Versah v HaeNaem (CFI, 25 August 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision on the merits of 25 August 2026 (UPC_CFI_56/2025 and UPC_CFI_864/2025), the Düsseldorf Local Division ruled on the infringement action on EP 3 402 420 (a dental rotary osteotome with helical flutes) brought by Versah LLC, an exclusive sub-licensee, against HaeNaem, the Korean manufacturer, and Adin Dental Implant Systems Ltd., the Israeli distributor, and on their counterclaim for revocation. The division accepted the exclusive sub-licensee’s standing, construed the claim treating the patent as its own lexicon, dismissed the counterclaim and found literal infringement: it granted an injunction for nine States, information and rendering of accounts from 1 August 2020, a recall, a declaration of infringement and liability for damages, with costs against the defendants.

Facts and procedure

Versah sought an injunction for nine participating states, information, a recall, a declaration of infringement and damages (paragraph 17). The defendants sought revocation of the patent in full, Versah defending it in the alternative with nine auxiliary requests, supplemented on 19 February 2026 by auxiliary request 2a, which the defendants challenge as late (paragraphs 14, 15 and 19 to 22). The action against Adin Dental Implant Systems GmbH had been withdrawn with approval on 2 June 2025. The oral hearing took place on 14 July 2026.

The applicable law

With no objection raised, jurisdiction is established (Rule 19.7 RoP) and the counterclaim falls under Art. 32(1)(e) UPCA (paragraphs 63 to 65). Under Art. 47(2) UPCA, an exclusive licensee may sue as the proprietor provided the proprietor was notified beforehand. The claim is construed with the description and drawings, in the same way for infringement and validity (paragraph 84). Novelty requires direct and unambiguous disclosure of every feature, and passages of a document may be combined only where a clear teaching points to it (paragraphs 146 and 147).

Question

May an exclusive sub-licensee sue before the UPC, and does the patent withstand the objections of added matter, insufficiency and lack of novelty?

Decision

Standing was accepted: the exclusive licence includes the right to sublicense, the sublicence includes the right to sue, the validity of self-contracting is governed by Michigan law, which does not prohibit it according to Versah’s unrebutted expert opinion (Rule 171.2 RoP), and notification of the proprietor is undisputed (paragraphs 66 to 71). As the patent is its own lexicon, the definition of the rake angle in the description prevails (paragraph 112). No added matter was found (paragraphs 124 to 134). Insufficiency was rejected: a reasonable amount of trial and error is acceptable and the burden lies on the party alleging it (paragraphs 135 to 143). D1 (WO 2014/077920) does not anticipate claims 1 and 11: a rake angle that may be « positive, negative or zero », preferably zero, does not disclose a negative rake angle along the entire cutting face, D2, D3, D4, D5 and D7 do not either (paragraphs 145 to 177). Inventive step was upheld: as D1 and D3 prefer a zero rake angle for the cutting face, nothing prompted making it negative, and D8 and D9 do not change this, priority is immaterial (paragraphs 178 to 198). Literal infringement of claim 1 was found: against Versah’s private expert report, the defendants’ general denial was insufficient (Rule 171.2 RoP), that the osteotomes are meant to be rotated one way only is irrelevant, what matters being their objective ability to meet the features, and their brochure even acknowledges high cutting performance in the opposite direction (paragraphs 199 to 224). HaeNaem and Adin imported and placed the products on the market in Germany, which suffices for the remedies without distinguishing between acts of use (paragraphs 225 to 229). The division ordered an injunction for Germany, Austria, Denmark, Italy, Belgium, Finland, France, the Netherlands and Sweden, information and rendering of accounts with supporting documents, recall within three weeks, a declaration of infringement (Art. 64(2)) and liability for damages, subject to penalties of EUR 10,000 per product or EUR 30,000 for continuing acts (paragraphs 230 to 240). The defendants bear the costs of the action and counterclaim, no security was ordered, the value was set at EUR 500,000 for each and the ceiling for representation costs at EUR 112,000 in total (paragraphs 241 to 245). The headnote states that, for direct infringement of a product claim, the decisive factor is whether the product is objectively capable of meeting the claim features. The corresponding reasoning was not read.

Key points for practice

• An exclusive sub-licensee proves standing through the chain of agreements. An unrebutted opinion on foreign law suffices (paragraph 70).
• A definition given in the description prevails over the ordinary meaning of a term (paragraph 112).
• The party alleging insufficiency bears the burden of proof (paragraph 139).
• Practical point: for a product claim, the use recommended by the manufacturer is no defence where the product remains objectively capable of being used as claimed, and a technical denial must engage with the opposing expert report (paragraphs 213 to 224).

Provisions applied

Agreement on a Unified Patent Court

Arts. 25(a), 32(1)(e), 47(2), 63, 64(2), 65, 67, 68, 69(2) and 82

Rules of Procedure

Rules 19, 19.7, 30, 118.5, 118.8, 171.2, 191, 352.1, 354.3 and 354.4

European Patent Convention

Art. 54(1), 56, 69 and Protocol on its interpretation, 123(2) and 138(1)(a) to (c)

Regulation (EU) No 1215/2012

Arts. 24(4), 71a(2)(a) and 71b(1)

Case law cited

NUC v Hurom, Court of Appeal, 27 March 2026 (UPC_CoA_409/2025), 10x Genomics v Nanostring, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), VusionGroup v Hanshow, Court of Appeal, 13 May 2024 (UPC_CoA_1/2024), Mammut v Ortovox, Court of Appeal, 25 September 2024 (UPC_CoA_182/2024), Abbott v Sibio, Court of Appeal, 14 February 2025 (UPC_CoA_382/2024), Amgen v Sanofi, Court of Appeal, 25 November 2025 (UPC_CoA_528/2024), Meril v Edwards, Court of Appeal, 25 November 2025 (UPC_CoA_464/2024), expert e-Commerce v Seoul Viosys, Court of Appeal, 2 October 2025 (UPC_CoA_764/2024), Seoul Viosys v expert e-Commerce, Court of Appeal, 5 November 2025, Fujifilm v Kodak, Court of Appeal, 13 July 2026 (UPC_CoA_473/2025), Belkin v Philips, Court of Appeal, 3 October 2025 (UPC_CoA_534/2024), Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024, Grundfos v Hefei, Düsseldorf Local Division, 8 May 2025, Panasonic v OPPO, Mannheim Local Division, 22 November 2024, Ortovox v Mammut, Düsseldorf Local Division, 14 January 2025 (UPC_CFI_16/2024), M-A-S v Altech, Düsseldorf Local Division, 10 December 2025 (UPC_CFI_316/2024), Hologic v Siemens, Düsseldorf Local Division, 10 June 2026 (UPC_CFI_758/2024), Trumpf v IPG Laser, Düsseldorf Local Division, 16 March 2026 (UPC_CFI_733/2024)

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.