SWARCO FUTURIT Verkehrssignalsysteme GmbH. v. STRABAG Infrastructure & Safety Solutions GmbH

The proceedings were conducted before the Local Chamber Vienna under case reference UPC_CFI_33/2024 (ACT_4261/2024), concerning European Patent 2 643 717. The claimant was SWARCO Futurit Verkehrssignalsysteme GmbH, represented by NOMOS Rechtsanwälte GmbH. The defendant was STRABAG Infrastructure & Safety Solutions GmbH, represented by SONN Patentanwälte GmbH & Co KG. Chainzone Technology (Foshan) Co., Ltd., a Chinese entity, participated as an intervener (Streithelferin), represented by Kliment & Henhapel Patentanwälte OG and Gassauer-Fleissner Rechtsanwälte GmbH.

The dispute centered on an alleged patent infringement concerning European Patent 2 643 717. The defendant raised an invalidity objection based on exceeding the original disclosure (Überschreitung der Ursprungsoffenbarung). The case also involved questions regarding the appropriate scope of remedial measures, specifically the distinction between recall of infringing products and their final removal from distribution channels. Additionally, the claimant sought publication of the decision, and the question arose regarding cost allocation as between the parties and the intervener.

& Analysis:

The court addressed four principal legal issues. First, regarding the invalidity defense, the court held that under Rule 25 of the Rules of Procedure, when a defendant alleges that the patent is invalid, the statement of defense must contain a counterclaim for revocation of the patent against the patent proprietor in accordance with Rule 42 RoP. Since the defendant failed to file such a formal counterclaim, the court declined to address the substantive invalidity objection based on exceeding the original disclosure.

Second, regarding remedies, the court distinguished between recall of infringing products and their final removal from distribution channels, holding that final removal is an independent measure separate from recall. Removal is only available where the infringer has the actual and legal means to carry it out, and the formulation of concrete and sufficiently specific measures must be oriented accordingly.

Third, regarding publication under Article 80 EPGÜ, the court held that the decision to permit publication lies within the court's discretion. For such an order to be made, the claimant's interest in publication must outweigh any adverse consequences for the defendant. Publication is generally only considered when the claimant's protection is not already ensured by other measures. The court referenced prior decisions (UPC_CFI_373/2023, SodaStream v. Aarke; UPC_CFI_16/2024, Ortovox v. Mammut) and noted that the preventive purposes of Article 80 EPGÜ (deterrence of future infringers and public awareness) must be supported by specific submissions demonstrating the preventive interest in the particular infringement case.

Fourth, regarding costs, although the Rules of Procedure contain no separate cost provision for interveners, the court derived from the principle of Rule 315.4 RoP that an intervener is to be treated like a party for cost-bearing purposes. Where the supported party loses—as in the present case—a proportionate cost contribution would be justified if the intervener's participation caused additional effort for the prevailing party. In any event, an intervener on the losing side must bear its own costs.

Final Order & Ruling:

The decision was issued on January 15, 2025, by the Local Chamber Vienna. The court established guiding principles (Leitsätze) on the four key issues: (1) the mandatory nature of a formal revocation counterclaim when invalidity is pleaded, with the consequence that unsubstantiated invalidity objections will not be addressed; (2) the distinction between recall and final removal from distribution channels as separate remedial measures; (3) the discretionary nature of publication orders under Article 80 EPGÜ requiring a balancing of interests; and (4) the cost treatment of interveners as analogous to parties under Rule 315.4 RoP.