UPC CFI, LD Mannheim, 2 April 2025: Claim construction, added matter and obvious erroneous symbol “≤” in claim

Patent revoked (Article 65 UPCA). Lack of inventive step . 

Admissible auxiliary requests in Reply to Statement of defence and counterclaim for revocation (R. 30 RoP, R. 263 RoP). Such consequential adjustments to the infringement action are covered by R. 30 RoP without the necessity to formally apply for leave to change the claim or amend the case in accordance with R. 263 RoP. […]. 

No jurisdiction of the UPC with regard to those national parts of UPCA member states which have already lapsed before 1 June 2023. The same applies to national parts of non-UPCA-member states. (Article 3(c) UPCA). It can be left open whether a lack of jurisdiction under Art. 3 (c) UPCA falls within the scope of R. 19 RoP. 

No novelty destroying public prior use (Article 54 EPC). Facts – that need to presented in Statement of Defence and Counterclaim for Revocation – are insufficient to substantiate public prior use. Allegations and documents show that before the relevant priority date such plates had been protected by an at least implicit confidentiality regime. No disclosure of feature 1.3.6 in WO ‘379: the reworking is not based on process conditions which the average person skilled in the art would be able to extract from the disclosure of the document but on specialist knowledge of one of its inventors. Therefore, even if it were accepted that the person skilled in the art would have sufficient reason to rework example 7 in order to study the properties of the result achieved thereby, it has not been submitted that the document itself discloses in sufficient details the conditions for reworking example 7. 

Lack of inventive step starting from EP’452 in combination with common knowledge (Article 56 EPC). The use of a particular means may be obvious even without a corresponding specific motivation if, by its nature, said means, as a general means to be considered for a plurality of applications, belongs to the general knowledge of the relevant skilled person, the use of the functionality in question is objectively appropriate in the context to be assessed and no special circumstances can be identified which make an application appear impossible, difficult or otherwise impractical from a technical point of view (cf. BGH, decision of 15 June 2021 – X ZR 58/19, GRUR 2021, 1277 mn. 47 – Führungsschienenanordnung). Lack of inventive step starting from EP’452 in combination with EP’968, JP’090 or EP’541. Lack of inventive step starting from JP’021. Lack of inventive step starting from EP 408 in conjunction with general common knowledge or, alternatively, in combination with other documents. 

No added matter when claim is construed properly: symbol “≤” is obvious erroneous in the light of the set of claims as granted and the patent specification. (Article 138(1)(c) EPC, Article 69 EPC). 

Partially fending off counterclaim for revocation –(Article 65(3) UPCA. R. 30 RoP) requires filing a proper request specifying the extent to which the patent-in-dispute shall be maintained in part (deviating opinion with regard to subclaims: Central Division, Paris seat, decision of 22 January 2025, UPC_CFI_310/2023, GRUR-RS 2025, 637 mn. 138). A separate defence of dependent claims as granted is not admissible in the case at hand. Claimant did not properly apply for an amendment of the patent-in-suit based on dependant claims or a combination thereof as new independent claim.

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - II