UPC_CFI_138/2025 – Michelin v Goodyear

Expert Commentary

Decision infringement case Facts 1. On 21 February 2025, Michelin sued Goodyear for infringement of EP 2 323 858, which is valid only in France, for “variable surface area tire tread”. 2. Goodyear filed a defence and a counterclaim for revocation. 3. Michelin responded with 14 auxiliary requests. The Court 1. The Court described the patent and stated that the parties had agreed on the skilled person and the interpretation of certain claim elements. 2. The Court did not follow Goodyear’s restrictive interpretation of “tread element” based on the simple embodiment in the description. 3. With respect to how a certain claim element is understood by a person skilled in the art, both parties had filed written declarations from (ex)employees, calling them “expert declarations”. The Court qualified these as witness statements. 4. During the interim conference the Court asked Goodyear to rank their invalidity arguments. 5. The Court stated that, with respect to the novelty of a product claim, the intended technical effect is irrelevant, and concluded that claim 1 was not novel. 6. The Court noted that Michelin had not argued that the dependent claims were novel or inventive, but had simply argued that, since claim 1 was valid, these dependent claims were also valid. 7. The Court dismissed the claim, having found none of the auxiliary requests to be valid. Comment 1. During the interim conference, the Court tried to bring some order to the case, but in the end agreed to deal with all 14 auxiliary requests! 2. Bravo, EPO: it granted a patent after the applicant amended the description with a prior art document, even though a thorough look (such as that carried out by the Court) would have revealed that this prior art destroys the novelty. 3. If a prior art product reads on the patent claims, it is irrelevant whether that product was used for a completely different purpose. However, the patentee did not try this, and the use of that product for a different purpose may be patentable. As that different use was disclosed in the application, it may have been worthwhile to try such an auxiliary request. 4. I am also surprised that the claimant (Michelin) apparently accepted that if the independent claim were invalid, the same would be true of the dependent claims. 5. Especially in a case such as this, where the independent claim is not novel, it may very well be that the dependent claims (which add further features) are novel, and even the defendant acknowledged such novelty for claims 7 to 14. Moreover, with regard to inventive step, they relied on the prior art document referred to above, which showed a similar product for a different purpose. Therefore, you could ask the question whether such a document was relevant to the assessment of inventive step. 6. Michelin makes fantastic tires, but I was not terribly impressed by their performance in the UPC, as far as one can judge from reading the judgment.

Full Decision Text

1 Paris Local Division UPC CFI 138/2025 UPC CFI 522/2025 DECISION of the Court of First Instance of the Unified Patent Court delivered on 16/04/2026 Headnotes 1. Probative value of the “affidavit”: Although the written statements do not carry the probative value of an independent and objective expert, the Court considers them to be valuable technical information. 2. Novelty: The claimed invention is for the skilled person directly and unambiguously derivable from a single prior art disclosure, using common general knowledge. However, the same technical effect is not required in the case of a product invention defined by structural technical features only, which covers a product considered in its own right, independently of any technical result or effect. 3. A single prior art document was cited in the Patent description, and it is expressly mentioned that this document discloses a product according to the preamble of Claim 1. For these reasons, it has been sufficiently demonstrated that this document constitutes a relevant prior art document for the assessment of the novelty of the structural technical features of claim 1 of the patent in question, regardless of the technical effect described in the prior art document. 4. Auxiliary requests (reasonable number): Parties provided a table with the various combinations categorised according to the additional features, and the parties’ ensuing discussions focused on this summarised presentation. Therefore, the panel considers that the number of auxiliary requests presented in this case is reasonable, as it is ‘manageable’ by the Court. Keywords Art. 54 EPC – Novelty - Prior art - Probative value – Admissibility - Affidavit’s expert - Amendment to the patent - Auxiliary requests - Reasonable number - R. 30.1 RoP 2 CLAIMANT 1) Compagnie Générale des Etablissements Michelin 23 place des Carmes Dechaux 63000 - Clermont-Ferrand – FR Represented by Grégoire DESROUSSEAUX, AUGUST DEBOUZY, and other representatives from that law firm DEFENDANTS 1) Goodyear France S.A.S. Liberty Tower, 17, place des Reflets 92400 - Courbevoie – FR 2) Goodyear S.A. Gordon Smith Avenue 7750 - Colmarg-Berg – LU 3) Goodyear Operations S.A. Gordon Smith Avenue 7750 - Luxembourg – LU Represented by THIERRY LAUTIER, BIRD & BIRD, and other representatives from that law firm PATENT AT ISSUE Patent no. Proprietor EP2323858 Compagnie Générale des Etablissements Michelin PANEL Presiding judge & Judge-rapporteur Legally qualified judge Legally qualified judge Technically qualified judge Camille Lignières Carine Gillet Stefan Johansson Bernard Ledeboer LANGUAGE OF PROCEEDINGS: English 3 DECISION THE PARTIES 1. The Claimant, Compagnie Générale des Etablissements Michelin (hereinafter “MICHELIN” or the “Claimant”), is the French parent company of the Michelin group, which is a world leader in the manufacture of tires for all types of vehicles. The Claimant is the owner of intellectual property rights, including patents, for the Michelin group. 