2025-10-27 - LD Milan - Progress Maschinen Automation v. Awm et al. - UPC_CFI_178/2024 and 432/2024
- Aktenzeichen:
- UPC_CFI_178/2024 and 432/2024
- Datum:
- Spruchkörper:
- Court of First Instance - Milan (IT) Local Division
- Art:
- Decision
- Parteien:
- PROGRESS MASCHINEN & AUTOMATION AG v. AWM s.r.l.,Schnell s.p.a.
Kernaussage: ENGLISH:
2025-10-27 - LD Milan - Progress Maschinen Automation
v.
Awm et al. - UPC_CFI_178/2024 and 432/2024
ENGLISH:
1.An invention is to be considered part of the state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constituent elements, in the same form, with the same arrangement and the same features. This principle applies also when a novelty attack is based on a single piece of prior art made available to the public by use. 2.When assessing whether or not the claimed subject-matter involves an inventive step, the technical problem must be derived from effects directly and causally related to the technical features of the claimed invention. An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the patent application.
notable
The Milan LD revoked EP 2726230 B1 in its entirety after finding all features of independent claims 1 and 8 anticipated by the defendants' prior-use JIT machine, marketed since 2008. All five auxiliary requests also failed: AR1-3 overcame novelty but lacked inventive step (combination with DE 10037281), AR4 partially failed for added matter (intermediate generalization), AR5 failed for added matter (feature linked to specific embodiment). The court applied G2/21: the technical effect for inventive step must be directly and causally related to claimed features and encompassed by the originally filed application. Infringement action dismissed as consequence of revocation.
Stichwörter
ENGLISH:
novelty; inventive step; added matter; requirements for admissibility of a request to amend the patent under rule 30.2 RoP
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent invalid (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“Patent revoked for lack of novelty. Prior-use JIT machine (marketed before priority date) anticipated all features of claims 1 and 8.”
Inventive Step
Patent invalid (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“AR1-3 lacked inventive step. G2/21 standard applied for AR4: technical effect not encompassed by original application.”
Added Matter
Patent invalid (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“AR4 claim 1 and AR5 failed for added matter (intermediate generalization).”