*** v OrthoApnea (CFI, 17 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision on the merits of 17 January 2025 (UPC_CFI_376/2023), given in Dutch, the Brussels Local Division dismissed a Belgian orthodontist’s action against OrthoApnea and Vivisol B for literal and equivalent infringement of a European patent for a mandibular advancement device. It held that the action on the merits had been started in time after the seizure of evidence, but lifted the seizure and ordered the return of the items seized.

Facts and procedure

The claimant, the patent proprietor, had obtained on 21 September 2023 an order to preserve evidence, executed the next day against OrthoApnea, the Spanish maker of the NOA device. The expert report was lodged on 28 September 2023 (paragraph 1). The statement of claim was lodged in Dutch on 23 October 2023, OrthoApnea having refused service for want of a translation (Rule 271.8 RoP), a Spanish translation was served on it on 18 January 2024 (paragraphs 2 to 5).

In his reply the claimant added an auxiliary plea of infringement by equivalence, admitted by the judge-rapporteur and then by the Court of Appeal (paragraphs 7 to 12). The value in dispute was set at EUR 250,000 (paragraph 13). The claimant relied on claims 1, 9 and 10 (paragraphs 32 to 34).

The applicable law

The Court examines its international jurisdiction of its own motion, here founded on Articles 4(1) and 8(1) of the Brussels I recast Regulation, or on Articles 7(2) and 71b(1), the Brussels division is competent under Article 33(1)(a) UPCA (paragraphs 51 and 52).

Rule 198.1 RoP requires proceedings on the merits to be started within 31 calendar days or 20 working days, failing which the order is revoked at the defendant’s request. Under Rule 17.4 RoP the action commences on the date of receipt attributed to the statement of claim (paragraphs 57 and 63). The extent of protection is determined under Article 69 EPC and its Protocol, applicable through Article 24(1) UPCA, the claim being read by the skilled person in light of the description and drawings (paragraphs 66 to 68).

Question

Is the action on the merits started in time under Rule 198.1 RoP where only the translation of the statement of claim is served after the time limit, and does a device whose upper and lower parts meet in the occlusal plane reproduce, literally or by equivalence, a stop located in the oral vestibule?

Decision

The request to lift the seizure for lateness was first of all inconsistent, since OrthoApnea itself relied on the expert report resulting from the seizure (paragraph 55). More importantly, the action was started on 23 October 2023, when the statement of claim was uploaded to the case management system, within the 31-day period, later service of the translation is irrelevant, as otherwise a defendant could postpone that starting point by refusing service (paragraphs 60 to 64).

On the merits, features 1.2.1 and 1.2.4 require a stop and a contact surface located in the oral vestibule that prevent further closing of the mouth (paragraph 79). In the NOA device it is the upper and lower parts, meeting in the occlusal plane, that limit closure, and a gap remains between the coupling elements (paragraphs 90 to 92). One-sided contact in a lateral sleeping position does not prevent closure on the other side (paragraph 93). Literal infringement of claims 1, 9 and 10 was rejected (paragraphs 95 and 96).

As to equivalence, the absence of functional equivalence is enough to exclude it, whichever test is applied (paragraph 98). Jaw forces are here borne in the occlusal plane rather than diverted to vestibular coupling elements, the very solution from which the patent sought to distinguish the prior art (paragraphs 99 to 102).

The claimant bears the costs. The ceiling for recoverable representation costs was set at EUR 38,000, the amount and compensation for harm caused by the seizure being left to subsequent proceedings (paragraphs 105 to 113). The seizure was lifted and the items must be returned within ten working days of service (Rule 198.2 RoP, paragraphs 110 and 111).

Key points for practice

• Proceedings on the merits are started, for the purposes of Rule 198.1 RoP, on the date the statement of claim is lodged in the case management system, even where a translation must later be served under Rule 271.8 RoP.
• A party that relies on the expert report from a seizure can hardly argue at the same time that the seizure should cease to have effect because the action on the merits was late.
• Lack of functional equivalence is enough to defeat a claim of infringement by equivalence, without any need to choose between the tests applied by the divisions.
• Practical point: dismissal of the action on the merits entails lifting of the seizure and return of the items (Rule 198.2 RoP), the proprietor is then exposed to a compensation claim, the basis of liability for which remains to be decided.

Provisions applied

Agreement on a Unified Patent Court

Arts 24(1), 32(1)(a), 33(1)(a), 54, 69(2) and 73(1)

Rules of Procedure

Rules 17.4, 118.5, 125, 150, 152.2, 196.4, 197.4, 198.1, 198.2, 271.8 and 300(a)

European Patent Convention

Art. 69 and Protocol on its interpretation

Regulation (EU) No 1215/2012

Arts 4(1), 7(2), 8(1) and 71b(1)

Case law cited

Aylo Freesites v DISH, Court of Appeal, 3 September 2024 (UPC_CoA_188/2024), NanoString v 10x Genomics, Court of Appeal, 11 March 2024 (UPC_CoA_335/2023), VusionGroup v Hanshow, Court of Appeal, 13 May 2024, Plant-e v Arkyne, The Hague Local Division, 22 November 2024 (UPC_CFI_239/2023)

Related decisions

• OrthoApnea v ***, Court of Appeal, 21 November 2024, appeal concerning admission of the equivalence plea.
• *** v OrthoApnea, 17 September 2024, order setting the value in dispute and organising the hearing.
• *** v OrthoApnea, Court of Appeal, 3 July 2025, withdrawal of the appeal.

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.