2. The three Defendants (hereinafter “GOODYEAR” or the “Defendants”) are part of the Goodyear group, a worldwide manufacturer of tires which has its headquarters in the United States of America and is one of MICHELIN’s direct competitors. The Goodyear group has several subsidiaries in Europe, including Goodyear France SAS (hereinafter “Defendant 1”) in France, and Goodyear SA and Goodyear Operations SA (hereinafter “Defendant 2” and “Defendant 3”) in Luxembourg. THE PROCEEDINGS 3. On 21 February 2025, MICHELIN lodged an infringement action before the Paris Local Division, against GOODYEAR, based on its European patent EP 2 323 858 B1 (hereinafter “EP’858”). 4. No preliminary objection was raised under R. 19 RoP. 5. On 16 June 2025, GOODYEAR filed a Statement of defence with a Counterclaim for revocation. 6. In its reply to the Statement of defence and its defence to the counterclaim, filed on 14 August 2026, MICHELIN rejected the arguments for revocation of its patent and filed an application to conditionally amend the patent with 14 auxiliary requests. THE PATENT Presentation of the patent 7. MICHELIN is the owner of a European patent designated as EP’858 entitled “Variable surface area tire tread” (G017, EP 2 323 858 B1). 8. EP’858 was filed on 11 September 2008 (claiming no priority) by co-applicants Société de Technologie Michelin and Michelin Recherche et Technique S.A. The Patent was then assigned to Compagnie Générale des Etablissements Michelin (i.e., “MICHELIN”) as the sole registered owner. 9. EP’858 was granted on 20 March 2013. It was initially maintained in force in Germany, Italy and France. It is currently only maintained in force in France, following MICHELIN’s decision to abandon its patent in Germany and Italy. 10. EP’858 has not been subject to any opt-out declaration under R. 5 RoP. 4 11. The patent in suit has not been subject to any opposition proceedings before the EPO. 12. The patent at issue relates to “tire treads having variable surface area” (G017, [0001]). 13. EP’858 comprises 14 claims, including Claim 1 which is an independent claim and dependent Claims 2 to 14. MICHELIN alleges that the Defendants are infringing Claims 1, 3 and 13. 14. Claim 1 reads as follows: A multi-stage tire tread (10) having a contact surface (16) and a plurality of wear layers, each said layer being located at a different depth of the tire tread, the tread comprising: one or more tread elements (12) including a contact surface (16) and having a first wear layer and a second wear layer, wherein the second wear layer is located below the first wear layer; a submerged longitudinal groove (20) extending in a longitudinal direction within the second wear layer of the tread element, wherein said longitudinal groove becomes exposed after a depth of the first wear layer has been worn; a longitudinal sipe (22) extending within the first wear layer between the contact surface and the longitudinal groove; one or more submerged lateral grooves (24) extending from the longitudinal groove in a lateral direction within the second wear layer of the tread element; one or more lateral sipes (26) extending within the first wear layer between the contact surface and one of the one or more lateral grooves, the tread being characterized in that: one or more of the one or more lateral grooves extend from a first lateral side of the longitudinal groove, and one or more of the lateral grooves extend from a second lateral side of the longitudinal groove, such that the one or more lateral grooves extending from the first side of the longitudinal groove are longitudinally offset from the one or more lateral grooves extending from the second side of the longitudinal groove to form a longitudinally alternating arrangement of lateral grooves. 15. Claim 3 reads as follows: The tire tread of any claims 1 to 2, wherein the lateral sipe extends laterally in a longitudinally alternating path and/or radially in an alternating path. 16. Claim 13 reads as follows: The tire tread in any of claims 1 to 12, wherein the spacing between each of the one or more lateral sipes is 5 and 20 mm. - the subject-maƩer of the invenƟon in EP’858 17. Paragraphs [002] to [004] in the specification of the patent provide the background of the invention: [002]: “[…] Tire treads provide grip to resist tire slip that may result during tire acceleration, braking, and/or cornering. Tire treads may also include tread elements, such as ribs or lugs, and tread features, such as grooves and sipes, each of which may assist in providing target tire performance when a tire is operating under particular conditions.” 5 [003]: “One common problem faced by tire manufacturers is how to extend the life of a tire tread. One solution is to increase the tread thickness; however, increasing tread thickness (i.e., depth) generally increases heat generation and rolling resistance.” [004]: “Another common problem faced by tire manufacturers is how to maintain and/or improve tire performance during the life of a tire. (…) Tires commonly used in wet and/or off-road tire conditions generally include treads having surface and volumetric voids. In an attempt to maintain or improve wet and/or off-road performance in worn tread stages, the existing surface voids and volumetric voids may be increased in size to provide additional void for the worn tire tread, or additional surface features added to increase the void. However, these alternations may increase the surface and/or volumetric void in the initial or early stages of the tire beyond that which is desired, and/or the tread becomes less stiff, each of which may negatively affect tire performance.” 18. The wear layers have been illustrated in (marked-up by MICHELIN) in Fig. 1 and 5 of the single exemplary embodiment of EP’858 below. 19. The multi-stage tread includes a first layer (Fig. 1) with longitudinal and lateral sipes (22, 26), and a second layer (Fig. 5) located below the first layer with submerged longitudinal and lateral grooves (20, 24) that become exposed after a depth of the first layer has been worn. The sipes (22, 24) of the first layer extend between the contact surface and the submerged grooves (20, 24) of the second layer. 