2025 Week 21
In April 2024, Korean kitchen appliance firm Hurom launched patent infringement proceedings against NUC Electronics and Warmcook for infringement of two patents for juicers: EP 2028981 B1 and EP 3155936 B1. Interestingly, these cases were filed at different local divisions of the UPC. The first patent was found to be infringed by the Mannheim LD in March 2025. We reviewed that decision in UPCW 2025 Week 11, noting that there was no counterclaim for revocation. That infringement decision is now under appeal.
Fast forward to now, and in respect of the second patent EP 3155936 B1, the Paris LD has issued its decision in Hurom v. NUC. The couple of extra months taken compared with the Mannheim case are probably down to the fact that here there was a counterclaim for revocation, which builds in at least one additional round of pleadings.
Unlike the first case, here the court did not get to talk about infringement, because the relevant claims of the patent were revoked for obviousness. It’s a great case to review because, despite the enormously long claim 1, the discussion came down to just a couple of features, allowing the court to explain how it approaches inventive step in a simple mechanical case.
Outline of the case
Hurom launched the infringement action and in reply NUC filed a counterclaim for revocation. Presumably seeing the writing on the wall, Hurom filed an application to amend the patent. We have seen claim amendments previously at the UPC. But, unusually at the UPC to date, Hurom filed an unconditional amendment. In other words, for those used to EPO opposition proceedings, their main request was an amendment to claim 1 of the patent.
NEC attacked the patent (as amended) on the grounds of added subject matter and obviousness. Both grounds are interesting for the way in which the UPC approached them.
What's the invention?
The patent acknowledges that the invention is a modification of known juicers of the type shown in Fig. 1 of the patent. Fig. 3 shows an embodiment of the invention. These juicers have a drum 10 and a screw 30 that slowly presses the vegetables inside a mesh screen 40. To help deal with the screen 40 getting clogged up with veggie debris, there is a rotating brush 50 between the screen 40 and the drum 10. The screw 30 and the brush 50 are rotated by a main drive 5, with the brush being driven by an arrangement of gears 60 from the main drive. The invention is in effect to take this arrangement of gears to below the base of the drum and to add a casing 70 around the gears.
Below is a closer view of the drum 10 and the gears 60 with the casing 70.
Claim 1 sliced and diced
Claim 1 is long. Here it is, with some feature numbering added by the court and some colour added by me. The features in green were in claim 1 as filed, The features in purple were added to claim 1 during examination to reach grant. Then the features in orange were added in the new main request filed at the UPC in reply to the counterclaim for revocation.
[1] A juice squeezing module for a juicer adapted to be mounted on a body (3) of the juicer with a driving shaft (5a) of a driving motor protruding upward therefrom to perform a juice squeezing operation, the juice squeezing module comprising:
[1.1] a juice squeezing drum (10) mounted on the body (3) of the juicer in such a manner as to be open on the top surface thereof and having [1.1.1] a juice discharging hole (11) and a remnant discharging hole (13) formed on the lower end periphery thereof and
[1.1.2] an engagement gear (15) disposed on the edge of the periphery of the bottom surface thereof;
[1.2] a cap (20) adapted to cover the top surface of the juice squeezing drum (10) and having an injection hole (21) formed on the top side thereof;
[1.3] a juice squeezing screw (30) rotatably mounted at the inside of the juice squeezing drum (10) and having screw spiral lines (31) formed on the outer peripheral surface thereof and a power connector (33) disposed on the underside thereof in such a manner as to be connected to the driving shaft (5a);
[1.4] a screen drum (40) mounted at the inside of the juice squeezing drum (10) and having a screen structure (41) as the outer peripheral wall thereof;
[1.5] a rotating brush (50) disposed between the juice squeezing drum (10) and the screen drum (40) in such a manner as to rotate and brush the inner peripheral surface of the juice squeezing drum (10) and the outer peripheral surface of the screen drum (40) and having a brush ring gear (55) mounted on the underside periphery thereof in such a manner as to be connected to the engagement gear (15)
[1.6.1] brush rotating means (60) disposed on the underside of the juice squeezing drum (10) to transmit the driving force of the driving shaft of the body (3) of the juicer to the engagement gear (15) to rotate the rotating brush (50);
and characterised in that it further comprises
[1.6.2] a brush rotating means cover (70) coupled to the underside of the juice squeezing drum (10) to cover and support the lower portion of the brush rotating means (60),
[1.6.3] wherein the brush rotating means (60) is disposed between the underside of the juice squeezing drum (10) and the brush rotating means cover (70) coupled to the underside of the juice squeezing drum (10),
[1.7.1] wherein the brush rotating means (60) is formed of a gear module connecting the driving shaft (5a) and the engagement gear (15) and comprising a first shaft gear (61) having a first gear (61a) formed on the outer peripheral surface thereof; and a second shaft gear (63) having a top end periphery coupled to a center shaft of the engagement gear and a second gear (63a) formed on the outer peripheral surface of the lower portion thereof
[1.7.2] wherein the driving shaft (5a), and the power connector (33) of the juice squeezing screw (30) and the first shaft gear (61) are connected to each other in such a manner as to rotate unitarily with each other, and
[1.7.3] wherein the driving force of the driving shaft (5a) is transmitted to the engagement gear (15) through the first shaft gear (61) and the second shaft gear.
