Milan - Local Division
UPC_CFI_240/2023

Procedural Order
of the Court of First Instance of the Unified Patent Court delivered on 17/09/2024

APPLICANT
1) Oerlikon Textile GmbH & CO KG

RESPONDENT
Himson Engineering Private Limited

PATENT AT ISSUE
Patent no. Proprietor/s
EP2145848 Oerlikon Textile GmbH & CO KG

DECIDING JUDGE
Full Panel

COMPOSITION OF PANEL – FULL PANEL
Presiding judge Pierluigi Perrotti
Judge-rapporteur Alima Zana
Legally qualified judge Carine Gillet
Technically qualified judge Michel ABELLO

LANGUAGE OF PROCEEDINGS: Italian

ORDER
1. Procedural history
1.1. In the context of the infringement proceedings concerning patent EP 2145848B1 (hereinafter referred to as "EP'848," relating to a “False twist texturing machine") initiated by the proprietor Oerlikon, where the defendant filed a counterclaim for the revocation of the patent, Oerlikon, on 20 May 2024, requested permission, in the Reply to the Defence to an application to amend the patent, to submit an eighth Auxiliary Request (AR8) pursuant to Rule 30.2 of the Rules of Procedure (RoP).
The patent proprietor, specifically insofar as relevant here:
(i) responded to the additional arguments regarding the invalidity of EP'848 raised by Himson in the Reply to the Defence to the Counterclaim for Revocation, Rejoinder to the Reply to the Statement of Defence, and Defence to the Application to amend the patent dated 19 April 2024, also presenting evidence in support of the validity of the asserted patent;
(ii) (ii) in the alternative, requested the admission of one of the seven auxiliary requests for amendment already submitted, contested by Himson, in the event that claim 1 of EP'848 as granted is found to be and declared invalid;
(iii) (iii) requested, pursuant to Rule 30.2 RoP, the Court’s permission to submit an additional auxiliary request for amendment, the eighth, filed in the record as document 39 along with its Italian translation as document 40.
Oerlikon justified this request on the basis of prior art US 795, submitted by Himson in its latest filing on 19 April 2024.
1.2. With regard to the request pursuant to Rule 30.2 RoP, Himson determined the following on 20 June 2024:
a. to reject Oerlikon’s request to file Auxiliary Request 8 for all the reasons set forth in the statement of facts;
b. in the alternative, if Oerlikon's request to submit the additional Auxiliary Request 8 is granted, to grant the defendant sufficient time to take a position on its merits.
1.3. The judge-rapporteur initiated the adversarial process, emphasizing that the subsequent request would be deemed admissible if it is:
• justified by a new challenge to the patent, for example, through the introduction of new prior art;
• formulated as a response to this new challenge;
• not admissible in the proceedings at an earlier stage;
• apt to influence the outcome of the proceedings.
He therefore ordered Oerlikon's defence to specifically clarify to the Panel how the eighth Auxiliary Request effectively addresses the new challenge to the validity of the patent raised by Himson, based on prior art US’795.
He also set Himson a time limit to respond.
1.4. Both parties submitted their respective pleadings within the assigned time limits.
At the outcome, the Court ruled as set out below.
2. General considerations
This preliminary order is issued in compliance with:
- the principles of flexibility, proportionality and fairness as set out in §2 of the preamble to the RoP;
- Rule 30.2 and Rule 50 RoP;
- the interpretative approaches adopted by the UPC regarding the provision under examination.
3. Procedural aspects
3.1. As a general matter, it should be recalled, also in light of the wording of Rule 30 RoP and previous cases handled by the Court, that the patent proprietor, in the case of filing amendments, must:
(i) indicate all proposed amendments, including, if applicable, a set of alternative claims, together with the reasons why they meet the validity requirements set out in Articles 84 and 123(2)(3) EPC and, if applicable, why they nonetheless remain infringed.
(ii) (ii) file the application within the mandatory two-month period from the service of the act initiating the invalidity proceedings, that is, within the deadline set for the application to amend the patent;
(iii) after the expiry of this period, any further application to amend will be considered late, and its admission into the proceedings is only possible with the express permission of the Court pursuant to Rule 30.2 RoP.
As observed in the precedents of this Court:
“As apparent from Rules 30 and 50 ‘RoP’ the patent proprietor does not have an unlimited right to amend the patent, as it has to meet several conditions. In particular,
the patent proprietor has to request the patent amend in due time – which means within the two-month period from the service of the statement of claim or the counterclaim for revocation – and any subsequent request to amend the patent may only be admitted with the permission of the Court and the proposed amendments; additionally, the proposed amendments, besides meeting various substantive requirements, must be a reasonable number in the context of the case if they are conditional.” Paris Central Division, Carrier Corporation v. BITZER Electronics A/S, CFI_263/2023).