6 - the prosecuƟon history 20. During the EPO granting procedure, independent Claim 1 was amended and delimited from JP 2002 063323 (Yokohama Rubber Co, hereafter referred to as ‘KUNUGI ') with the features of original Claim 11 that are underlined below: 21. In addition, a reference to KUNUGI disclosing the preamble of Claim 1 was included in the description of EP’858. [0005]: “Document JP2001063323 discloses a tire tread according to the preamble of claim 1. Therefore, there is EP’858 relates to a multi-stage tire tread for a tire. A tire tread assists to resist tire slip. The tread includes tread elements to enhance performance, in particular a contact surface with grooves and sipes (i.e. narrow grooves). These grooves and sipes provide grip as well as void that can assist to channel water in wet or off-road conditions. To maintain tire performance in wet and/or off road condition as the tread wears, the tire tread of EP’858 is provided as multi-stage tire tread having a contact surface with a plurality of wear layers at different depths of the tire tread. This allows surface and volumetric void to be increased as the tire tread wears.” 22. The lateral grooves (24) extend from first and second sides of the longitudinal grooves (20) and are longitudinally offset to form a longitudinally alternaƟng arrangement of lateral grooves, as shown in Fig. 3 of EP’858. 7 23. As set out in the descripƟon of the figures on col. 6, lines 32-56 of EP’858, by providing an alternaƟng arrangement, the sƟffness of the thread element may be maintained, as a fully extending lateral groove or sipe may decrease thread element sƟffness. THE ALLEDGED INFRINGING PRODUCTS 24. According to MICHELIN, the “Fuelmax D Endurance” and the “Fuelmax D GEN-2” Ɵres, which are offered and placed on the market by GOODYEAR in France, fall within the scope of protecƟon of EP’858. 25. The “Fuelmax D Endurance” is shown in the sales brochures as follows (Exhibits AD 4.1 and 4.10 – SoC, §12 and §14): 8 26. The “Fuelmax D GEN-2” is shown in the sales brochure as follows (Exhibit AD 4.4 – SoC, §18 and §19): 27. The GOODYEAR “Fuelmax D Endurance” and” Fuelmax D GEN-2” tires exist in different sizes. THE PARTIES’ REQUESTS 28. MICHELIN requests the Court to order: In summary (Reply to the SoD, § 611): - a declaraƟon of infringement by the Defendants, jointly or severally, of claims 1, 3 and 13 of EP’858 notably by imporƟng into France, offering and placing on the French market the Fuelmax D Endurance and the Fuelmax D Gen-2 Ɵres, as well as by indirectly using the invenƟon (secƟon 4.4.1); thus Michelin does not invoke claim 7 anymore in the declara- Ɵon of infringement - a permanent injuncƟon under penalty (secƟon 4.4.2), 9 - recall and sealing measures under penalty (secƟon 4.4.3); in response to Goodyear’s request to exclude OEMs from the recall measures, Michelin specifies by idenƟfying each professional consumer where the recall and sealing measures are sought, - communicaƟon of informaƟon, under penalty and if necessary, within the framework of a confidenƟality circle to be discussed at the interim conference (secƟon 4.4.5), - reimbursement of procedural costs and legal costs and that the determinaƟon of dam- ages be dealt with in separate proceedings (secƟon 4.4.6). 29. In its Reply to the SoD, MICHELIN requests that all the validity attacks from GOODYEAR be dismissed and proposes conditional amendments of the Patent’s claims (with 14 Auxiliary Requests). 30. GOODYEAR requests the Court to: In summary, a) IN THE COUNTERCLAIMS FOR REVOCATION: 1. REVOKE patent EP 2 323 858 entirely; 2. ORDER Michelin to bear the legal costs and expenses incurred by the Defendants; b) IN THE MAIN ACTION FOR PATENT INFRINGEMENT: - DISMISS all claims put forward by Michelin; - ORDER Michelin to bear the legal costs and expenses incurred by the Defendants; In the alternative, - DISMISS the injunction and the corrective measures for recall requested against the Defendants as being disproportionate, as well as the claim for the communication of the resellers; and LIMIT Michelin’s claim for a right of information; - ORDER Michelin to provide a security bond of 1 million Euros for enforcement of the decision. c) IN THE APPLICATION TO AMEND THE PATENT, the Unified Patent Court is requested to: - DISMISS the application for amendments of patent EP 2 323 858 according to any of Auxiliary Requests 1 to 14; - ORDER Michelin to bear the legal costs and expenses incurred by the Defendants. 10 GROUNDS FOR THE DECISION I. JurisdicƟon and competence 31. EP’858 has not been opted out. It has been validated in France, where it is sƟll in force. 32. The alleged acts of infringement are commiƩed in France. The Paris Local Division of the UPC therefore has jurisdicƟon and competence to hear this infringement acƟon, pursuant to Art. 33(1) a) UPCA, in combinaƟon with Art. 7.2 Bruxelles RegulaƟon I bis (“BR I”). 33. In addiƟon, one of the Defendants – Goodyear France – is a French company, consequently the Paris Local Division of the UPC also has jurisdicƟon and competence under Art. 33(1) b) UPCA, in combinaƟon with Art. 4 BR I. Goodyear France has commercial links with the other two Defendants, and the alleged infringement acts relate to the same products (Fuelmax D Endurance and Fuelmax D Gen 2 Ɵres). II. The Patent and Claim construcƟon The invenƟon according to the Patent 34. Claim 1 of the patent, as maintained by the EPO opposiƟon division, reads as follows (the “feature breakdown” presentaƟon by the Applicant is not contested by the Defendant and has been adopted by the Court)1: Feature 1 A mulƟ-stage Ɵre tread (10) having a contact surface (16) and a plurality of wear layers, each said layer being located at a different depth of the Ɵre tread, the tread comprising: Feature 2 one or more tread elements (12) including a contact surface (16) and having a first wear layer and a second wear layer, wherein the second wear layer is located below the first wear layer; Feature 3 a submerged longitudinal groove (20) extending in a longitudinal direcƟon within the second wear layer of the tread element, wherein said longitudinal groove becomes exposed aŌer a depth of the first wear layer has been worn; Feature 4 a longitudinal sipe (22) extending within the first wear layer between the contact surface and the longitudinal groove; Feature 5 one or more submerged lateral grooves (24) extending from the longitudinal groove in a lateral direcƟon within the second wear layer of the tread element; Feature 6 one or more lateral sipes (26) extending within the first wear layer between the contact surface and one of the one or more lateral grooves, Feature 7 the tread being characterized in that: one or more of the one or more lateral grooves extend from a first lateral side of the longitudinal groove, and one or more of the lateral grooves extend from a second lateral side of the longitudinal groove, such that the one or more lateral grooves extending from the first side of the longitudinal groove are longitudinally offset from the one or more lateral grooves extending from the second side of the longitudinal groove to form a longitudinally alternaƟng arrangement of lateral grooves. 