim, no security being ordered since infringement was undisputed and the risk of harm limited (sections G and H).

Key points for practice

• Disclosure of the books belongs to the procedure for the determination of damages, but the infringer’s cost factors and invoices supporting the information may be ordered in the infringement decision itself (section F.I.2).
• A prior-use right must be pleaded and proved state by state, since Article 28 UPCA refers to national law (section E.II).
• The Division found indirect infringement without taking a position on the double territorial link, where the conditions are met under either reading (section E.IV).
• Practical point: against an inventive step attack, an auxiliary request combining dependent claims may save the patent and allow infringement to be assessed on that basis.

Provisions applied

Agreement on a Unified Patent Court

Arts 25(a), 26, 28, 32(1)(e), 63, 64(2) and (4), 65, 67, 68(1) and (3), 69(2) and 82

Rules of Procedure

Rules 9.3, 19.7, 25.1, 30, 118.5, 118.8, 119, 131.1, 141, 191 and 354.3

European Patent Convention

Art. 56, Art. 64 and Art. 69 and its Protocol on Interpretation

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024 (GRUR-RS 2024, 2829), Düsseldorf Local Division, order of 9 April 2024 (UPC_CFI_452/2023)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.