UPC Bars Zapp Foils in DNP OLED Mask Patent Case
The Düsseldorf Local Division of the Unified Patent Court (UPC) ruled at first instance on 5 November that "Zapp SuperClean INVAR 36" metal foils (25 µm and 30 µm thick) sold by Zapp AG and Zapp Precision Metals GmbH of Germany literally infringe claim 1 of Dai Nippon Printing's (DNP) European patent EP 3 805 415. It dismissed Zapp's counterclaim for revocation and maintained the patent as granted. The cases are UPC_CFI_466/2025 and UPC_CFI_869/2025, heard in German.
The patent covers an iron-nickel metal plate for making the deposition masks used in OLED display production.
The claims limit the number and size distribution of particles other than iron and nickel per cubic millimetre of plate, to make the etched through-holes more accurate.
The orders
- an injunction in Germany and France against making, offering, marketing, using, importing or holding the infringing products, backed by penalty payments of at least EUR 10,000 a day for breach;
- recall, definitive removal from the channels of commerce and destruction by a bailiff;
- information on origin, distribution channels, quantities and prices, and rendering of accounts, within three weeks of service;
- a declaration that both defendants are jointly liable for damages for acts in Germany and France since 30 November 2022, with the amount to be set later.
The defendants bear all costs of the action and the counterclaim; the parties agreed recoverable first-instance costs of EUR 344,000 in total, and the value in dispute is EUR 1.5 million each. The orders can be enforced only after DNP tells the court which parts it will enforce and service is completed, and an appeal may be lodged within two months of service.
Proving prior public use
Zapp argued that foils it had delivered to customers years earlier already made the invention available. The court held that a party relying on prior public use must prove without gaps what was made available, when, to whom and in what circumstances, and must reliably link the tested samples to the products actually delivered. Strict proof is justified because those facts lie in that party's own sphere.
Here Zapp's own staff took the samples, with no neutral third party present. Some samples had no delivery documents, material numbers and specifications in a production order did not match, and one sample measured 30 µm while its delivery note said 40 µm. The two laboratories' results differed by up to a factor of 2.6, and the raw data came late and redacted. The court found prior use not proven and also rejected Zapp's insufficiency, novelty and inventive step attacks based on several patent documents.
J&C recommends that material suppliers who may rely on prior public use to attack a patent keep retained samples that can be traced to specific deliveries, together with shipping documents and production records; have a neutral third party witness any sampling; and keep the full raw measurement data. Internal sampling after the event and a single measurement fell well short of the standard applied here.
Source: www.unifiedpatentcourt.org