1 For the sake of clarity, certain terms have been highlighted by the Court using bold font. 11 35. EP’858 relates to Ɵre treads and more specifically to those having variable surface area ([0001]). 36. Tire treads provide grip to resist Ɵre slip that may result from Ɵre acceleraƟon, braking and/or cornering ([0002]). 37. To increase the Ɵre performance when a Ɵre is operaƟng under parƟcular condiƟons, Ɵre treads may include tread elements, such as ribs or lugs, and tread features, such as grooves and sipes ([0002]). 38. One problem faced by Ɵre manufacturers is how to maintain and/or improve Ɵre performance during the life of a Ɵre in wet and/or off-road condiƟons as the tread wears ([0004]). At the date of filing of EP’858, Ɵres commonly used in wet and/or off-road condiƟons generally include treads having surface voids and volumetric voids ([0004]). One possibility to maintain or improve wet and/or off-road performance in worn tread stage, as explained in EP’858, would be to increase in size the exisƟng surface voids and volumetric voids ([0004]). However, these alternaƟons may increase the surface and/or volumetric void in the iniƟal or early stages of the Ɵre beyond that which is desired, and/or the tread becomes less sƟff, each of which may negaƟvely affect Ɵre performance ([0004]). 39. Thus, the technical problem that the invenƟon addresses is how to maintain or increase the Ɵre performance in wet and/or off-road condiƟons in worn tread stage. 40. EP’858 expresses a technical problem as follows (G017, [0005]): “Therefore, there is a need for a Ɵre tread that provides increased void performance at worn stages, especially in the central or intermediate porƟons of the tread width, without sacrificing Ɵre performance.” 41. Claim 1 provides a soluƟon to the abovemenƟoned problem by providing submerged 47 grooves and parƟcularly submerged lateral grooves that are arranged alternaƟvely relaƟvely to a longitudinal submerged groove (as described in [0024], Fig. 1 and 3). 12 42. When the Ɵre is worn and the submerged grooves (see grooves 20 and 24) become exposed, they provide addiƟonal surface voids and volumetric voids at a point where the volumetric void provided by the other grooves (grooves 14 on Fig. 1 and 5) is low and thus the performance on wet or off-road condiƟons is weak (20 and 24 highlighted in green on Fig. 5 and [0020], [0023], [0029]). 43. Therefore, at a worn stage the exposed submerged grooves enhance the performance of the Ɵre on wet or off-road condiƟons. The skilled person 44. The parƟes do not dispute the appropriate definiƟon of the person skilled in the art in the present case, and the Court retains the one proposed by GOODYEAR in its SoD (§92), which is similar to the one proposed by MICHELIN in its Reply to SoD (§47): “The specialist of Ɵre treads who is aware of the techniques that were implemented in Ɵres on the market before 11 September 2008 and who has knowledge of the content of the reference books published by this date that relate to various aspects of Ɵre treads.” Claim interpretaƟon 45. The principles applicable to claim construcƟon have been set out by the UPC Court of Appeal in its final order in UPC CoA 335/2023 (Order of 26 February 2024, as recƟfied, NanoString v. 10x Genomics) and reminded as follows in the recent CoA final decision of 25 November 2025 (UPC CoA 528/2024, Amgen v. Sanofi) in its §39: “ The patent claim is not only the starƟng point but the decisive basis for determining the protecƟve scope of a European patent under Art. 69 EPC in conjuncƟon with the Protocol on the InterpretaƟon of Art. 69 EPC. The interpretaƟon of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather the descripƟon and the drawings must always be used as explanatory aids for the interpretaƟon of the patent claim and not only to resolve any ambiguiƟes in the patent claim. The patent claim is to be interpreted from the point of view of a person skilled in the art. In applying these principles, the aim is to combine adequate protecƟon for the patent proprietor with sufficient legal certainty for third parƟes.” 13 In the case at hand -In Claim 1, “Tread element” 46. The parƟes disagree on the interpretaƟon of “tread element” in features 2, 3 and 7 in Claim 1 of the patent. 47. The patent in suit does not provide an explicit definiƟon of the concept of a “tread element”. 48. GOODYEAR, in its Statement of Defence, proposes a definiƟon by referring to the descripƟon of the patent in quesƟon [0018], arguing that, in view of the single embodiment proposed in EP’858: -All claimed tread features (the sipes and grooves of Claim 1) lie within a single tread element. -The “alternaƟng arrangement” of the lateral grooves according to feature 7 of Claim 1 may comprise only one submerged lateral groove on the leŌ side (of the longitudinal groove) that is offset (even very slightly) from one submerged lateral groove on the right side. -All sipes within the tread element, in parƟcular the longitudinal sipe, have an “alternaƟng path” (in the example, a zig-zag shape) and extend in depth from the top surface to the submerged grooves, thereby interlocking both sides of the longitudinal sipe and maintaining a single tread element. 