[UPCKat] Preliminary injunctions in the UPC: CUP&CINO v Alpina Coffee Systems

The UPCKat getting into the spirit of the 
As part of our UPCKat reporting on the latest UPC developments,  the IPKat is kicking off a series of reporting on preliminary injunctions that analyzes the development of preliminary injunction case law from the UPC.  With our guest UPCKat team in the form of UPC advocate and guest UPCKat Agathe Michel-de Cazotte and members from the team at Carpmaels we kick off the first post in the series going back to September 2023 and the Vienna local division.  

Over to the team to report on 13 September 2023 decision in CUP&CINO Kaffeesystem-Vertrieb GmbH & Co KG v Aplina Coffee Systems GmbH (UPC_CFI_182/2023):

Background to the case

The patent in suit related to a method and device for producing milk foam. The patentee, CUP&CINO, requested a preliminary injunction against a coffee machine with milk frothers manufactured by the defendant, Alpina Coffee Systems. 

The Vienna Local Division rejected the request on the basis that there was no infringement of the patent in suit. 

Guidance on the interpretation of the patent

Relatedly, it gave guidance on the scope of protection of a European Patent: it must be interpreted based on (the well-known) article 69 (1) EPC and its interpretive Protocol together with article 24 (1)(c) Unified Patent Court Agreement (see p. 14). CUP&CINO had argued that Alpina Coffee Systems’ product realised all features of claim 2. The question of interpretation came up in relation to the length of a line, as claim 2 did not include any mandatory specifications for that length. The Court considered that the length of the contested embodiment was far removed from the length required by the patent (see p. 14-18).   

Because there was no infringement, relevant topics such as the weighing of the parties' interest and the question of urgency are left open by the Court (see p. 18). Nevertheless, this case is still worth a further analysis as the Court commented on opt-outs and recoverable costs in PI proceedings.  

A request to opt-out after PI proceedings have been filed is invalid  

Rules 5 and 5A Rules of Procedure (RoP) cover the possibility to opt-out from the exclusive competence of the UPC, or to withdraw such opt-out. Rule 5(6) RoP includes an exemption to that rule and determines that if an “action” has been filed prior to opt out, the opt-out will be ineffective. This has the effect that pending proceedings cannot be removed from the jurisdiction of the Court by using opt-outs to prevent for example an expected negative decision (p. 12).

After the preliminary injunction proceedings were filed by CUP&CINO on 27 June 2023, CUP&CINO lodged an application to opt-out the patent in suit on 6 July 2023. More than a month later, CUP&CINO lodged another application, but this time to withdraw that opt-out (apparently the patent attorney who requested the opt-out was not authorisesd).

The Court considered whether the application for PI proceedings was admissible given the opt-out application. The Court decided that it was, and that the opt-out application was invalid based on Rule 5(6) RoP, given that an “action” also includes PI proceedings (see p. 11-12). This UPCKat noticed that this scenario had also occurred in a revocation action filed by Bitzer against a Carrier patent.  It will be interesting to see if a court decides differently on this topic in the context of validity proceedings.  


The Court furthermore decided on the recoverable costs. CUP&CINO was ordered to reimburse the costs incurred by Alpina Coffee Systems. CUP&CINO unsuccessfully tried to turn this into a provisional reimbursement of costs argument. The Court confirmed that as the unsuccessful party in preliminary injunction proceedings, it must reimburse the costs of Alpina Coffee Systems, even if they would be ultimately successful in proceedings on the merits (see p. 19). This is one of the very few first instance decisions to date in which the court ordered that costs be paid."

[UPCKat] Preliminary injunctions in the UPC: CUP&CINO v Alpina Coffee Systems [UPCKat] Preliminary injunctions in the UPC:  CUP&CINO v Alpina Coffee Systems Reviewed by Annsley Merelle Ward on Monday, April 22, 2024 Rating: 5


  1. The present decision of the UPC has been commented in another blog.

    The patent on which the request for a PI was not opposed.

    It is interesting to note that when applying Art 69 and the protocol, the Vienna local section of the UPC read into independent claim 2 limitations which were not contained in it.

    This is in clear contradiction with a long line of case law of the boards of appeal of the EPO according to which it is not allowed to read into the claims a limitation only present in description.

    Can we see here first divergences between the case law of the UPC and of the boards of appeal of the EPO in matters of interpretation of claims?

    Independent clam 2 is silent about the minimum length of the line section downstream of the throttle. It simply claims that the diameter of the line sections upstream and downstream of the throttle are different.

    According to §[0032] of the description, the difference in diameter is only preferable, whereas the length of the downstream line should, in order to achieve the effect of homogenisation of the milk foam, be at least be 0,5 m. It can go up to 2m, but is preferably 1,50 m.

    Something seems to have gone wrong during examination.

    1. It seems that the Vienna LD very reasonably applies the same logic as used in the German "Spannschraube" decision - the bare meaning of the words of the claim may encompass the alleged infringing act but if read with the eyes of a skilled person in the light of the description, the words used have a particular meaning in the context of the patent.

    2. @ Anonymous of Thursday 25 April 2024 at 08:58:00 GMT+1

      In the present case, the bare meaning of the words of the claim do indeed have a particular meaning in the content of the patent as they express the difference in diameter between the line sections upstream and downstream the throttle. In order to decide lack of infringement, the board gave the clam a different interpretation and read into it features which are absent from the claim.

      I am not sure that the decision “Spannschraube” went as far this.

      On the other hand, the difference between the claimed device and the allegedly infringing device is so blatant, 10cm vs. at least 50cm, preferably 150cm, downstream the throttle, that the Vienna LD had no other way to interpret the claim in order to decide lack of infringement.

      This is the more so since according to the description, the difference in diameter was only "preferable" and the lenght of the downstream section was not.

      The patent on the basis of the decision "Spannschraube" had no such incongruities.

  2. Perhaps just get rid of claims and let non-technical UPC judges determine novelty and inventive step from the description?


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