UPC CFI, LD Dusseldorf, 7 March 2025: New validity attacks raised at oral hearing not taken into consideration

IPPT20250307, UPC CFI, LD Düsseldorf, Tridonic v Cupower
Patent valid but not infringed. New validity attacks raised during the oral proceedings not taken into consideration. If considered as an amendment of claim, the attacks should have been raised at the latest in the reply to the counterclaim ((R. 263 RoP). If considered as additional argumentation for the annulment of the contested patent, it must be rejected pursuant to R. 9.2 VerfO. Strategic manoeuvring aimed at achieving a surprise effect is as foreign to the rules of procedure as is the introduction of completely new means of attack on the basis of a merely preliminary assessment by the court at the beginning of the oral hearing, especially since this is not uniform in the UPC. Novelty: direct and unambiguous disclosure (article 54 EPC): Findings which a person skilled in the art only gains through further consideration or by consulting other documents or prior use are not part of the prior art. A technical teaching is new if it differs from the prior art in at least one of its known features. Only those features are considered to be part of the prior art which are immediately apparent to a person skilled in the art from the publication or prior use. Findings which a person skilled in the art only gains through further consideration or by consulting other documents or prior use are not part of the prior art. Inventive step (Article 56 UPCA). Case by case basis. An objective approach must be taken. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. Decisive whether the skilled person would have found the claimed subject matter through obvious modifications of what is already known. Realistic starting point: if its teaching would have been of interest to a skilled person who, at the priority date of the contested patent, was seeking to develop a product or process similar to that disclosed in the prior art, i.e. one that has a similar basic problem to the claimed invention. There may be several realistic starting points, and it is not necessary to determine the ‘most promising’ starting point. Obvious if skilled person would have an incentive and would consider the claimed solution as a next step in the development of the state of the art. It may be relevant whether the skilled person would have expected particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to subject disclosures from the prior art to a comprehensive assessment. A technical effect or advantage achieved by the claimed subject matter in comparison with the prior art may be an indication of inventive step. A feature that has been arbitrarily selected from several possibilities cannot generally contribute to inventive step. Retrospective consideration must be avoided. No infringement because of a lacking claim feature (article 69 EPC)