EP 2 548 648 B1 relates to a mill for comminating of material.
The material to be comminated “essentially” enters radially (11) and the material is also discharged radially after having travelled along the drum, whereby the discharge opening (13) opening is free of sieves.
Procedure before the EPO
The patent was directly granted by the EPO on the basis of an ESR only mentioning 2 A,D and 1 A document.
The patent was not opposed.
EP 2 548 648 B1 has received the IPC classes B02C13/286 and B02C13/04, and the search has been carried out in B02C.
DE 3 414 567, brought forward in a counterclaim for revocation before the UPC, has received, inter alia, the IPC classes B02C13/04 and B02C13/06.
Whilst most of the embodiments in DE 3 414 567 the material enters radially, in one embodiment, fig 10, the material enters radially and leaves radially.
In view of the correspondence of IPC classes, it is surprising that DE 3414 567 was not found during the European search.
Procedure before the CFI-LD Mannheim
The proprietor Rematec filed an action for infringement against Europe Forestry before the CFI-LD Mannheim. Europe Forestry filed a counterclaim for revocation.
In its decision UPC_CFI_340/2023, the CFI-LD held the patent invalid for lack of N of claim 1 (device) and lack of IS of claim 15 (Method) over DE 3414 567. The AR were also held invalid.
As the patent was invalid, there could not be any infringement.
The lack of N was based on Fig. 3.
According to the description of D3, in Fig.3, the material enters tangentially, although it can said that the travel within the drum is maximised, and the discharge opening is free of sieves.
What was decisive for the CFI-LD Mannheim was that the openings allow for an “essentially” radial passage of the material to be comminated as well as for the ground material. This mere possibility was readily apparent with regard to the openings in Figure 3.
The CFI further held that should N be given, then IS would be lacking.
Procedure before the CoA-UPC
Patent valid and infringed
In its decision UPC_CoA_302/2025/UPC_CoA_305/2025, the CoA-UPC reversed the decision of the CFI-LD Mannheim and decided that the patent was valid and infringed.
The main argument of the CoA for contradicting the conclusion of the CFI is that there is nothing in claim 1 to suggest that a feed-in and/or discharge device that may be provided has any influence on the direction of movement as feed-in and discharge devices adjoining the openings are not mentioned in claim 1.
Europe Forestry considered the subject-matter of dependant patent claims 6 and 8 to be not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, cf. Art 138(1,b) EPC. This argument was dismissed by the CoA UPC.
As I disagree with the fact that claim 1 is valid, see below, it is pointless to discuss whether claim 1 was infringed.
Validity of a dependent claim when the independent claim is valid
A decision on whether the subject-matter of a dependent patent claim is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, Art. 138 (1,b) EPC, is not required for lack of legal interest on the part of the revocation counter claimant if the counter claim for revocation is already unsuccessful with respect to the independent patent claim to which the dependent patent claim directly or indirectly refers back and which therefore has a scope of protection that also encompasses the dependent patent claim.
Decision on both validity and infringement
Pursuant to Art. 75(1) UPCA, where the CoA sets aside a decision of the CFI, it shall, as a rule, give a final decision itself. This means that the CoA, after considering the appeal of the Claimant, and revocation defendant, against the judgment of the CFI in the counterclaim for revocation to be well-founded, must, in order to issue a final decision, as a rule decide not only on the counterclaim for revocation but also render a final decision on the infringement action.
A referral back to the CFI is contemplated, as follows from Article 75(2) UPCA, only in exceptional cases and in accordance with the Rules of Procedure, here RoP 242(2,b) UPC.
Comments
Not convincing argumentation of both UPC instances
The argumentation of the CFI and of the CoA fail to convince.
The argumentation of the CFI is not convincing as it held that the tangential entry of the material is “essentially” radial.
The argumentation of the CoA fails as well to convince. It might be correct that there is nothing in claim 1 to suggest that a feed-in and/or discharge device that may be provided has any influence on the direction of movement, but it ignores the rotation direction of the rotor within the drum. The maximum length of travel within the drum is only achieved if the rotor turns in a specific direction. That rotation is defined in the claim by defining the travel of the material between entrance and exit of the device. Otherwise the material would not be ground.
A combination of Fig 3, tangential entry with maximum length of travel with Fig 9 of D3, radial entry, would allow to consider claim 1 as granted lacking IS. The same would apply for all the AR.
Decision on both validity and infringement
As according to RoP 242(2,a) the CoA may exercise any power within the competence of the CFI, there is indeed no need to refer the case back to the CFI.
