UPC CFI 231/2024

Patent EP 3 831 283 B1 is novel over WO'896 (closest prior art for inventive step) because WO'896 does not disclose the recess in a bottom exterior surface with the connect support received through a distal-facing opening

Hinweis: Court found that WO'896 does not anticipate the distinguishing features 1.4 and 1.5 of claim 1.

Claim 1 involves an inventive step: US'440 provides no pointer to motivate or enable the dramatic design change needed to arrive at the claimed invention from WO'896

Hinweis: Court applied problem-solution: regardless of how the technical problem is formulated, US'440 would not motivate the skilled person to modify WO'896 in the required manner because it does not disclose the relevant distinguishing features and no pointer exists for the dramatic design change required.

Sibio's second line of inventive step argumentation (re-mapping top/base of housing) is inadmissible as late-filed

Hinweis: Court upheld Abbott's admissibility objection to the second line of argumentation first raised in Sibio's Reply.

Sibio's novelty challenge over WO'896 is inadmissible: merely referencing a document for novelty/inventive step in general terms without a detailed novelty analysis is insufficient

Hinweis: Court held that lack of novelty and lack of inventive step are separate grounds that cannot be absorbed by each other; a detailed analysis only for inventive step does not establish that novelty is separately challenged.

Claim 1 of EP 3 831 283 B1 lacks novelty over WO'896

Begründung: Admissibility: Sibio only provided a detailed analysis with respect to inventive step over WO'896; merely indicating a document will be used for novelty and/or inventive step without specific novelty analysis is insufficient to establish a novelty challenge. Substantively also not established.

Claim 1 lacks inventive step starting from WO'896 combined with US'440

Begründung: US'440 provides no incentive for the skilled person to make the dramatic design change required; no pointer identified for arriving at the distinguishing features 1.4 and 1.5.

R. 75(3) RoP bars a new counterclaim for revocation concerning the same patent after an earlier revocation action

Begründung: R. 75(3) RoP does not apply when a counterclaim for revocation in a subsequent infringement action before a Local Division is filed after the oral hearing in an earlier Central Division revocation action; flexibility and efficiency principle prevails.