UPC CFI 836/2024

Claims 1–4 and 6 of EP 4 019 790 in their granted form lack inventive step over prior art

Hinweis: Munich Central Division accepted BAUSSMANN's challenge to the main request and Auxiliary Requests I and II, finding independent claims 1 and 3 (and dependent claims derived therefrom) obvious over the prior art.

Retrospective assessment (hindsight) must be avoided when determining inventive step, even when relying on common general knowledge

Hinweis: Court accepted this principle and required the skilled person to have had a genuine incentive to arrive at the claimed subject matter from the prior art without benefit of hindsight.

Court and defendant are bound by the scope of the revocation action as defined by the claimant; non-attacked claims are immune

Hinweis: Because BAUSSMANN chose not to attack claims 5 and 6 of the granted patent, those claims remained valid and the patent was maintained in amended form (Auxiliary Request III plus claims 5 and 6 unchanged).

Main request (granted claims) should be maintained in full

Begründung: Claims 3 and 6 of the main request were found not patentable (lack of inventive step / other grounds), rendering the main request and Auxiliary Requests I and II non-allowable.

Auxiliary Request I is allowable

Begründung: Auxiliary Request I contained claim 3 which was equivalent to granted claim 6 and was thus not patentable for the same reasons.

Auxiliary Request II is allowable

Begründung: Auxiliary Request II included independent claim 3 of the main request which was not allowable, making AUX II equally non-patentable.