“In order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent the applicant has to offer a justification of its request” (Edwards Lifesciences Corporation v. Meril Italy Srl, CFI_255/2023).
Rule 30.2 RoP is of an exceptional nature and therefore applies restrictively, as it is intended to prevent the patent proprietor, by successively filing several amendments, from depriving the opponent of the opportunity to respond in a timely manner and the Court of the possibility to appropriately examine the requests (cf. Panasonic Holdings Corporation v. Xiaomi Technology Germany GmbH et al., CFI_219/2023). Additionally, it aims to prevent an unnecessary extension of the proceedings, which would be contrary to the objective of resolving the case swiftly and efficiently.
3.2. With respect to this regulatory framework, the Court considers, first and foremost, that Oerlikon's application has clear procedural shortcomings.
The patent proprietor introduced the application under Rule 30.2 RoP, justifying the filing of AR8 solely as a response to the new inventive step challenge based on the newly cited prior art US’795 (see paragraph 107 of the Rejoinder to the Reply and the Reply to the Defence to an Application to Amend the Patent), which was raised for the first time in the submission filed by the defendant on 19 April 2024 (doc. 6/D9).
However, in its own submission permitted by the Court, specifically concerning US’795, Oerlikon supported the admissibility of AR8 by referring, for the first time, to the additional document DE’042, which was also cited by Himson on 19 April 2024. Oerlikon structured its request almost exclusively around this latter prior art.
3.3. On this point, Himson responded by first objecting to the inadmissibility of this shift in the defence strategy and subsequently requested the rejection of the application.
3.4. That being said, the Court considers that the new reasoning, based on D 042, which now supports the amendment application, is not valid.
As previously noted, the application under Rule 30.2 RoP must be substantiated to enable the Court to strike a fair balance between the opposing interests involved in the patent amendment request (Rule 30(2) RoP, UPC CFI, CD Paris, Meril Italy v. Edwards Lifesciences).
In particular, the patent proprietor must substantiate:
- “why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid and, if applicable, why they are infringed”.
This provision, set out in the first paragraph of Rule 30 RoP, must undoubtedly be considered applicable to the second paragraph as well;
- the timeliness of the subsequent amendment, as it represents a later and subsidiary scenario compared to that outlined in paragraph no. 1 of the RoP.".
In the present case, Oerlikon has changed its defence strategy, ultimately justifying the application for amendment also in relation to a different prior art, namely DE’042.
This choice does not appear consistent either with the assessments the Court is required to make or with the opposing party, as it introduces a "surprise" element into the proceedings, potentially affecting Himson's defence strategy and the swift resolution of the dispute. Moreover, it reveals an ambiguous defence approach on the part of the patent proprietor.
The fact that – belatedly – Oerlikon bases the majority of its arguments in favour of the admissibility of AR8 on DE’042 seems to confirm that AR8 is not the actual response to the challenge based on US’795, contrary to what was asserted in its application to amend the patent. Oerlikon has been aware of DE’042 since the examination phase at the Patent Office, which initially deemed Oerlikon's application invalid based on this very prior art. In response, Oerlikon amended its independent claim, which is now formulated as follows:
“False-twist texturing machine for the texturing of a plurality of multifilament threads, with a plurality of delivery units (3, 9, 14), a heating device (4), a cooling device (5), a false-twist device (8) and a winding device (10.1) having a driven drive roller (26) for drawing off, drafting, texturing and winding at least one of the threads
Himson could and should have introduced AR8 at an earlier stage along with AR1-7, given that the EPO examination had been referenced by both parties in previous submissions.
4. The conditions of Rule 30.1(b)
4.1. The Panel considers that AR8 does not simplify the case but rather adds interpretative complexities, risks prolonging the proceedings, and may unreasonably prejudice Himson's defence (within the meaning of Rule 263.2(b) RoP). Oerlikon has failed to provide convincing explanations regarding the admissibility and clarity of the added subject matter based on paragraph [0043].
