UPC CoA, 17 February 2026: Revocation set aside, infringement found in appeal
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Revocation decision set aside (Article 65 UPCA), infringement found in appeal (Article 25 UPCA).
Final decision in appeal (Article 75 UPCA, R. 242.2(b) RoP). The Court of Appeal, must, in order to issue a final decision, as a rule decide not only on the counterclaim for revocation but also render a final decision on the infringement action. That the Court of First Instance failed to decide an issue which it is necessary for the Court of Appeal to decide on appeal does not normally constitute an exceptional circumstance justifying a referral back.
Claim interpretation (Article 69 EPC). Insufficient that implementation of the orientation required by feature 1d could theoretically take place, but in fact does not.
Actual implementation is decisive (as confirmed by description and drawings). The assumption made by the Court of First instance runs counter to the fact that, under that assumption, the essentially radial orientation of the feed-in and discharge required by feature 1d would be rendered ineffective, thereby depriving essential functional aspects of the feature of their meaning.
The term “essentially” indicates that the orientation of the feed-in and discharge to be enabled does not depend on a strictly geometrical understanding; sufficient to enable a configuration in which the grist is fed in and discharged in a direction that is more radial than tangential.
Novelty (Article 54 EPC). D3 does not disclose feature 1d: In the mills shown in the aforementioned Figures 3 and 8, the feed-in and/or discharge takes place rather in a tangential direction than in a radial direction, and thus not in an essentially radial direction.
Inventive step (Article 56 EPC) There is no suggestion to modify in such a way that, instead of providing an essentially tangential feed-in and discharge, they would enable an essentially radial feed-in and discharge.
Lack of legal interest regarding enabling disclosure of dependent claims 6 and 8 (Article 138(1)(b) EPC) since the counterclaim for revocation is already unsuccessful with respect to the independent patent claim 1, to which patent claims 6 and 8 directly and indirectly refer back and which therefore has a scope of protection that also encompasses patent claims 6 and 8.
Direct infringement of product claim 1 (Article 25 UPCA). “Offering” must be interpreted autonomously and understood in an economic sense. An “offering” does not have to constitute a legally binding contractual offer. It is sufficient that an item is presented in such a way that a third party could make an offer to acquire it, for example by concluding a contract of sale, lease, or hire - advertising alone can suffice.
Infringement exists where the product is suitable for infringing use, even if alternative (non-infringing) configurations exist.
Indirect infringement of method claim 15 (Article 26 UPCA). Apparent that the contested mill is suitable for carrying out the method of claim 15. Also applies when it is used in accordance with the information in the Defendant’s brochures and the Defendant, as a specialized company that published the brochure, was also aware of that.
Permanent injunction against infringer (Article 63(1) UPCA). The Court must grant a permanent injunction unless there are special reasons for not doing so, which may arise in particular from the general obligations under Article 3 of the Enforcement Directive.
Corrective measures and direct infringement – proportionality (Article 25 UPCA, Article 64 UPCA). Following the finding of direct infringement of patent claim 1 by the contested embodiment, corrective measures are ordered, namely the recall and permanent removal of the contested embodiment from the channels of commerce as well as the destruction of the contested embodiment. With regard to the principle of proportionality laid down in Article 64(4) UPCA, it must be clarified that, in order to comply with the order to destroy the contested embodiments in the Defendant’s possession, it is sufficient if the longitudinal bars at the discharge opening that are spaced at least 70 mm apart are replaced with bars spaced below that value.
Corrective measures and indirect infringement remains undecided (Article 26 UPCA, Article 64 UPCA). No decision is required, as an order concerning the contested embodiment already results from the direct infringement of patent claim 1. It can therefore remain undecided whether corrective measures pursuant to Article 64 UPCA can be ordered at all in the event of (only) an indirect patent infringement being found and, if so, under what circumstances the ordering of corrective measures in the event of an indirect patent infringement meets the requirement of proportionality pursuant to Article 64(4) UPCA.
Publication of the decision (Article 80 UPCA). Such an order also requires the claimant to demonstrate a legitimate interest in the requested publication of the decision at the defendant's expense. In this regard, all circumstances of the individual case must be considered, such as the scope and severity of the infringement, the public presentation of the conflict, the public's interest in information, and whether the publication of the decision can contribute to eliminating misconceptions in the market caused by the infringement or to deterring future infringements.
