QuantifiCare wins injunction against Canfield in 3D imaging dispute

Düsseldorf Regional Court has ruled the US manufacturer of 3D imaging systems Canfield may no longer sell certain products in Germany. The dispute now focuses on a parallel lawsuit at the UPC.

QuantifiCare accuses US competitor Canfield of infringing EP 3 156 843 with its Vectra H2 device. The French provider of imaging solutions in medicine filed suit at the Regional Court Düsseldorf.

In early April, the court’s 4a Civil Chamber ruled that Canfield’s device infringes QuantifiCare’s patent. The court under presiding judge Tilmann ordered the German and US subsidiaries of Canfield to cease distribution of the product in Germany (case ID: 4a O 78/20).

However, for the ruling to take effect, QuantifiCare must first enforce it. Canfield can also appeal to the Higher Regional Court Düsseldorf. This seems likely due to a parallel UPC lawsuit.

Patent valid in Germany

The patent has already been the subject of a prolonged validity dispute. Initially, the German Federal Patent Court declared EP 843 invalid. However, QuantifiCare appealed and succeeded in upholding the German part of the patent.

EP 843 protects a device and method for three-dimensional reconstruction of the head and body. In 2015, QuantifiCare filed a French patent application to protect key aspects of its LifeViz Infinity product — a portable, all-in-one 3D imaging system for face, breast and body imaging. The camera is primarily used in plastic surgery.

QuantifiCare extended the patent’s coverage to Europe and the US. The European Patent Office granted EP 843 in 2018. When the company from the Côte d’Azur filed an infringement claim against Canfield Scientific at the Regional Court Düsseldorf, Canfield contested the validity in Germany. The court suspended the infringement proceedings pending a decision on the German part of the patent’s validity.

Second validity attack at the UPC

Due to delays in the German proceedings, QuantifiCare filed an infringement claim with the UPC local division in Düsseldorf in October 2024 (case ID: ACT_53557/2024). The company again sued Canfield’s German subsidiary and US parent company for infringement outside Germany. It also sought an injunction against Dutch and Italian subsidiaries in all UPC states where EP 843 is valid. The distribution company Esthetec SAS was also a defendant.

Canfield responded with a fresh attack on the patent’s validity, including the German part. This is possible under UPC law, as the plaintiffs were not the German and US companies that had unsuccessfully sued for revocation in Germany, but rather the three other defendants from the UPC infringement case.

The parties are exchanging written pleadings. Both expect an oral hearing before the Düsseldorf local division under presiding judge Ronny Thomas in autumn 2025.

QuantifiCare has also filed suit against Canfield Scientific in the US.

Kather Augenstein takes over

Canfield was initially represented by IP boutique Grünecker in the German infringement proceedings. Patent attorney Udo Weigelt and lawyer Sebastian Ochs led the national nullity cases. The Düsseldorf Regional Court ruling also names Grünecker as lead counsel.

However, Düsseldorf-based IP litigation firm Kather Augenstein represents Canfield in the UPC case. Miriam Kiefer leads the team, while counsel Benjamin Pesch and associate Benedikt Walesch provide support. The team would likely handle an appeal against the Düsseldorf Regional Court injunction should Canfield take this step.

QuantifiCare’s counsel remains unchanged. As in the German proceedings, lawyer Felix Klopmeier from Düsseldorf firm Lang & Rahmann represents QuantifiCare in the UPC action. Patent attorney Dirk Schulz from Düsseldorf IP firm Michalski Hüttermann & Partner leads on technical aspects.