HP claimed infringement by LAMA of two of its European patents: EP1737669 (EP’669) and EP2089230 (EP’230). Both of these patents relate to printer cartridges and their ink ejection controls.
In response, LAMA contested the claims of infringement, and filed a counterclaim for invalidity of the HP patents. LAMA also raised two questions for referral to the CJEU, both of which were rejected by the Court[1].
Validity
Both patents were found to be valid in terms of sufficiency and extension of subject-matter. However, where EP’669 overcame all patentability attacks put forward by LAMA, EP’230 was not so lucky; EP’230 was found to lack novelty in its granted form and to lack inventive step in its conditionally amended form. EP’230 was therefore ordered to be revoked in its entirety.
Retroactive judgment
Before turning to infringement, the following question was raised by LAMA for referral to the CJEU: can the UPC hear and determine alleged infringement for events that occurred prior to the date that the UPC went into force (1 June 2023)? LAMA further questioned whether it would be correct to refer to the national law of each Contracting State when deciding on such matters.
However, referral of these questions to the CJEU was summarily rejected by the Court, who referred to a number of previous local division decisions that ruled that the UPC does indeed have jurisdiction over infringement acts that occurred before 1 June 2023, and there is no need to refer to national law.
Infringement
Two types of products from LAMA were accused of infringing the HP patents: ‘clones’ of HP cartridges from manufacturers other than HP, and unauthorised parallel import cartridges called ‘IPNAs’.
In defending itself, LAMA relied on competition law to argue that no infringement can be found to occur because (i) there is exhaustion of rights with respect to the IPNA cartridges, and (ii) HP is abusing its dominant position in the market. The question of whether these issues could be decided by the UPC was requested to be referred to the CJEU for a preliminary ruling by LAMA.
However, the Court rejected this request on the basis that LAMA had not provided sufficient evidence of HP’s ‘dominant’ position in the market and so there was no need to refer this question to the CJEU. With respect to the exhaustion of rights, the Court found that, through ID codes on the IPNA cartridges, it could be sufficiently established that these cartridges were first marketed outside of the EU. Hence, there had been no exhaustion of rights and there was no need to refer this matter to the CJEU.
Questions into the probative value of HP’s evidence by LAMA were also dismissed by the Court.
Based on laboratory test results, the “clone” cartridges were found to infringe the claims of EP’669. As there was no disagreement that the IPNA cartridges were simply recycled HP cartridges, and it was found there was no competition law defence, the IPNA cartridges were also found to infringe the claims of EP’669.
Remedies
HP were successful in their quest to obtain injunctive relief against LAMA. However, they pushed it too far when requesting that LAMA publish the decision on their website, which the Court rejected.
A half-baked attempt to obtain provisional compensation and an advance on costs by HP was also rejected by the Court, and a 50/50 split of the cost of the court proceedings was ordered as a result of HP failing to establish validity of EP’230.
Summary
The market of resold and refurbished printer cartridges can clearly be a tricky one to navigate in terms of IP, but this judgement will surely be a stark message to LAMA and all other similar wholesalers to tighten up their business practices.
Addendum
After the order of 13 November, both parties lodged applications on 13 December 2024 requesting raising of the representative costs ceiling by 50%. The value of the case was set at 1 million Euros, meaning that the costs ceiling was set at 112,000 Euros. Therefore, both parties wanted this raised to 168,000 Euros.
Both parties cited the complexity of the case as a relevant factor in this, with LAMA highlighting that handling two patents created technical and procedural complexity. LAMA also asserted that, as an SME, bearing representation costs is a heavy burden for the company.
In its order of 10 December 2025[2], the Court considered provisions in Article 69 UPCA, Rule 152 RoP, and the preamble to the scale of ceilings for recoverable costs of 24 April 2023. It noted that it was possible for the ceiling on representation costs to be raised if requested by one of the parties, taking into account the complexity of the case or where procedural difficulty such as the use of multiple languages had an impact on representation costs. The Court must also consider the financial capacity of the parties to ensure equitable access to justice.
However, the provisions also note that the ceiling does not depend on the number of parties to the procedure, number of claims in the patent, or even the number of patents concerned. Thus, the Court was not persuaded that this case was so complex as to justify raising the representative costs ceiling and dismissed the requests of each party.
Thus, the Court was not persuaded that this case was so complex as to justify raising the representative costs ceiling and dismissed the requests of each party.
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