2026-05-05 - LD Milan - Agathon v. Intercom et al. - UPC_CFI_727/2024

ENGLISH: Although statements made by the patent proprietor during examination proceedings before the EPO are not binding, they may nevertheless provide further guidance on interpretation as they reflect the possible opinion of the person skilled in the art. The applicant’s assertions during the grant proceedings can be seen as an indication of the view of the person skilled in the art at the filing date.

The Milan Local Division (Pierluigi Perrotti presiding) renders its substantive merits decision in Agathon AG's infringement action against Intercom and Knarr concerning EP 2 363 263 B1 (centring device for a forming tool / injection-moulding or die-casting tool). The decision is two-fold and notable: (i) on validity, the Court accepts Intercom's counterclaim in part — granted claim 1 and several dependents lack novelty over D3 (US 2,774,430), but the patent is maintained in amended form via Agathon's AR1, which combines granted claims 1 and 3 and is itself novel and inventive over the cited art; and (ii) on infringement, the action is dismissed because the accused products do not realise feature 1.9 ('second rolling body row abuts the encircling edge') in the opened state, a feature the Court construes strictly with reference to Agathon's own EPO-prosecution statement that this abutment was 'essential / decisive' (the headnote of the decision: statements made by the proprietor during EPO examination, while non-binding, may guide interpretation as they reflect the skilled person's view at the filing date — following UPC_CoA_402/2024 and 405/2024, UPC_CoA_534/2024 and 19/2025 — Belkin/Philips). The Court also finds that the accused products implement the prior-art mechanism known from D1, D2 and D5-D8, so the Formstein/Gillette defence is well-founded; no literal or equivalents infringement. The inventive-step counterclaim is largely inadmissible for inadequate substantiation; the part on claims 3 and 4 fails on the merits because D3 expressly teaches against the claim-3 solution and D1/D2 are not realistic starting points. Late-filed (interim-conference) prior-art product samples are inadmissible under the front-loaded principle. AR1 is admissible (uncontested) and valid. Costs: claimant bears 50% of each defendant's costs on the dismissed infringement action (€56,000 ceiling each); each party bears its own costs on the counterclaim (mixed outcome). Value: €500,000 per case.