Brita v AQUASHIELD DACH (CFI, 22 August 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 22 August 2025 (UPC_CFI_248/2024 and, for the counterclaim for revocation, UPC_CFI_564/2024), the Munich Local Division largely revoked Brita’s EP 2 387 547 (a valve actuating device for a filter jug), maintaining it as amended by auxiliary request 16, and found that Philips-branded cartridges marketed by four Aquashield group companies indirectly infringe that version. It rejected the exhaustion defence, since Brita’s own cartridge does not itself practise the maintained claim, and granted only an injunction conditional on warnings, without contractual penalties or a declaration of infringement. It sheds light on defending a patent by closed claim sets and on tailoring remedies for indirect infringement.

Facts and procedure

Brita complained that Aquashield Europe, Aquashield DACH, Gasmarine BV and MGR26 marketed Philips filter cartridges (AWP210 to AWP213 and AWP230) in Germany, Austria, France and Italy that fit its jugs fitted with the PerfectFit system. It alleged direct and indirect infringement. The defendants relied on exhaustion and counterclaimed for revocation. Brita defended the patent through twenty auxiliary requests. The oral hearing took place on 18 July 2025.

The applicable law

Jurisdiction rests on Arts 31 and 32(1)(a) and (e) UPCA and Arts 4 and 7(2) of Regulation No 1215/2012, the opt-out having been withdrawn before the action was filed (paragraphs 82 and 83). Validity is assessed under Arts 54, 56, 84 and 123 EPC and indirect infringement under Art. 26 UPCA. Exhaustion under Art. 29 UPCA is an autonomous concept, without reference to national law (paragraph 233).

Question

Does the patent survive the cited prior art in amended form, and do the compatible cartridges indirectly infringe it notwithstanding the exhaustion defence raised for a replacement consumable?

Decision

Claim 1 contains no added matter (paragraphs 130 to 137) but, since a statement of purpose only requires the device to be suitable for the claimed function, it lacks novelty over WO 2005/118104 and WO 2008/058576 (paragraphs 143 to 156), claim 4 is anticipated by the latter (paragraph 162), whereas claim 12 is novel and inventive (paragraphs 163 to 174). As each closed set must contain every independent claim in an allowable form, with no examination of partial revocation under Art. 65(3) UPCA (paragraphs 178 and 179), auxiliary requests 1 to 15 failed, either for lack of novelty or because claiming the cartridge carrying the device extends the protection contrary to Art. 123(3) EPC (paragraphs 180 to 204). Auxiliary request 16, admitted under Rule 30.2, was upheld: the amendment meets Arts 84 and 123(2) EPC and involves an inventive step (paragraphs 205 to 213).

As the cartridge is not a complete device, direct infringement was rejected (paragraph 222), but indirect infringement was made out: the cartridge relates to an essential element, and consumers, although privileged under Art. 27(a), are not entitled persons under Art. 26(3) (paragraphs 223 to 230). Replacing a consumable expected during the product’s lifetime is in principle permitted use, unless the technical effects of the invention lie in the replaced part. The point was left open, since Brita’s cartridge lifts the closure member without tilting it (paragraphs 234 to 241). Knowledge followed from the compatibility statements on the packaging (paragraph 242).

The prohibition applies only absent warnings: to trade customers, that the cartridges may not be used without Brita’s consent, to private buyers, that they are not suitable for BRITA jugs with PerfectFit (paragraphs 244 to 253). Contractual penalties were refused, a minimum of EUR 1,000 for a product sold at about EUR 5 being disproportionate (paragraphs 254 to 259). Information and accounts with invoices from 23 May 2019 and damages were ordered (paragraphs 260 to 266), with a penalty of up to EUR 250,000 (paragraph 267), the Art. 64 declaration, which is confined to infringing products, was refused (paragraphs 268 to 272). No security was required (paragraph 277). Costs of the action are shared equally and Brita bears 90% of the costs of the counterclaim. The value in dispute was set at EUR 1,000,000 for the action and EUR 1,500,000 for the counterclaim (paragraph 278).

Key points for practice

• A statement of purpose in a device claim does not defeat prior art with the same physical features that is suitable for the claimed use.
• With closed claim sets, a single unallowable independent claim sinks the whole auxiliary request. Claiming the article that carries the protected device extends the protection.
• An exhaustion defence for a consumable requires the proprietor’s own product to practise the claim relied on.
• Practical point: for indirect infringement by means with lawful uses, the claimant should propose warnings tailored to each class of buyer, since contractual penalties and a declaration of infringement were not granted.

Provisions applied

Agreement on a Unified Patent Court

Arts 25, 26, 27(a), 29, 31, 32(1)(a) and (e), 43, 63, 64, 65, 67, 68, 69(2), 76(1) and 82

Rules of Procedure

Rules 4.1, 13.1, 19.1, 30.1, 30.2, 118.5, 118.8, 191, 263 and 354.3

European Patent Convention

Arts 54, 56, 69, 84, 123 and 138

Regulation (EU) No 1215/2012

Arts 4, 7(2), 24(4), 71a and 71b

Case law cited

Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), Court of Appeal, 25 September 2024 (UPC_CoA_182/2024), Court of Appeal, 14 February 2025 (UPC_CoA_382/2024), Court of Appeal, 21 May 2025 (UPC_CoA_365/2025), Munich Central Division, 16 July 2024 (UPC_CFI_1/2023), Paris Central Division, 5 November 2024 (UPC_CFI_309/2023), Düsseldorf Local Division, 14 January 2025 (UPC_CFI_16/2024), Mannheim Local Division, 22 November 2024 (UPC_CFI_210/2023)

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.