4.2. According to Rule 30.1(b), the patent proprietor must provide “an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC.”
This requirement must also be deemed applicable in the case of the second paragraph, namely with respect to subsequent amendments, since the latter differ from the former only in terms of the manner of their introduction into the proceedings (the first without the need for permission, the second only with the Court’s permission). However, both are undoubtedly subject to the same substantive requirements.
4.2. In particular, with the eighth auxiliary request, Oerlikon proposes to amend claim 1 of EP '848 by combining it with granted claims 2, 3, 6, 7, 8, 9, and paragraph [0043] from the patent description.
The patent proprietor explains (in its latest response) that AR8 consists of the combination of:
- AR6 (claim 1 + dependent claims 6, 7, 8, and 9);
- with AR7 [introducing a "movable bobbin holder 25"];
- the further specification that "only the third delivery unit (14), positioned directly before the winding device (10.1), is designed as a nipping delivery unit”;
- the original dependent claim 2;
- the original dependent claim.
Oerlikon justifies compliance with Rule 30.1(b), emphasizing that AR8:
“(a) does not extend the protection beyond that granted by the patent in its granted form, as it merely consolidates various dependent claims;
(b) does not add new subject matter that was not included in the application as originally filed, given that the granted claims are almost identical to those originally filed by Oerlikon in its application before the EPO;
(c) does not result in a lack of clarity within the meaning of Article 84 EPC, as the proposed amendment consists of the literal addition of certain dependent claims into a dependent claim.
As for the feature that the only delivery unit preceding the winding device is a nipping delivery unit, particular reference should be made to paragraph [0043] of EP 2145848A1, cited below.
“Essential for the false-twist texturing machine according to the invention is the division of the delivery units into looping delivery units and nipping delivery units, with only the delivery unit directly before the winding device being designed as a nipping delivery unit and all the remaining delivery units, used for texturing and treating the thread, are designed as looping delivery units that are gentle on the thread.”]
4.3. That being said, the Panel notes that:
with respect to Article 123(2) EPC
- The subject matter added from paragraph [0043] constitutes an intermediate generalization, as the second feature has been omitted (“all the remaining delivery units, used for structuring and treating the thread, are designed as looping delivery units that are gentle on the thread.”).
- However, Oerlikon has not justified why AR8 would be admissible from the perspective of intermediate generalization.
- AR8 is not admissible in light of Article 123(2) EPC because:
o paragraph [0043] clearly states that “the division of the delivery units into looping delivery units and nipping delivery units [is essential]": in other words, [0043] establishes an essential functional link between the two features related to the looping delivery units and the nipping delivery units;
o however, Oerlikon has added to Claim 1 only the first feature related to the nipping delivery unit, while omitting the second feature related to the looping delivery units;
o this constitutes an intermediate generalization, as the second feature has been omitted (“all the remaining delivery units, used for texturing and treating the thread, are designed as winding devices that are gentle on the thread.”).
This intermediate generalization is therefore contrary to the teaching of paragraph [0043], thereby substantiating the objection raised by Himson in this regard.
with respect to Article 84 EPC
The further specification that "only the third delivery unit (14), positioned directly before the winding device (10.1), is designed as a nipping delivery unit” introduces uncertainty about the total number of delivery units allowed by the claim.
Indeed, it is not clear whether the claim is strictly limited to only the three delivery units (first, second, third) explicitly mentioned or whether it may also encompass additional looping delivery units “in the texturing, treatment, and/or secondary treatment zone”.
The omission of the second feature from [0043] — "all the remaining delivery units... are designed as looping delivery units” — appears to be used by Oerlikon to argue that AR8 is limited to only three delivery units, with the third being the only nipping delivery unit. This would create a distinction from DE’042, which instead includes four delivery units.
However, granted claim 1 was not limited to only three delivery units: "with a plurality of delivery units (3, 9, 14)", and the mention of a first, second, and third delivery unit does not exclude the possibility of a fourth or fifth additional delivery unit.