49. To support the proposed definiƟon, GOODYEAR illustrates it with the following figure extracted from the patent (Fig 1. EP’858), to which the Defendant has added arrows and colours, explaining that: “this interlocking configuraƟon allows the two sub-elements shown above in blue and red to sƟck together and behave as a single tread element” (SoD, §79 and §80), as follows: 14 50. GOODYEAR adds that this interpretaƟon is consistent with the picture annotated by the Claimant for presenƟng the accused products, in its SoC, §25: 51. However, the Court is of the view, as MICHELIN argues in its Reply to SoD, that this interpretaƟon proposed by the Defendants is not supported by the wording of Claim 1. Indeed, Claim 1 cannot be limited to one specific embodiment. According to Claim 1, Ɵre treads include tread elements. These tread elements are, for example, ribs or lugs (paragraph [0002] of EP’858): Ɵre treads may also include tread elements, such as ribs or lugs, and tread features, such as grooves and sipes, each of which may assist in providing target Ɵre performance when a Ɵre is operaƟng under parƟcular condiƟons. 52. In parƟcular, paragraph [0019] of EP’858 is clear on what a tread element is, according to Claim 1 of the patent in suit: “In one embodiment, as shown in FIGS. 1-5, tread elements 12 may comprise one or more intermediate tread elements 12a, each of which are generally located between a pair of shoulder tread elements 12b. Shoulder elements 12b are generally located along the sides of tread 10. MulƟple tread elements 12 are separated by longitudinal grooves 14. […]” 53. MICHELIN has rightly illustrated what a tread element is according to Claim 1, with their annotaƟons on Fig. 1 above, showing that there can be one or several tread elements: the tread elements are separated by wide open grooves (reference 14 coloured blue on Fig. 1 of EP’858 reproduced above, Reply to SoD, §54): 54. This interpretaƟon of the “tread element” is in line with what is menƟoned in independent Claim 1. 15 -In Claim 13, “the spacing between lateral sipes” 55. The ParƟes disagree on the measurement method regarding the “spacing between lateral sipes” as menƟoned in Claim 13 of the Patent. 56. GOODYEAR refers to [0024] of the Patent (SoD, §519) to argue that the proper measurement method as disclosed in Claim 13 is the spacing measured along the same side of the longitudinal groove. 57. MICHELIN affirms that the distances to be taken into account are between two consecuƟve lateral sipes or grooves on either side of the tread element (SoC, § 177). 58. The Court notes that EP’858 does not explicitly state how to measure the concerned spacing. As MICHELIN rightly points out (Reply to SoD, §461), [0024] of the Patent specifies how to measure the distance between the longitudinal grooves, but does not indicate how to measure the distance between two lateral sipes, contrary to what GOODYEAR claims: (Reply to the SoD, §495): “the first sentence (of the [0024]) specifies the way the measurement is performed since it differs from what the person skilled in the art would implement in the context of the invenƟon. Indeed, the invenƟon is about an “offset” between the lateral grooves on the leŌ side of the longitudinal submerged groove and the lateral grooves on the right side of the longitudinal submerged groove. Therefore, the offset is applied on grooves that are not on the same side of the longitudinal submerged grooves. Therefore, if the skilled person had to measure the space between two lateral grooves, he would inevitably choose two consecuƟve lateral grooves on either side of the longitudinal submerged groove. This is why the specific measurement of the first sentence had to be specified, whereas in the second sentence, no specific measurement needs to be specified to measure two consecuƟve lateral sipes on either side of the longitudinal submerged groove.” 59. It is therefore logical to adopt the method that a person skilled in the art would use in the context of this patent, namely, measuring the distance between two consecuƟve lateral sipes on either side of the longitudinal submerged groove. III. Probative value of the “expert’s affidavit” 60. MICHELIN provides an ‘expert’s affidavit” from Dr Poulbot in support of its SoC (Exhibit AD 3.2). 61. GOODYEAR argues that Dr Poulbot is not an expert independent from the parƟes. According to the Defendant, her wriƩen statement fails to comply with R. 181(2) RoP and should be dismissed (SoD, §182). 62. In response, GOODYEAR provides an “expert’s affidavit” from Mr. van Tuijl, a former GOODYEAR employee, who is currently reƟred (Exhibit G034). 16 63. The arguments between the parƟes regarding the probaƟve value of these “wriƩen expert statements” are no longer relevant, since at the hearing MICHELIN’s representaƟve admiƩed that Dr Poulbot, as an employee of MICHELIN, was in fact expressing as a “declarant”, and not an expert. 64. The Court is of the opinion that Dr Poulbot’s statement is a “witness affidavit” and not an expert’s statement. On GOODYEAR’s side, Mr Van Tuijl, who stated that he had also spent his enƟre career working for GOODYEAR, will likewise be regarded by the Court as a witness. 65. Although these two wriƩen statements do not carry the probaƟve value of an independent and objecƟve expert, the Court considers them to be valuable technical informaƟon provided by persons involved in the development of vehicle Ɵre design at the Ɵme of the granƟng of the patent in suit. IV. Validity Number of the validity aƩacks 66. GOODYEAR contends that the claims of EP’858 either lack novelty or invenƟve step, or both (SoD p. 28-100). 67. MICHELIN, in its reply to SoD and defence to counterclaim, argues that the number of validity aƩacks opposed by GOODYEAR is excessive and unmanageable (see secƟon 2.1 of its Rejoinder). The Claimant argues that the Defendants raised 36 nullity aƩacks. 68. At the interim conference (IC), the judge rapporteur considered asking the Defendants for a ranking list of their validity aƩacks, in accordance with the Milan CD decision of 23 October 2025 (UPC CFI 497/2024, Labrador v. Biomérieux). 69. On 16 February 2026, GOODYEAR provided a brief with a selecƟon of the main documents relevant to their validity aƩacks (see the procedural order following the IC pursuant to R.105.5 RoP of 20 February 2026). 