Validity of a dependent claim when the independent claim is valid
Alleging that if the independent claim is valid, the validity extends to all dependent claims is a rather dangerous stance. It is oversimplifying and not correct.
Although, the objection of lack of sufficiency raised by Europe Forestry can be considered farfetched, if a dependent claim is not enabled, this does mean that the independent claim covering the dependent claim could be considered also lacking sufficiency.
If one follows the reasoning of the CoA, if an independent claim is valid, it does not matter that a dependent claim offends Art 123(2) EPC. That cannot be right, at lest in view of the EPO cse law.
It is established case law at the EPO that if one claim, be it independent or dependent, in a set of claims is not allowable, the entire set of claims is not allowable. It is difficult to understand why the UPC allows itself such an odd position by claiming that the validity of the independent claims . If this position persists, it will represent a dangerous trend that should not be allowed to persist. As the CoA UPC is the last instance, this could become problematic in the future.
According to the description of D3, in Fig.3, the material enters tangentially, although it can said that the travel within the drum is maximised, and the discharge opening is free of sieves.
What was decisive for the CFI-LD Mannheim was that the openings allow for an “essentially” radial passage of the material to be comminated as well as for the ground material. This mere possibility was readily apparent with regard to the openings in Figure 3.
The CFI further held that should N be given, then IS would be lacking.
Procedure before the CoA-UPC
Patent valid and infringed
In its decision UPC_CoA_302/2025/UPC_CoA_305/2025, the CoA-UPC reversed the decision of the CFI-LD Mannheim and decided that the patent was valid and infringed.
The main argument of the CoA for contradicting the conclusion of the CFI is that there is nothing in claim 1 to suggest that a feed-in and/or discharge device that may be provided has any influence on the direction of movement as feed-in and discharge devices adjoining the openings are not mentioned in claim 1.
Europe Forestry considered the subject-matter of dependant patent claims 6 and 8 to be not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, cf. Art 138(1,b) EPC. This argument was dismissed by the CoA UPC.
As I disagree with the fact that claim 1 is valid, see below, it is pointless to discuss whether claim 1 was infringed.
Validity of a dependent claim when the independent claim is valid
A decision on whether the subject-matter of a dependent patent claim is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, Art. 138 (1,b) EPC, is not required for lack of legal interest on the part of the revocation (counter)claimant if the (counter)claim for revocation is already unsuccessful with respect to the independent patent claim to which the dependent patent claim directly or indirectly refers back and which therefore has a scope of protection that also encompasses the dependent patent claim.
Decision on both validity and infringement
Pursuant to Art. 75(1) UPCA, where the CoA sets aside a decision of the CFI, it shall, as a rule, give a final decision itself. This means that the CoA, after considering the appeal of the Claimant, and revocation defendant, against the judgment of the CFI in the counterclaim for revocation to be well-founded, must, in order to issue a final decision, as a rule decide not only on the counterclaim for revocation but also render a final decision on the infringement action.
A referral back to the CFI is contemplated, as follows from Article 75(2) UPCA, only in exceptional cases and in accordance with the Rules of Procedure, here RoP 242(2,b) UPC.
Comments
Not convincing argumentation of both UPC instances
The argumentation of the CFI and of the CoA fail to convince.
The argumentation of the CFI is not convincing as it held that the tangential entry of the material is “essentially” radial.
The argumentation of the CoA fails as well to convince. It might be correct that there is nothing in claim 1 to suggest that a feed-in and/or discharge device that may be provided has any influence on the direction of movement, but it ignores the rotation direction of the rotor within the drum. The maximum length of travel within the drum is only achieved if the rotor turns in a specific direction. That rotation is defined in the claim by defining the travel of the material between entrance and exit of the device. Otherwise the material would not be ground.
A combination of Fig 3, tangential entry with maximum length of travel with Fig 9 of D3, radial entry, would allow to consider claim 1 as granted lacking IS. The same would apply for all the AR.
Decision on both validity and infringement
As according to RoP 242(2,a) the CoA may exercise any power within the competence of the CFI, there is indeed no need to refer the case back to the CFI.
Validity of a dependent claim when the independent claim is valid
Alleging that if the independent claim is valid, the validity extends to all dependent claims is a rather dangerous stance. It is oversimplifying and not correct.
Although, the objection of lack of sufficiency raised by Europe Forestry can be considered farfetched, if a dependent claim is not enabled, this does mean that the independent claim covering the dependent claim could be considered also lacking sufficiency.