Paragraph [0043]:
- does not limit the number to only three delivery units (“all the remaining delivery units"), as it does not specify the total number of delivery units;
- does not explicitly state that the only nipping delivery unit is necessarily the third delivery unit but merely specifies that the last delivery unit before the winding device is a (and the only) nipping delivery unit;
- specifies the essential nature of the division of the delivery units into looping delivery units and nipping delivery units, but does not define their total number.
The Panel therefore considers that AR8 introduces doubt regarding the total number of delivery units, which is contrary to the clarity of the claim.
4.4. In conclusion, AR8 does not clearly meet the requirements of Articles 84 and 123(2) EPC.
5. Justification for the new challenge by Himson
5.1. As indicated above, Oerlikon initially justified the filing of AR8 solely as a response to the new inventive step challenge based on the newly cited prior art US’795, which was raised for the first time in the submission filed by the defendant on 19 April 2024 (doc. 6/D9);
Only in its latest comments did Oerlikon justify the admission of AR8 in relation to both the new prior art references US’795 and DE’042 cited by Himson.
5.2. To determine whether AR8 actually addresses a new challenge, it is necessary to verify whether the additional features 1 of AR8 result in differences to US’795, and possibly to DE’042.
1 For reference, AR8 adds three features (compared to the already existing AR1-7):
- The further specification that "only the third delivery unit (14), positioned directly before the winding device (10.1), is designed as a nipping delivery unit” (added parts in red)
- The original dependent claim 2;
- the original dependent claim 3.
5.3. With regard to US’795, when filing the AR8, Oerlikon did not initially invoke any differences between US’795 and the additional features introduced with the new amendment, as all such differences were already present in AR1-7.
With its latest note, Oerlikon emphasized that the only additional feature of AR8 that would correspond to US’795 is dependent claim 3, namely that "the nipping delivery unit (20) has a driveshaft (21) which extends over a plurality of processing stations and which is connected at one end to the electric motor (24)."
However, this difference is not sufficient to affect the outcome of the proceedings, as Oerlikon primarily argues that US’795 "describes the exclusive use of looping delivery units." If US’795 does not describe any nipping delivery unit, then the additional difference in claim 3 is irrelevant, as US’795 is already different from granted claim 1 (and from AR1-7), all of which include a nipping delivery unit.
Therefore, AR8 does not appear to be an effective response to US’795 and in any case no such link has been sufficiently demonstrated.
5.4. With regard to DE’042, although the considerations expressed in point 2 should be regarded as applicable, according to Oerlikon, AR8 would lead to a "further divergence from the disclosure of DE’042" by including:
(i) the difference between the four delivery units shown in Figure 3 of DE’042 and an alleged maximum limit of only three delivery units in the amended claim 1, as well as
(ii) the difference in the positioning of the secondary treatment zone between the third and fourth delivery unit in DE’042.
However, these features are strictly linked to the "third delivery unit" as claimed and to the additional limitations, according to which "only the third delivery unit is a nipping delivery unit" and that "the third delivery unit is positioned directly before the winding device." However, these very limitations have been extracted from paragraph [0043] in violation of Article 123(2) EPC, thereby introducing a lack of clarity, as previously mentioned.

6. Conclusions
The Court therefore finds that AR8:
- does not effectively address the new challenge based on US’795;
- could have been introduced at an earlier stage along with AR1-7 (with respect to DE’042);
- is not apt to affect the outcome of the proceedings based on US’795;
- fails to comply with Articles 84 and 123(2) EPC.

The Court
- considering the already relatively high number of AR applications filed (AR1-7 + AR7 combined with AR1-
- exercising its discretionary power conferred on it by Rule 30.2, in light of the principles of "proportionality, flexibility, fairness and equity" as stated in §2 of the Preamble to the RoP;
rejects the application to amend the patent under Rule 30.2 RoP submitted by Oerlikon.

Issued in Milan, on 17 September 2024

Presiding Judge
Pierluigi Perrotti
Judge-rapporteur
Alima Zana
Legally qualified judge
Carine Gillet
Technically qualified judge Michel Abello

ORDER DETAILS
Order no. ORD_40903/2024 in ACTION NUMBER: ACT_549550/2023
UPC number: UPC_CFI_240/2023
10
Action type: Infringement Action
Related proceeding no. Application No.: 8953/2024
Application Type: Application to amend a patent