Key takeaways
Party-affiliated affidavits are valuable technical information but lack the probative value of independent expert opinions (R. 181(2) RoP).
Both parties submitted affidavits from current or former employees. The Court treated these as witness statements rather than expert opinions, but nonetheless considered them valuable technical information from persons with industry experience in the relevant technical area.
Novelty of structural product claims does not require the same technical effect as the prior art (Art. 54 EPC, Art. 138(1)(a) EPC).
For product inventions defined by structural features only, the product is considered in its own right, independently of any technical result or effect. The intended use is only relevant if the prior art structure would be unsuitable for the claimed purpose.
The Court found all structural features of the claimant’s independent claim 1 directly and unambiguously disclosed in a single prior art embodiment, destroying novelty despite the prior art addressing a different technical problem.
A prior art document expressly cited in the patent description as disclosing the preamble of claim 1 can be relevant for novelty, regardless of differing technical effects.
The patent’s own description acknowledged that the cited prior art disclosed a tire tread according to the preamble of claim 1. The Court held this self-citation sufficient to establish the document’s relevance for assessing novelty of the structural features, irrespective of the prior art addressing a different technical problem.
The number of auxiliary requests is assessed for “manageability” rather than by a fixed numerical cap (R. 30.1(c) RoP).
The claimant’s fourteen auxiliary requests were found reasonable because the parties organised all combinations of five additional features in a clear summary table, enabling efficient judicial consideration and structured discussion during the proceedings.
Dependent claims require independent substantiation of their validity when the independent claim is found invalid.
The claimant’s sole defence for dependent claims was that they depend on an allegedly valid independent claim. The Court, finding independent claim 1 invalid, found this to be insufficient and held that the claimant failed to provide substantiated arguments explaining why the dependent claims might independently be novel and inventive.
Division
LD Paris
UPC number
UPC_CFI_138/2025 (Claim for Infringement)
UPC_CFI_522/2025 (Counterclaim for Revocation)
Type of proceedings
Infringement action with counterclaim for revocation
Parties
Claimant: Compagnie Générale des Etablissements Michelin
Defendant 1: Goodyear France S.A.S.
Defendant 2: Goodyear S.A.
Defendant 3: Goodyear Operations S.A.
Patent(s)
EP 2 323 858
Jurisdictions
France
Body of legislation / Rules
R. 5 RoP, R. 19 RoP, R. 30.1(c) RoP, R. 105.5 RoP, R. 118.5 RoP, R. 181(2) RoP
Art. 33(1)(a) UPCA, Art. 33(1)(b) UPCA, Art. 65(2) UPCA, Art. 65(5) UPCA, Art. 69 UPCA
