Background
Evac Oy is a Finnish company and global market leader in vacuum wastewater drainage systems for ships, cruise liners, and other maritime applications. Its technology — covering the vacuum toilets, collection tanks, and drainage piping used aboard vessels — is protected by more than 150 patents, including two at issue here: EP 1 840 282 and EP 1 813 734.
Evac discovered through a test purchase in 2021 that Shanghai VacDrain Vacuum Drainage Equipment Co., Ltd., a Chinese manufacturer, had been producing competing systems that allegedly replicated Evac’s patented vacuum sewer technology. VD Solutions GmbH, a German company, was distributing VacDrain products in Europe. Mr. Yong Cao was the majority shareholder and CEO of Shanghai VacDrain.
Evac filed suit at the UPC Düsseldorf Local Division seeking an injunction covering five UPC member states — Germany, Finland, France, Italy, and the Netherlands. Because Evac’s awareness of the infringement dated to at least 2021, defendants argued that Article 72 UPCA’s five-year limitation period barred not only damages claims but injunctive relief as well. The court had to resolve that threshold question as part of a decision that also addressed exhaustion, implied consent, and successor liability.
The Court’s Holding
On June 22, 2026, the Düsseldorf panel ruled largely in Evac’s favor, finding infringement by Shanghai VacDrain and Mr. Cao personally, and granting the broad pan-European injunction.
Injunctions are not subject to Article 72’s limitation period. Article 72 UPCA provides that “actions relating to all forms of financial compensation” cannot be brought more than five years after the claimant became aware of the infringement. The court held that injunctions are forward-looking remedies aimed at stopping future infringement — they are not claims for “financial compensation” in any sense. The five-year clock therefore runs only against damages, royalties, and lost profits. A patent holder who delays bringing suit loses some damages but retains the right to an injunction regardless of how long the infringement has been known.
German forfeiture doctrine does not apply while Article 72 is running. Defendants also invoked Verwirkung — a German equitable forfeiture doctrine under § 242 BGB applicable through Art. 24(1)(e) UPCA — arguing Evac had slept on its rights. The court rejected this, holding that national forfeiture defenses cannot operate concurrently with an active Article 72 limitation period. And separately, defendants had not shown that Evac’s delay induced any reasonable reliance on their part.
Component replacement = remanufacture, not repair. One defense invoked patent exhaustion: once Evac or its licensees sold a patented system, defendants argued, replacement parts were freely serviceable. The court rejected that argument as to components that embody the inventive concept of the patent. Replacing such a component — even if it is a wear part subject to periodic replacement — constitutes remanufacture rather than mere repair. Patent exhaustion does not protect remanufacturing.
Implied consent from a subsidiary does not bind the patent owner. Defendants argued that Evac’s own subsidiary had done business with them, implying consent to the use of the patented technology. The court rejected this: consent by a subsidiary to limited specified deliveries does not extend to open-market sales, and any arguable consent was explicitly withdrawn once Evac instructed its subsidiary to stop procurement.
Distributor escapes; CEO is personally liable. VD Solutions GmbH, the German distributor, was not held liable. Evac had argued it was the de facto successor to a predecessor company involved in earlier infringement, but the court required concrete evidence of specific infringing acts — shared ownership and temporal proximity between the old and new entity were not enough. Mr. Yong Cao, however, was found personally liable as the controlling officer of the infringing manufacturer.
Key Takeaways
- At the UPC, patent injunctions have no time limit — Article 72’s five-year window restricts only claims for financial compensation (damages, royalties), not forward-looking equitable relief.
- Replacing a component that embodies the inventive concept of a patent is remanufacturing, not repair — exhaustion defenses do not protect it even when the component is a routine wear part.
- Corporate officers can face personal UPC liability for infringement they control; the corporate form is not a shield at the Düsseldorf Local Division.
- A subsidiary’s commercial dealings with a defendant do not create implied consent on behalf of the parent patent owner — and any consent is strictly limited to what was specifically authorized.
Why It Matters
The Article 72 ruling resolves a question that had hung over UPC litigation since the court opened in 2023. Patent holders in complex technical fields often discover infringement long after it begins — through test purchases, reverse engineering, or industry intelligence. The fear was that a long discovery delay might cost not just some damages but the injunction itself, transforming the UPC’s powerful pan-European injunctive remedy into a time-pressured filing race. Düsseldorf’s ruling removes that concern: the five-year clock only counts against the damages recovery. This aligns with how European legal scholars have read Article 72 and with the academic commentary published at the time the UPCA was drafted.
The repair/remanufacture holding has immediate practical significance across industries — maritime, industrial, medical devices, consumer electronics — where patented systems are sold once and then serviced with replacement parts over decades. Patent holders now have clear UPC authority that service parts embodying the inventive concept require separate licensing, and aftermarket competitors cannot rely on exhaustion when replacing core patented components. The decision also continues building the UPC’s body of law on how national equitable defenses interact with the UPCA’s uniform remedial framework — a question that will recur as the court’s docket grows.