1. Key takeaways
Prosecution file statements before the EPO, while not binding, may guide claim interpretation as reflecting the skilled person’s view (Art. 69 EPC, Art. 24(1)(c) UPCA)
The claimant’s own statement during EPO grant proceedings — that abutment of a rolling body row against an edge was “essential” for achieving simultaneous preloading — confirmed the Court’s strict interpretation of the relevant claim feature. The Court followed established CoA jurisprudence (CoA Nos. 402/2024, 405/2024; CoA Nos. 534/2024, 19/2025) on the interpretive relevance of prosecution history.
Strict claim construction can be decisive for both validity and non-infringement simultaneously (Art. 69 EPC, Art. 24(1)(c) UPCA)
The Court’s narrow interpretation of “abuts” (requiring actual contact with the edge in the opened state) was pivotal on both fronts. It confirmed novelty destruction by prior art D3 (which disclosed abutment) and simultaneously led to a finding of non-infringement, because the defendants’ products featured a spatial offset and lacked abutment in the opened state.
Late submission of physical evidence is inadmissible under the principle of front-loaded proceedings
A product sample submitted by the first defendant for the first time during the interim conference was rejected as inadmissible. The Court held this violated the UPC’s requirement of immediate disclosure of all facts and evidence. Additionally, the sample lacked provenance information, making it impossible to establish whether it predated the patent filing.
The Formstein/Gillette defence excludes infringement where the accused product corresponds to a prior art embodiment
Because the defendants’ centring devices operated identically to solutions already disclosed in prior art documents D1 and D2 — with successive rather than simultaneous loading of rolling body rows — infringement was excluded both literally and under the doctrine of equivalents, even though the patent survived validity challenges in amended form pursuant to Auxiliary Request 1.
Inventive step attacks require detailed substantiation; bare assertions of obviousness are inadmissible (Art. 56 EPC)
The Court dismissed as inadmissible the inventive step attacks on claims 5, 6, and 7–10 because the first defendant failed to explain how the skilled person would have arrived at the claimed solution. For claims 7–10 in particular, no description of the relevant common general knowledge was provided. Only the attacks on claims 3 and 4 were sufficiently reasoned and examined on the merits.
Costs for coordinated defences may be assessed as if brought against a single defendant and then apportioned equally (Art. 69 UPCA, R. 150 et seq. RoP)
As both defendants presented identical infringement defences reflecting a unified strategy, the Court assessed costs as if the action had been directed against one defendant and split the amount equally. Regarding the revocation counterclaim, each party bore its own costs because both were partially successful: the first defendant obtained partial revocation, while the claimant maintained the patent in amended form.
2. Division
LD Milan
3. UPC number
UPC_CFI_727/2024, UPC_CFI_493/2025
4. Type of proceedings
Infringement action and counterclaim for revocation
5. Parties
Claimant: Agathon AG
Defendants: Intercom S.r.l. (First Defendant), Knarr Vertriebs GmbH (Second Defendant)
6. Patent(s)
EP 2 363 263 B1
7. Body of legislation / Rules
R. 30.1 RoP, R. 150 RoP, R. 152.2 RoP, R. 220.1(a) RoP, R. 224.1(a) RoP
Art. 24(1)(c) UPCA, Art. 69(1) UPCA, Art. 73 UPCA
Art. 54 EPC, Art. 56 EPC, Art. 69 EPC