70. The panel therefore understands that, according to the Defendants, the prior art documents deemed most relevant for establishing lack of novelty and lack of invenƟve step are as follows: o Kunugi (G035, novelty/starƟng point for invenƟve step), o Riches 1 (G038, novelty/starƟng point for invenƟve step), o Riches 2 (G053, starƟng point for invenƟve step). 71. It is therefore in this order that the panel will examine the validity aƩacks raised in the counterclaim according to the ranking made by GOODYEAR. 17 A- Novelty (Art. 54 EPC) of Claim 1 Legal framework 72. Pursuant to Art. 54 and Art. 138(1)(a) EPC, a European patent may be revoked if it lacks novelty. An invenƟon is considered new if it does not form part of the state of the art. The assessment of novelty within the meaning of Art. 54(1) EPC requires an examinaƟon of the enƟre content of the prior publicaƟon. The decisive factor is whether the subject-maƩer of the patent at issue, with all its features, is directly and unambiguously disclosed in the prior art (CoA, UPC CoA 182/2024, 25 September 2024, Mammut v. Ortovox, §123). 73. When assessing the novelty, the UPC court must take into account the following elements: (CD Paris, UPC CFI 202/2024, 29 May 2025, Lindal v. Rocep): “62. It must be borne in mind that, for the purpose of the applicaƟon of ArƟcle 54 (1) ‘EPC’, an invenƟon is to be considered part of the state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is idenƟcal in its consƟtuƟve elements, in the same form, with the same arrangement and the same features (see Munich LD, decision issued on 31 July 2024, UPC CFI 233/2023). 63. This issue is to be addressed from the vantage point of the noƟonal skilled person, taking into account this person’s common general knowledge at the publicaƟon date of the cited document in the case of prior art cited under ArƟcle 54 (2) ‘EPC’ (see Düsseldorf LD, decision issued on 28 January 2025, UPC CFI 355/2023).” 74. Thus, the claimed invenƟon is for the skilled person directly and unambiguously derivable from a single prior art disclosure, using common general knowledge. However, the same technical effect is not required in the case of a product invenƟon defined by structural technical features only, which covers a product considered in its own right, independently of any technical result or effect. Novelty over KUNUGI (G035) 75. KUNUGI is a Japanese patent (JP 2001/063323) enƟtled “PneumaƟc Tyre” and published on 13 March 2001, before the filing date of EP’858. (Exhibit G035; Exhibit AD 3.01bis) 76. The descripƟon of KUNUGI provides these elements: [0001] “The present invenƟon relates to a pneumaƟc tyre, and more specifically to a pneu- maƟc tyre with reduced air pumping noise.” [0006] “The problem to be solved by the present invenƟon is as follows: The object of the present invenƟon is to reduce air pumping noise by prevenƟng the air in the grooves from being compressed when the tyre comes into contact with the ground, which is one of the causes of the increase in air pumping noise described above.” [0011] regarding “Embodiment of the invenƟon” indicates: “The present invenƟon will be described below with reference to the drawings.” 18 [0012] “Figure 1 is a cross-secƟonal perspecƟve view illustraƟng an example of the tread part of a pneumaƟc tyre according to one embodiment of the present invenƟon. The pneu- maƟc tyre according to an embodiment of the present invenƟon comprises a sipe 4 such as that illustrated in Fig.1 in at least one rib 2 of a plurality of ribs 2 which consƟtute a tread 1. The sipe 4 consists of a sipe 4a in a circumferenƟal direcƟon of the tyre and a sipe 4b which connects the sipe 4a to a groove. The boƩom part of the sipe 4 has the bulge F, and the bulges F of the sipes 4a and 4b are connected at the same height. However, it goes without saying that other porƟons of the bulges F than the connected porƟon can be ar- ranged at shallower or deeper heights.” [0013] “The sipe 4b which connects to the grooves may be arranged linearly between one groove 3 and the other groove 3 that sandwich the rib 2, or may be arranged inde- pendently, at any posiƟons on each side of the sipe 4a in the circumferenƟal direcƟon. In addiƟon, if the grooves in the circumferenƟal direcƟon are bent, the sipes 4a in the cir- cumferenƟal direcƟon are preferably arranged parallel to the bent grooves.” 77. Claim 1 of KUNUGI discloses: “A pneumaƟc tyre with a paƩern comprising ribs extending in the circumferenƟal direcƟon of the tyre, wherein at least one rib is provided with a sipe in the circumferenƟal direcƟon of the tyre and a further sipe connecƟng the sipe to a groove, the sipe having a bulge at the boƩom porƟon with a secƟonal area S of 1mm2 ≤ S ≤ 28mm2.” 78. Fig. 1 of KUNUGI illustrates an embodiment as follows: -KUNUGI is a relevant prior art document 79. According to the Defendant, this is the most efficient novelty aƩack in its ranking list. GOODYEAR already opposed the lack of novelty over KUNUGI in its response to the cease- and-desist leƩer of 27 July 2024 from MICHELIN (Exhibits AD 1.7 and 1.8). 80. In response, MICHELIN contests the relevance of this prior art document in the assessment of the novelty, since KUNUGI aims to resolve the problem of the evacuaƟon of the air, which is a different problem than the “water drainage” dealt with by the patent in suit. 81. MICHELIN relies on the Affidavit from Dr Poulbot (which is not contradicted on this point by the statement from Mr van Tuijl submiƩed by GOODYEAR), indicaƟng that the technical problem differs between the patent in quesƟon and the prior art document KUNUGI, which was intended to solve a problem relaƟng to the “air extracƟon, not water drainage” (English translaƟon, Exhibit AD 3.02). 