If one follows the reasoning of the CoA, if an independent claim is valid, it does not matter that a dependent claim offends Art 123(2) EPC. .
It is established case law at the EPO that if one claim, be it independent or dependent, in a set of claims is not allowable, the entire set of claims is not allowable. It is difficult to understand why the UPC allows itself such a position.
According to the description of D3, in Fig.3, the material enters tangentially, although it can said that the travel within the drum is maximised, and the discharge opening is free of sieves.
What was decisive for the CFI-LD Mannheim was that the openings allow for an “essentially” radial passage of the material to be comminated as well as for the ground material. This mere possibility was readily apparent with regard to the openings in Figure 3.
The CFI further held that should N be given, then IS would be lacking.
Procedure before the CoA-UPC
Patent valid and infringed
In its decision UPC_CoA_302/2025/UPC_CoA_305/2025, the CoA-UPC reversed the decision of the CFI-LD Mannheim and decided that the patent was valid and infringed.
The main argument of the CoA for contradicting the conclusion of the CFI is that there is nothing in claim 1 to suggest that a feed-in and/or discharge device that may be provided has any influence on the direction of movement as feed-in and discharge devices adjoining the openings are not mentioned in claim 1.
Europe Forestry considered the subject-matter of dependant patent claims 6 and 8 to be not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, cf. Art 138(1,b) EPC. This argument was dismissed by the CoA UPC.
As I disagree with the fact that claim 1 is valid, see below, it is pointless to discuss whether claim 1 was infringed.
Validity of a dependent claim when the independent claim is valid
A decision on whether the subject-matter of a dependent patent claim is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, Art. 138 (1,b) EPC, is not required for lack of legal interest on the part of the revocation (counter)claimant if the (counter)claim for revocation is already unsuccessful with respect to the independent patent claim to which the dependent patent claim directly or indirectly refers back and which therefore has a scope of protection that also encompasses the dependent patent claim.
Decision on both validity and infringement
Pursuant to Art. 75(1) UPCA, where the CoA sets aside a decision of the CFI, it shall, as a rule, give a final decision itself. This means that the CoA, after considering the appeal of the Claimant, and revocation defendant, against the judgment of the CFI in the counterclaim for revocation to be well-founded, must, in order to issue a final decision, as a rule decide not only on the counterclaim for revocation but also render a final decision on the infringement action.
A referral back to the CFI is contemplated, as follows from Article 75(2) UPCA, only in exceptional cases and in accordance with the Rules of Procedure, here RoP 242(2,b) UPC.
Comments
Not convincing argumentation of both UPC instances
The argumentation of the CFI and of the CoA fail to convince.
The argumentation of the CFI is not convincing as it held that the tangential entry of the material is “essentially” radial.
The argumentation of the CoA fails as well to convince. It might be correct that there is nothing in claim 1 to suggest that a feed-in and/or discharge device that may be provided has any influence on the direction of movement, but it ignores the rotation direction of the rotor within the drum. The maximum length of travel within the drum is only achieved if the rotor turns in a specific direction. That rotation is defined in the claim by defining the travel of the material between entrance and exit of the device. Otherwise the material would not be ground.
A combination of Fig 3, tangential entry with maximum length of travel with Fig 9 of D3, radial entry, would allow to consider claim 1 as granted lacking IS. The same would apply for all the AR.
Decision on both validity and infringement
As according to RoP 242(2,a) the CoA may exercise any power within the competence of the CFI, there is indeed no need to refer the case back to the CFI.
Validity of a dependent claim when the independent claim is valid
Alleging that if the independent claim is valid, the validity extends to all dependent claims is a rather dangerous stance. It is oversimplifying and not correct.
Although, the objection of lack of sufficiency raised by Europe Forestry can be considered farfetched, if a dependent claim is not enabled, this does mean that the independent claim covering the dependent claim could be considered also lacking sufficiency.
If one follows the reasoning of the CoA, if an independent claim is valid, it does not matter that a dependent claim offends Art 123(2) EPC. .
It is established case law at the EPO that if one claim, be it independent or dependent, in a set of claims is not allowable, the entire set of claims is not allowable. It is difficult to understand why the UPC allows itself such a position. It is only if the independant claim is novel and inventive that the same applies to dependent claims. Any objection of lack of sufficincy or added matter has to be dealt with separately at the level of the dependent claim.
If this position persists, it will represent a dangerous trend. As the CoA UPC is the last instance, this could become problematic in the future.
Comments
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