No added matter
The key arguments from NUC related to the feature 1.6.3 and features 1.7.1-1.7.3. The court applied the test for added matter as explained by the UPC Court of Appeal in Abbott v. Sibio which we reviewed here, noting that it seemed more generous in practice than the typical EPO approach.
It is certainly true that the specific wording used in the amended claims does not literally appear in the original application. In fact, basis for some features seems to be provided mainly by the drawings. This is often a red flag for EPO examiners, who may raise an objection that isolation of a feature from a drawing amounts to an unallowable intermediate generalisation from the original disclosure.
But here the court was taking greater account of what (in their view) the skilled person would really understand from the original application. With respect to re-writing the definition of the second shaft gear in 1.7.1, the court said:
The Court considers that this reformulation constitutes a correct and necessary clarification, which would be understood as such by the skilled person.
Also, with respect to comments in the description of an embodiment hinting that the invention may be implemented differently to the embodiment:
In this respect, the Court notes that the final sentence of paragraph [0049] of the application states that the structure of the brush rotating means, of which the first shaft gear is part, may be freely varied. This indicates that the skilled person should not take this paragraph too literally.
Still further, the court addressed the question of whether you need literal basis in the application:
NUC appears to argue that, for each of these amendments, the features should be literally present in the application, thereby applying an unduly strict criterion.
The outcome was that the claims of the main request did not contain added matter.
Inventive step
This is an excellent case to for its simple approach to inventive step, which explains why it is worth showing the claim and the embodiment.
The court set out the test for inventive step in a much more concise way than we have seen in many other UPC cases from different divisions:
In assessing inventiveness, it is necessary to determine whether, in light of the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and by performing simple operations. Inventive step is defined with respect to the specific problem encountered by the person skilled in the art.
Note that this is identical to the wording of the test set out in Dexcom v. Abbott, also by the Paris Local Division, and by the Paris Central Division in Bitzer v. Carrier, as we reported here, but other UPC divisions have been applying different approaches.
The closest prior art was D1 (CN202365584U), which had not been cited in examination of the application. Hurom tried to push back against using D1 as a starting point, but the court noted that it is clearly in the same technical field of upright low speed juicers for difficult-to-juice vegetables and fruits. Having interpreted the claim, the court decided that the only novel features of claim 1 of the main request were features 1.6.2 and 1.6.3. (Note that this suggests that the court didn’t think that the amendments to the claims as granted made any difference to inventive step.) D1 discloses a broadly similar juicer to Fig. 1 of the patent, except that the gear transmission 591, 592 for rotating the brush is under the base of the drum (juice extraction cup 500) as shown in the drawing from D1 below. The gears do not have a cover.
The court considered the technical effect of the novel features of the claim. They agreed with Hurom that the cover can reduce damage and contamination of the gear drive train transmission, although such advantages are not specifically mentioned in the patent. But the view of the court was that these are normal advantages that the skilled person would expect from a cover.
The court combined D1 with D2 (KR20130016748A – also not cited in examination of the application). D2 is also in the same technical field. A cover over a gear transmission is shown in D2 and it is stated to seal the gear seating space. D2 uses a different gear arrangement to that claimed, but the court decided that the skilled person would be able to implement a suitable cover for the gears of D1 based on the disclosure provided by D2.
Overall, the novel features of the claim were not presented in the patent as providing any particular benefit that would not be obvious to the skilled person from the prior art. Therefore the mention in D2 of the sealing function of the cover was enough to point to the same solution as defined in claim 1 to the problem damage or contamination of the gear drive train transmission.
What happened to the patent?
Although Hurom also filed an auxiliary request with further amendments to claim 1, this fell for the same reasons as the main request.
But the patent has not been entirely revoked in the UPC states. Original claims 10-14 survived, with claim 10 being an independent claim to another embodiment. These claims were not invoked for infringement and the counterclaim for revocation did not attack them. So the outcome of the case is that the patent survives in slimmer form for the UPC states.