19 82. MICHELIN relies on Dr Poulbot’s statement to argue that KUNUGI is not a relevant prior art document for challenging the validity of the patent in quesƟon, however this fails to convince the Court, since KUNUGI is the only prior art document cited in the patent to describe the state of the art. 83. According to the Claimant, the Court cannot be bound by an asserƟon made by the patent applicant or the EPO examiner (even if the asserƟon finds its way into the descripƟon) (Reply to SoD, §102,). The Court notes that even though the reference to this document was added at the request of the EPO examiner during the grant phase, it has not been demonstrated that the laƩer objected to the such reference being added. Not only is this prior art document cited, but it is also expressly menƟoned in the paragraph [0005]: [0005] “Document JP2001063323 discloses a Ɵre tread according to the preamble of claim 1. Therefore, there is a need for a Ɵre tread that provides increased void performance at worn stages, especially in the central or intermediate porƟons of the tread width, without sacrificing Ɵre performance.” 84. For these reasons, it has been sufficiently demonstrated that KUNUGI consƟtutes a relevant prior art document for the assessment of the novelty of the structural technical features of claim 1 of the patent in quesƟon, regardless of the technical effect described in the prior art document. 85. As stated above, the technical effect of the prior art is not relevant in the case of a product invenƟon. -Discussion on the lack of novelty over KUNUGI 86. According to GOODYEAR, the configuraƟon of Fig. 1 of KUNUGI contains each and every feature of Claim 1 EP’858 (SoD p. 29-47). 87. In the SoD, the anƟcipaƟon of Claim 1 by KUNUGI is summarised in the table below (SoD, §143): 20 88. According to MICHELIN, KUNUGI cannot destroy the novelty of EP’858 for the following main reasons: 1) KUNUGI deals with a different technical problem. 2) KUNUGI’s bulges would not have the capacity to drain water. 3) In KUNUGI, the bulges would never appear at the surface of the tread. 4) KUNUGI would not disclose an alternaƟng arrangement of lateral grooves. 89. The Court notes that MICHELIN’s arguments suggest that features 1 to 6 (i.e. the preamble to Claim 1 of the patent in suit) are not disclosed by KUNUGI, are contradicted by paragraph [0005] of the Patent itself, which expressly states that the enƟre preamble had already been disclosed by KUNUGI. 21 90. Moreover, the Court finds that MICHELIN’s arguments 1 to 3 are not related to aspects that are menƟoned in the claims of the patent in suit. In accordance with the principles of patent interpretaƟon laid down in Art. 69 EPC and UPC case law (UPC CoA 335/2023, NanoString v. 10x Genomics), the wording of the claims is the key element when assessing the novelty, and in Claim 1 of EP 538, the features recite a tread structure, having sipes with submerged grooves. There are no funcƟonal or physical elements in the claim relaƟng to air pumping vs water drainage, water drainage capacity, or groove depth. 91. It follows that the only serious argument to be considered concerns the presence of feature 7 of Claim 1 in the KUNUGI document (i.e. MICHELIN’s argument 4). For the sake of completeness, the Court will nevertheless examine all the main arguments put forward by MICHELIN in its defence to the Counterclaim for revocaƟon (i.e. MICHELIN’s arguments 1 to 4). 1st argument from MICHELIN: KUNUGI deals with a different problem (reducing air-pumping noise) 92. This argument does not stand up to the fact that KUNUGI is the only prior art cited in the patent, which states that it discloses the enƟre preamble of the main claim of EP’858; it should be borne in mind that the patent specificaƟon is its own dicƟonary. 93. Furthermore, this argument has already been dismissed in the secƟon concerning the relevance of KUNUGI for assessing novelty. In accordance with the principles of patent interpretaƟon laid down in Art. 69 EPC and UPC case law (UPC CoA 335/2023, NanoString v. 10x Genomics), the wording of the claims is the key element when assessing the novelty. 94. In the present case, in Claim 1 of EP 538, the features recite a tread structure, having sipes with submerged grooves. There are no funcƟonal or physical elements in the claim (e.g., dimensions) that express water channelling or change in Contact Surface RaƟo (“CSR”). Even in its descripƟon, EP’858 does not place a requirement on how much the capability of water channelling should be. Thus, the Court shall consider a structure of sipes with submerged channels, with channels having a larger dimension than the sipes. It is not disputed that in KUNUGI the “bulges “(as “the grooves” in EP’858) are larger than the sipes. 95. As another UPC LD has already noted, in such a case, the intended technical effect (see the Munich decision cited below) is irrelevant when assessing the novelty. It is sufficient to verify whether all the features disclosed in the claim of the patent in quesƟon are found in their enƟrety in a single prior art document. “Given the purpose specified in the claim, the only relevant factor for the novelty test is whether a device with the spatial physical characteristics as required by the contested patent for the valve actuating device is already disclosed in the prior art (Article 54(1) EPC). If this is the case, the device is disclosed ‘as such’, regardless of its intended use. The only exception to this is if the device disclosed as such with all its spatial and physical features is unsuitable for the intended purpose of the contested patent or requires modification in order to be used for this purpose.” (LD Munich, 22 August 2025, UPC CFI 248/2024, Brita v. Aquashield)2 2 For the sake of clarity, certain terms have been highlighted by the Court using bold font. 22 96. Furthermore, the Defendants have sufficiently demonstrated that, upon reading KUNUGI, a person skilled in the art will understand that the invenƟon described in the cited prior art is capable of draining water, as set out in the response to the second argument in MICHELIN’s defence. 