2025 Week 23
Sometimes you need to know when to take a step back from enforcing your patent, and regroup, before pressing on. In March 2024, Tiroler Rohre filed an application for a preliminary injunction (PI) against SSAB for infringement of EP 2839083 B9. At the inter partes hearing for the PI, the UPC Local Division (LD) Munich expressed doubts about the validity of the patent. In the light of this, the patentee withdrew the PI application. The defendants resisted, saying that they had an interest in seeing a decision on the PI. The court allowed the withdrawal of the PI, but ordered that the patentee should bear the costs of those proceedings. The court reasoned that the defendant did not have a legitimate interest in a decision on the PI because a decision in summary proceedings would not have any legal effect on subsequent full infringement proceedings.
Having beat a strategic retreat from the PI application, the patentee launched infringement proceedings, and the defendant counterclaimed for revocation. The same LD Munich has issued its decision in Tiroler Rohre v. SSAB, deciding that an amended version of the patent is valid and infringed. The interesting parts of the decision turn on claim interpretation and inventive step.
The patent – as amended
The claimed invention is for a tip to be used for driving hollow piles into the ground. The piles are filled with concrete, to provide foundations for buildings. The tip provides a seat for the cylindrical hollow pile but also provides clearance for concrete to flow out from the pile and out from the rear of the tip, to form a concrete jacket in the ground around the pile.
The LD decided that claim 1 as granted was not novel. The patentee presented a number of auxiliary requests, the third of which the LD considered was valid. To understand the infringement, we need to look at the claim as amended. This was in effect a combination of granted claims 1, 3 and 4. Bear in mind that the claim below is a translation from the original German.
1. A drive point (1) for a substantially tubular, in particular hollow-cylindrical, driven pile (2) having a pile core (3), through which concrete can be introduced into the driven pile (2),
wherein the drive point (1) can be fitted on to a pile end (4) of the driven pile (2),
wherein at least one first support limb (6) with a first support surface (7) for an end face (8) of the pile end (4) is arranged at an inside wall (5) of the drive point (1),
wherein starting from the plane of the first support surface (7) the drive point (1) has a cavity (9) which extends at least partially in the driving-in direction (E) and into which concrete can be introduced through the pile core (3) when the driven pile (2) is fitted on,
wherein there is provided at least one concrete outlet passage (10) which connects the cavity (9) to an upper edge (11) of the drive point (1),
characterised in that the at least one first support limb (6) in the cross-section relative to the driving-in direction (E) is in the form of a segment of a circle or a segment of a circular ring,
a circular arc (12) of the segment of the circle or circular ring extends over 40° and 120°.
This is all much easier to understand if you look at the first embodiment in the patent:
The intention in the embodiment is that the end face 8 of the hollow pile 2 bears against the upper surface 7 of the support limb 6, but that there are gaps 10 between different parts of the support limb 6 to allow the concrete to flow out.
The alleged infringement
The SSAB products looked significantly different to the embodiment in the patent. Two views of an example are shown below.
You can see three arcuate grooves, rather than the upstanding arcuate walls in the embodiment of the patent. The grooves have a taper – they are narrower at their base than at the top. While you might well think that this might be the lead-in to a discussion about the doctrine of equivalents, it wasn’t needed here.
The key questions facing the court really concerned interpretation of the claim, due to the disagreement between the parties of how a hollow cylindrical pile would interact with the grooves.
The defendant argued that the piles intended for use with these pile tips would have a flat end, as in the patent, but would have a wall thickness larger than the base of the grooves. So they argued that the end face of the pile would not meet the base of the groove, even under the massive forces used when driving the piles into the earth.
Carefully considering the scope of the claim, the LD decided that the claim defines the effect of the support surface 7 of the support limb 6 meeting the end face 8 of the pile 2. Therefore, the end face of the pile should meet the base of the groove, in order for the pile tip to be doing the job suggested by the claim.
“Suitable for …” in the context of infringement
It’s well understood that the approach of the European Patent Office to this type of claim, in the context of validity, is that the pile tip would merely need to be “suitable for” the proposed interaction with the pile. Any pile tip in the prior art that has the required features of the claimed pile tip would fall inside the scope of the claim, even if it’s not disclosed with a corresponding pile, and even if it’s not explicitly disclosed as being suitable for use with such a corresponding pile.
The LD here followed exactly the same approach for infringement. The LD seemed to accept for the sake of argument that the defendants’ own piles may have a wall thickness that is too large to meet the base of the groove in practice. However, the defendant faced an incredibly high bar to prove that their pile tip would not be suitable for the use proposed in the claim.
In effect, the LD said that the defendants would need to show that it is technically and functionally impossible to manufacture a pile with a wall thickness and shape that would meet the base of the groove and which would operate satisfactorily in use. The fact that there were no such piles available from the defendants or from others in the market was not relevant.
From one perspective, you might view this as a “could-not-would” assessment – what matters is whether the pile tip could be used in the way indicated in the claim, not whether it would reasonably be used in that way.
Inventive step
The LD Munich has previously suggested that for reasons of uniformity and predictability, the UPC should use the problem-solution approach to inventive step, in the same way that it is used by the EPO. We reviewed that proposal in UPCW 2025 Week 14.
Here (with the same legally qualified judges on the panel, but a different technically qualified judge), the same LD Munich has doubled down on this point. The decision notes that it is “problematic” if the EPO and UPC apply different tests for inventive step, given that they are both assessing inventive step under the European Patent Convention.
The decision of the LD then specifically sets out the familiar steps of the problem-solution approach. Perhaps this is a way to give the Court of Appeal a clear basis for either endorsing the problem-solution approach, or for setting out a different, UPC-specific, approach to inventive step.
On the facts of the case, the LD decided that the skilled person would not have modified the closest prior art (E3) with a secondary reference (E7) to provide the characterising features of the claim. In their view, the skilled person would have been taught away from making such modifications because E7 uses its relevant structural features for different technical reasons that would not be wanted in E3.
Outcome
The amended patent was therefore considered to be valid and infringed. The defendants now face an injunction in all UPC states in which the patent is in force (not just the countries in which they were selling their products). They also face an order for recall and destruction of infringing products. Additionally, the patentee is authorised to publicise the decision in various technical and trade journals, at the defendants’ expense. Because of the required amendment to the patent, the court decided that the patentee should pay 30% of the costs of the revocation counterclaim and 10% of the costs of the infringement action, with the defendants paying the remainder.
