Hartmann Packaging v Omni-Pac Ekco GmbH Verpackungsmittel (CFI, 15 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 15 October 2025, given in joined proceedings UPC_CFI_115/2024 and UPC_CFI_377/2024, the Düsseldorf Local Division dismissed Hartmann Packaging’s infringement action against two Omni-Pac companies and partly allowed their counterclaim for revocation of EP 2 755 901, which concerns a display and distribution package for eggs. Claim 1 as granted lacks inventive step, choosing moulded fibre from the three materials known for egg boxes being obvious. It was maintained as auxiliary request 2, while claim 6 (method) was maintained as granted. The attacked products, which use a flexible closing flap, lack the claimed retainment projection. Equivalence, raised late, was disregarded. The decision is useful in practice on three points: priority assessed claim by claim, no closed claim sets where the proprietor has not said so, and the sanction for a new argument slipped into the rejoinder on the counterclaim.

Facts and procedure

The patent, filed on 11 September 2012 claiming priority from a European application of 13 September 2011, was granted on 21 February 2018 without opposition. The opt-out was withdrawn on 14 March 2024. Hartmann Packaging alleged infringement of claims 1 (package) and 6 (moulding process) in Germany, France and the Netherlands, seeking among other things an injunction, information, destruction, damages, an interim award of EUR 11,000 and penalty payments. It dropped its recall claim with the defendants’ consent (paragraph 13). It relied on equivalence in its reply (paragraph 28), further pleadings were refused by the judge-rapporteur’s order of 4 March 2025 (paragraph 29). The defendants challenged priority and cited several prior art documents. The proprietor defended the patent with four auxiliary requests.

The applicable law

Jurisdiction rests on Articles 31, 32(1)(a) and (e) and 83(3) UPCA and on Regulation 1215/2012. Construction follows Article 69 EPC and its Protocol, with the same principles for infringement and validity (paragraph 65), priority falls under Article 87 EPC.

Question

Do claims 1 and 6 enjoy the priorities claimed, are they novel and inventive, should the auxiliary requests be treated as closed sets, and do the Omni-Pac packages reproduce the retainment projection, literally or by equivalence?

Decision

On construction, the retainment projection must be stiff enough to allow closing in a single operation, which excludes the flexible flaps of the prior art (paragraphs 84 to 94), and claim terms cover, in case of doubt, every embodiment presented as the invention (paragraph 78). « The same invention » in Article 87 EPC requires the skilled person to derive the claimed subject matter directly and unambiguously from the earlier application as a whole: claim 1 enjoys the priority of 13 September 2011, claim 6 only that of the PCT application of 21 August 2012 (paragraphs 110 to 113). Both claims are novel (paragraphs 114 to 149). Claim 1 as granted is not inventive over EP 1 389 590, which does not disclose the material: choosing a material from a limited number of materials known to suit the purpose calls for no particular skill (paragraphs 159 to 166). Claim 6 is inventive (paragraphs 167 to 172). Auxiliary request 1, though admissible, is not inventive. Auxiliary request 2, which adds a nose working as a hook on the lower edge of the aperture, is (paragraphs 173 to 200). As the proprietor had not expressly said otherwise, the requests are not closed sets, so only claim 1 is limited (paragraphs 201 to 205). On infringement, the flexible flap of the attacked products is not a retainment projection (paragraphs 214 to 216), the equivalence argument, first raised in the rejoinder on the counterclaim, was disregarded under Rule 9.2 and would in any event fail for want of the same function and effect (paragraphs 217 to 224). Claim 6 is not infringed either (paragraphs 225 and 226). The operative part revokes the patent for all states where it is in force to the extent that it goes beyond claims 1 to 8 as maintained, otherwise dismisses the counterclaim, dismisses the infringement action, orders the claimant to bear the costs of the action and splits the costs of the counterclaim 40% to each defendant and 20% to the claimant, sets the ceiling for recoverable representation costs at EUR 112,000 and the value of each claim at EUR 500,000. The panel was presided over by Judge Thomas.

Key points for practice

• Priority is assessed claim by claim: an independent claim that only enjoys a later priority is exposed to documents published in the meantime.
• Choosing a material from the few materials known for the purpose is not, as a rule, inventive, unless the prior art requires a particular material.
• Where the proprietor does not state that it defends closed claim sets, the division may limit one independent claim and maintain the other as granted.
• Practical point: equivalence should be pleaded in the reply in the infringement action, inserting it without leave in the rejoinder on the counterclaim risks exclusion under Rule 9.2.

Provisions applied

Agreement on a Unified Patent Court

Arts 31, 32(1)(a) and (e), 65(3), 69(1), 76(1) and 83(3)

Rules of Procedure

Rules 9.2, 19, 36, 118.5, 119, 125, 152.2 and 352

European Patent Convention

Art. 54, Art. 56, Art. 69, Art. 87 and Art. 89

Regulation (EU) No 1215/2012

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

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, SES-imagotag (VusionGroup) v Hanshow, Court of Appeal, 13 May 2024, Mammut v Ortovox, Court of Appeal, 25 September 2024, Alexion v Amgen, Court of Appeal, 20 December 2024, Koninklijke Philips v Belkin, Munich Local Division, 13 September 2024, 10x Genomics v Curio Bioscience, 16 June 2025, Aesculap v Shanghai International, Düsseldorf Local Division, 10 July 2025, Sanofi-Aventis Deutschland v Amgen, Munich Central Division, 16 July 2024, Abbott Diabetes Care v Sibio, Court of Appeal, 14 February 2025, Brita v Aquashield, Munich Local Division, 22 August 2025, Avago v Tesla, Hamburg Local Division, 26 August 2025 (UPC_CFI_54/2023), OrthoApnea, Court of Appeal, 21 November 2024, N.J Diffusion v Gisela Mayer, Paris Local Division, 1 August 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.