HEWLETT-PACKARD DEVELOPMENT v LAMA FRANCE (CFI, 13 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision on the merits of 13 November 2024 (UPC_CFI_358/2023), the Paris Local Division ruled on Hewlett-Packard Development Company’s (HPDC) infringement action against LAMA France, based on two inkjet printhead patents, EP 2 089 230 and EP 1 737 669, and on LAMA’s counterclaim for revocation. The Division revoked EP 2 089 230 in its entirety for lack of novelty, for the eight States concerned other than Italy, and refused the proposed amendment. EP 1 737 669 was upheld and found infringed by LAMA as importer, for type 302XLB “clone” cartridges and for refurbished HP cartridges parallel imported from outside the EU. The Division granted an injunction, removal from the channels of commerce, destruction and disclosure of information, refused publication and the interim awards, and split the costs equally. The headnotes also set out principles of wider interest: the law applicable to acts before 1 June 2023, the handling of a competition law defence, and the absence of any requirement of prior notice for direct infringement.

Facts and procedure

HPDC sued on 13 October 2023, limiting its claims to the Contracting Member States other than Italy because of an action pending in Genoa against another defendant, which LAMA did not oppose (paragraphs 4 and 5). LAMA raised two preliminary questions, one on acts before the entry into force of the UPCA, the other on exhaustion and abuse of a dominant position (paragraphs 7 and 13). An order of 2 August 2024 required disclosure of information on invoices for cartridges imported from outside the EU (paragraph 9). HPDC filed an auxiliary request to amend claim 1 of EP 2 089 230. The oral hearing took place on 2 October 2024.

The applicable law

Claim construction followed Article 69 EPC and its Protocol, under the standard set by the Court of Appeal in UPC_CoA_335/2023 and UPC_CoA_1/2024 (paragraph 39). Validity fell under Articles 54, 56 and 138(1)(b) and (c) EPC, infringement under Articles 25, 26 and 29 UPCA, and the preliminary reference question under Article 21 UPCA and Rule 266.

Question

Are EP 2 089 230 and EP 1 737 669 valid, and should the UPC refer to the Court of Justice the questions raised by LAMA on the law applicable to acts before 1 June 2023 and on exhaustion combined with competition law?

Decision

According to the headnotes, national law does not apply to acts before 1 June 2023, the UPC’s substantive law being found in Articles 25 and 26 UPCA, the UPC may examine whether a competition law defence raised against the action applies, and LAMA’s being manifestly ineffective, no reference to the Court of Justice was needed. In proceedings conducted in French, construction arguments are assessed against the application as filed in English: the French translation of “latch circuitry” in the plural was an error, the English text being singular (paragraphs 49 and 60). Figures labelled as not claimed form part of the description and may be used for construction (paragraph 41).

For EP 2 089 230, insufficiency and added matter were rejected (paragraphs 52 to 94), but EP 1 172 211 disclosed every feature of claim 1, leading to the invalidity of that claim, the method claim and the dependent claims (paragraphs 99 to 113). The amendment adding pre-charging was refused, that feature being common general knowledge and already taught by US 2005/230 493 (paragraphs 114 to 123). The patent was revoked in its entirety (paragraph 124). For EP 1 737 669, the “address generator” is a circuit receiving a control signal and sending sequential signals to the cells, a single transistor not being enough (paragraph 136), none of the cited documents disclosed it, so novelty was established (paragraphs 160 to 191). No combination made the invention obvious, as none disclosed the address generator, and the dependent and method claims followed (paragraphs 192 to 200).

On infringement, the requests for a preliminary reference were refused: Articles 25 and 26 UPCA govern acts before 1 June 2023, which were already unlawful under harmonised law, and the Article 102 TFEU defence, with no definition of the relevant market, was ineffective (paragraphs 204 to 222). Claims for compensation go back to 11 October 2018, five years before the action (Article 72 UPCA, paragraph 225). No prior notice is required for direct infringement, a professional operator being expected to know its competitors’ patents (paragraphs 226 to 230). Exhaustion failed without any reversal of the burden of proof, HPDC proving the non-EU origin of the cartridges through their codes and oral testimony confirmed under solemn declaration (paragraphs 233 to 236 and 268 to 282). The bailiff’s purchase reports, website screenshots not specifically contested and the private CSIC expert report were admitted (paragraphs 238 to 250), but reasoning by equivalence between cartridge types was not enough: infringement was found only for the fully tested 302XLB cartridges, for claims 1 to 4 and 7 to 9 (paragraphs 251 to 267). LAMA is not a manufacturer but imports and resells to wholesalers (paragraphs 284 to 290). The injunction covers Germany, Austria, Belgium, Denmark, France, the Netherlands, Portugal and Sweden, excluding refurbished cartridges originally intended for the EU market and marketed there with HPDC’s consent, subject to a penalty of up to EUR 500 per product or per day of delay. Removal and destruction carry the same penalty, and LAMA cannot rely on the impossibility of checking its products (paragraphs 297 to 301). Publication was refused (paragraph 304). LAMA must disclose within 30 days its invoices, quantities, prices and suppliers for 11 October 2018 to 11 October 2023, possibly within a confidentiality club (paragraphs 310 to 313). The interim awards of damages and of representation costs (EUR 168,000 sought) were refused as unsubstantiated. As each party lost on one patent, costs are split equally, the amount to be set in separate proceedings (paragraphs 314 to 318).

Key points for practice

• Before a French local division, the English version of the patent and application prevails in resolving a translation issue in the claims (paragraphs 49 and 60).
• A manifestly ineffective competition law defence does not warrant a preliminary reference to the Court of Justice (paragraphs 216 to 222).
• Analyses “by equivalence” between product types do not prove infringement by those that were not fully tested (paragraphs 259 to 264).
• Practical point: a patentee relying on several related patents must defend each on its own distinguishing feature, as the construction of a single term (here, the address generator) may be enough to separate their fate.

Provisions applied

Agreement on a Unified Patent Court

Arts. 21, 25, 26, 29, 48(6), 63, 64, 65(5), 68, 69 and 72

Rules of Procedure

Rules 118.5, 151, 170(b), 171.2, 178.1, 191, 266 and 284

European Patent Convention

Arts. 54, 56, 69 and 138(1)(b) and (c), Protocol on the Interpretation of Article 69

Directive 2004/48/EC

Enforcement Directive

Other provisions

TFEU, Arts. 36 and 102

Case law cited

Court of Appeal, UPC_CoA_335/2023 and UPC_CoA_1/2024, Paris Local Division, order of 2 August 2024, UPC_CFI_358/2023, Edwards Lifesciences v Meril, Munich Local Division, 29 September 2023 (UPC_CFI_15/2023), ICPillar v ARM, Paris Local Division, 11 April 2024 (UPC_CFI_495/2023), Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024

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.