QUANTIFICARE v Canfield Scientific (CFI, UPC_CFI_559/2024, 23 April 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision pronounced on 23 April 2026 in the infringement action UPC_CFI_559/2024 and the counterclaim for revocation UPC_CFI_106/2025, the Düsseldorf Local Division holds that the counterclaim is unfounded and that Quantificare’s action against Canfield Scientific and others, directed at the « Vectra H2 » 3D imaging system, is essentially well founded (paragraph 70). EP 3 156 843 concerns a portable stereophotogrammetry device. A finding of infringement in a single Contracting Member State suffices for an order covering the other states where the patent is in force, even where that act is established only in the state carved out of the action for procedural reasons (paragraphs 239 and 240).

Facts and procedure

The patent, granted on 18 April 2018 without opposition, is in force in Belgium, Germany, France, Italy and the Netherlands. In Germany, the Federal Patent Court revoked it on 19 May 2022, a decision reversed by the Federal Court of Justice on 23 July 2024, and the Düsseldorf Regional Court found infringement on 8 April 2025. Before the UPC, Quantificare seeks an injunction and ancillary relief for Belgium, France, Italy and the Netherlands, the German part being carved out. The defendants counterclaim for revocation of claims 1 to 18, including, for defendants 2 to 5, for Germany. The hearing took place on 12 March 2026.

The applicable law

The UPC’s international jurisdiction derives from Articles 71a and 71b of Regulation (EU) No 1215/2012, read with Articles 4, 7(2) and 8(1) of that Regulation (paragraphs 72 to 75). Article 76(1) UPCA allows the claimant to limit its claims to avoid lis pendens with national proceedings (paragraph 77). Amendments to a party’s case during the proceedings are governed by Rule 263 RoP (paragraphs 81 to 83).

Question

Does the UPC have jurisdiction over all defendants, including the US group company, and what is the effect of carving out the German part of the patent on the action and on the counterclaim?

Decision

Jurisdiction is based on the seats of the European defendants, on Article 8(1) of the Regulation for defendant 2, whose distributors the others are, and on Article 7(2), it is also deemed accepted in the absence of a preliminary objection (paragraphs 73 to 76). The carve-out of the German part is valid, and it does not prevent defendants 2 to 5, who were not party to the national revocation proceedings, from counterclaiming against that part (paragraphs 77 and 80). On construction, claim 1 does not exclude moving parts, does not require both working distances to fall within the depth of field and does not require two separate lens systems (paragraphs 102 to 132).

The counterclaim, based on lack of inventive step, fails: the Kelsh K-490 and WO 722 are not realistic starting points, and no combination leads to two predefined distances corresponding to two image reproduction formats (paragraphs 156 to 216). The « Vectra H2 » literally infringes claims 1 and 14 (paragraphs 217 to 246). Liability for damages runs from 18 May 2018, one month after grant, and from 3 October 2018 for the company incorporated later, with no limitation (paragraphs 252 to 258). Information is due within 30 days, its purpose being limited, by way of clarification only, to calculating damages and identifying other infringers (paragraphs 259 to 270). The order also grants recall and removal of the products, penalty payments of at least EUR 1,000, an interim award of damages of EUR 20,000 and an interim award of EUR 90,000 for the costs of the counterclaim, without security (paragraphs 271 to 291). It dismisses the counterclaim. Costs of the action are borne 90% by the defendants and 10% by the claimant, the defendants bearing the costs of the counterclaim. The values are EUR 1,800,000 and EUR 2,250,000, and the ceiling on recoverable costs is EUR 600,000 (paragraphs 292 to 296).

Key points for practice

• A carve-out under Article 76(1) UPCA does not limit the counterclaim: a defendant not party to the national proceedings may attack the excluded part (paragraph 80).
• An infringing act established only in the carved-out state can found an order for the other states under Art. 34 UPCA (paragraphs 239 and 240).
• A new request added in the reply, even if modelled on the opponent’s, must be justified under Rule 263 RoP (paragraphs 81 to 83).
• Practical point: where national proceedings run in parallel, a carve-out avoids lis pendens without depriving the patentee of protection for the other states, but it leaves open a counterclaim against the excluded part.

Provisions applied

Agreement on a Unified Patent Court

Arts 25, 32(1), 34, 47(1), 63, 64, 67, 68, 69, 72, 76(1), 82 and 83(3)

Rules of Procedure

Rules 9.2, 19, 118, 119, 150.2, 191, 263, 352.1, 354.3 and 362

European Patent Convention

Art. 56, Art. 69

Regulation (EU) No 1215/2012

Arts 4, 7, 8, 24, 36, 71a and 71b

Case law cited

DexCom v Abbott, Paris Local Division, 4 July 2024, Edwards v Meril, Munich Local Division, 15 November 2024, Seoul Viosys v Laser Components, Paris Local Division, 24 April 2025, Belkin v Philips, Court of Appeal, 3 October 2025, Meril v Edwards, Court of Appeal, 25 November 2025, BFexaQC v NVIDIA, Munich Local Division, 11 March 2026, EOFlow v Insulet, Court of Appeal, 18 March 2026

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.