SWARCO Futurit Verkehrssignalsysteme v STRABAG Infrastructure & Safety Solutions (CFI, 16 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 15 January 2025 (UPC_CFI_33/2024), issued in German, the Vienna Local Division largely upheld SWARCO Futurit’s infringement action on EP 2 643 717 (colour-mixing collecting optics for LED display panels) against STRABAG Infrastructure & Safety Solutions, joined by the intervener Chainzone Technology (Foshan), which supplied the panels. It granted an injunction for ten states, information, destruction and recall, found liability in damages and refused publication. Two points matter for practitioners: an invalidity defence raised without a counterclaim was not examined, and the intervener was ordered to bear part of the costs.

Facts and procedure

Under a tender by ASFINAG, the defendant installed variable message signs fitted with optics supplied by Chainzone. It denied infringement and argued that the patent extended beyond the application as filed, without bringing a counterclaim for revocation. The oral hearing took place on 3 December 2024.

The applicable law

Rule 25 RoP requires a defendant who challenges validity in an infringement action to bring a counterclaim for revocation (Rule 42). The remedies rest on Articles 63, 64, 67, 68 and 80 UPCA, claims are construed under Article 69 EPC and its Protocol. Costs follow Article 69 UPCA and Rule 118.5.

Question

Can an invalidity defence be examined without a counterclaim, do the contested optics fall within claim 1, and which remedies should be granted?

Decision

Absent a counterclaim, the invalidity defence was not examined on the merits (section B). The skilled person reads “collecting lens” as including aspheric lenses, and feature M10 refers to a focal region rather than a geometric point. Features M12 and M13 do not require a physically polished rod, the test being total internal reflection (section C.2.3). Claim 1 and claims 2 to 5, 10 and 14 are infringed (section C.3). The injunction carries penalties of up to EUR 100,000 per infringement, information, destruction and recall are due within 14 days. Definitive removal from the channels of commerce is a measure distinct from recall, available only where the infringer has the factual and legal means (section C.4.5). Publication was refused for want of a specific interest (section C.4.8). The claimant’s costs are borne by the defendant and the intervener, the reasons apportioning them 80% and 20% (section D).

Key points for practice

• Before the UPC, validity can be put in issue in defence to an infringement action only through a counterclaim for revocation (Rule 25).
• Recall and definitive removal from the channels of commerce are two distinct measures under the UPCA (section C.4.5).
• An intervener supporting the defendant may be ordered to bear part of the claimant’s costs.
• Practical point: a supplier intervening in support of its customer should factor in that costs exposure before joining the proceedings.

Provisions applied

Agreement on a Unified Patent Court

Arts 25, 26, 63, 64, 67, 68, 69, 73(1), 80 and 82

Rules of Procedure

Rules 25, 42, 118.5, 125, 150, 190, 220.1, 224.1 and 315.4

European Patent Convention

Arts 69 and 138(1)

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, UPC_CoA_335/2023, Mammut v Ortovox, Court of Appeal, 25 September 2024, UPC_CoA_182/2024, Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024, UPC_CFI_7/2024, SodaStream v Aarke, Düsseldorf Local Division, 31 October 2024, UPC_CFI_373/2023, Panasonic v OPPO, Mannheim Local Division, 22 November 2024, UPC_CFI_210/2023, Ortovox v Mammut, Düsseldorf Local Division, 14 January 2025, UPC_CFI_16/2024.

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.