Canon Kabushiki Kaisha v Katun Germany (CFI, 11 February 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision on the merits of 11 February 2026, given in the infringement action (UPC_CFI_351/2024) and the joined revocation counterclaim (UPC_CFI_595/2024), the Düsseldorf Local Division held Canon Kabushiki Kaisha’s EP 3 686 683, on a developer replenishing container, valid and infringed by toner bottles made by General Plastic Industrial and distributed by three Katun group companies. It granted an injunction, recall and destruction, an interim award of EUR 100,000 in damages and ordered the defendants to publish the operative part on their own website, because they had used it to describe their products as non-infringing. The decision matters for the compatible consumables market and for the use of Art. 80 UPCA as a corrective measure.

Facts and procedure

Canon sued four defendants on 28 June 2024: Katun Germany GmbH, Katun (E.D.C.) B.V., Katun Corporation and the Taiwanese General Plastic Industrial Co., Ltd., which manufactures toner bottles for imageRUNNER multifunction printers (paragraphs 9 to 19). The first three filed a revocation counterclaim on 14 October 2024. Service on Katun Corporation, initially disputed, was no longer contested by 4 December 2025 (paragraphs 22 to 24). The oral hearing took place on 8 January 2026. According to the claimant, the EPO Opposition Division rejected the opposition on 27 January 2026, with written reasons still awaited (paragraph 5).

The applicable law

Validity is assessed under Articles 54, 56 and 123(2) EPC, applied through Article 138(1)(c). Remedies fall under Articles 63, 64, 67, 68 and 80 UPCA: an injunction is the rule unless there are special reasons, assessed under the proportionality principle in Article 3 of Directive 2004/48 (paragraph 178). Costs follow Article 69 UPCA.

Question

Does claim 1 cover the container alone or a system including the printer, does the patent survive the added matter, novelty and inventive step attacks, and what remedies follow a finding of infringement?

Decision

Claim 1 covers the container alone: it need only be mountable to the receiving apparatus, the system being the subject of claim 17 (paragraphs 84 to 91). There is no added matter (paragraphs 93 to 122) and D3 (EP 2 837 973) does not anticipate (paragraphs 123 to 142). Starting from D3, the objective problem is smooth mounting. Nothing points to the invention, and the « two alternatives » argument is hindsight (paragraphs 158 to 163). Direct infringement is established, General Plastic being treated as an accomplice (paragraph 174). The injunction was granted with no grace period: the patent is not standard essential, no serious antitrust ground was raised, and the Ecodesign Directive 2009/125 confers no rights on individuals (paragraphs 180 to 184). Interim damages were set at EUR 100,000, extrapolated from the defendants’ own figures. The late request for joint and several liability was an amendment under Rule 263 and was refused (paragraphs 211 to 219). The defendants’ request for security was dismissed, Canon’s solvency being undisputed (paragraphs 232 to 238). Canon bears 10% of the costs of the infringement action and each defendant 22.5%, while the Katun companies bear the counterclaim costs. Recoverable costs are capped at EUR 600,000 (paragraphs 244 to 248).

Key points for practice

• The subject of a claim is read from its wording and the claim set as a whole: a reference to mountability does not bring the printer into a product claim.
• A request for joint and several liability added during the proceedings is an amendment of the claim under Rule 263 and must be justified by the impossibility of raising it earlier.
• Publication on the infringer’s own website is justified where the infringer used it to assert non-infringement (paragraphs 220 to 229).
• Practical point: public statements about pending litigation, such as claiming a product does not infringe, can count against their author when publication measures are decided.

Provisions applied

Agreement on a Unified Patent Court

Arts 25, 63, 64, 67, 68, 69 and 80

European Patent Convention

Art. 54, 56, 69, 123 and 138

Directive 2004/48/EC

Art. 3

Rules of Procedure

Rules 118, 263, 352 and 354

Case law cited

VusionGroup v Hanshow, Court of Appeal, 13 May 2024, Mammut v Ortovox, Court of Appeal, 25 September 2024, Ballino v Kinexon, Court of Appeal, 26 August 2024, Abbott v Sibio, Court of Appeal, 14 February 2025, expert e-Commerce v Seoul Viosys, Court of Appeal, 2 October 2025, Seoul Viosys v expert e-Commerce, Court of Appeal, 5 November 2025, Amgen v Sanofi, Court of Appeal, 25 November 2025, Bhagat v Oerlikon, Court of Appeal, 9 December 2025, 10x Genomics v Nanostring, Court of Appeal, 26 February 2024, Meril v Edwards, Court of Appeal, 25 November 2025

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.