2nd argument from MICHELIN: KUNUGI’s bulges would not have the capacity to drain water 97. MICHELIN’s argument that the ‘bulges’ in KUNUGI cannot have the same technical effect as the ‘grooves’ in EP’858 – that is to say, that they are not capable of draining water – is essenƟally based on Dr Poublot’s statement. However, the Court does not find this argument convincing, since, first of all, EP’858 does not indicate the required width of the ‘grooves’. Furthermore, KUNUGI states in its general teaching in [0007] that the width of the “bulges” can be up to 28mm2, and it is clear from Mr Tuil’s statement that this dimension is sufficient for water drainage. It is confirmed by the general literature known to a skilled person in the concerned field that the choice of the tread paƩern has a similar effect on “water drainage” as on “air extracƟon”. “Thus, in order to reduce noise generated by air pumping and pipe resonances, the de- signer must take all precauƟons to avoid closed pockets, caviƟes with narrow outlets and long grooves without venƟlated side branches. Fortunately, this requirement is totally in line also with good water drainage properƟes of the tyre tread. Fig. 10.32 shows two rel- aƟvely similar tread.” (Exhibit G016, on Ɵre noise reference book published in 2002, p. 226-227, [last § p.226]) 98. The Court notes that no minimum volumetric void is described or even discussed in EP’858. The Patent merely notes that [0017] states that: “the amount of volumetric void is also considered and analysed, as this void may be desirable for channel water in wet or off-road condiƟons”. 99. To conclude, the Court has taken due consideraƟon to the declaraƟons of Mrs. Poulbot and Mr. Van Tuijl on behalf of MICHELIN and GOODYEAR respecƟvely and understands from both these declaraƟons that from a technical perspecƟve, the capability of water channelling decreases with decreasing width of the channels. It appears from the professional literature put forward by GOODYEAR that in pracƟce, even a smaller width groove in a Ɵre profile, e.g. one that is provided for reducƟon of sound, can contribute to water channelling (see ‘Mechanics of PneumaƟc Ɵres, G015 page 338, Fig. 5.104 and ‘Tyre road noise reference book’ G16, page 226). 3rd argument from MICHELIN: the bulges would never appear at the surface of the tread 100. According to MICHELIN (SoC, §119), in KUNUGI, the bulges are not configured to be exposed, referring to [0017] of the prior document that indicates that cross-secƟonal S is chosen such that the bulge remains open, and the sipe above it is closed. They conclude that the bulge is not intended to be exposed to the surface of the Ɵre, and they also refer to Dr Poulbot’s statement as follows (Exhibit AD 3.2): 23 “Je comprends donc qu’il est préférable, selon KUNUGI, que la surface d’usure n’aƩeigne jamais le renflement, c’est-à-dire que le renflement reste fermé et qu’il remplit sa foncƟon d’évacuaƟon d’air à tout le stade d’usure du pneu.” 101. However, GOODYEAR (SoD, § 207–214) rightly points out that this interpretaƟon of KUNUGI is in clear contradicƟon with what KUNUGI sets out in paragraphs 23 and 15, namely a bulge whose boƩom lies at the same level as the slip signs (adverse translaƟon Exhibit AD 3.01bis): “The tyre was with the size of 11R22.5 14 P R, and with 4-groove rib paƩern. The sipes were formed in a rib posiƟoned at the centre of the width direcƟon of the tread, the sipe’s thickness T was 0.7mm, and the posiƟon of the boƩom of the sipe’s bulge was 1.6mm from the boƩom of the groove.” ([0023], emphasis added) (…) slip sign provided in the main groove (sign provided at six or more locaƟons in the circumferenƟal direcƟon of the tyre, raised 1.6 mm above the boƩom of the groove).” ([0015]) 102. The Defendants conclude that the bulge extends above the slip signs. It is therefore technically impossible to have, among the Ɵre examples exposed in Table 1 of KUNUGI, a Ɵre tread in which the bulge would be designed to stay submerged unƟl the maximum wear of the Ɵre, without being exposed at the surface of the tread. This conclusion is borne out by what is stated in Mr Van Tuijl’s affidavit. (G034, point 37): 103. Furthermore, MICHELIN adds arguments concerning tread depth and presents calculaƟon suggesƟons, considering 21mm as the tread depth for KUNUGI versus 15mm for EP’858 (Exhibit AD 3-5), but the Court notes that first, thread depth is not actually a claim element in the patent in suit and second, as GOODYEAR has pointed out, these measures are merely assumpƟons that have not been substanƟated by the Patent or the prior art document at hand. 104. According to the Court, it is clear that in KUNUGI, the descripƟon does menƟon that the slip mark should be posiƟoned such relaƟve to the bulge (submerged longitudinal groove) that it would become exposed during the last stages of normal use and would provide the structure claimed in Claim 1. 24 4th argument from MICHELIN: KUNUGI would not disclose an alternaƟng arrangement of lateral grooves 105. This argument put forward by MICHELIN is, in the Court’s view, the most serious as it relates to the “characterising part” of the patent, i.e. feature 7 of Claim 1. 106. As MICHELIN clearly indicated in its SoC, (§75), feature 7 discloses a “submerged lateral grooves and their corresponding lateral sipes from one side of the submerged longitudinal groove are offset from the submerged lateral grooves and their corresponding lateral sipes from the other side of the submerged longitudinal groove to form a longitudinally alternaƟng arrangement of lateral grooves.” 107. This “offset” or “alternaƟng arrangement” is illustrated in Fig. 3 of the Patent as coloured by MICHELIN: 108. According to MICHELIN (SoC, §106-115), it is difficult to read that Fig.1 of KUNUGI would disclose alternaƟng 4b sipes. Moreover, KUNUGI does not contain any clear teaching – other than that in paragraph [0019], which concerns the number of sipes 4b, in relaƟon to the contact surface of the Ɵre, and in paragraph [0013], which indicates that the posiƟon of the sipes 4b can be set arbitrarily: [0013] The sipe 4b which connects to the grooves may be arranged linearly between one groove 3 and the other groove 3 that sandwich the rib 2, or may be arranged inde- pendently, at any posiƟons on each side of the sipe 4a in the circumferenƟal direcƟon. In addiƟon, if the grooves in the circumferenƟal direcƟon are bent, the sipes 4a in the cir- cumferenƟal direcƟon are preferably arranged parallel to the bent grooves. 109. MICHELIN draws upon the statement from Dr Poulbot in points 31 and 33: “31. J’en viens maintenant à la posiƟon des entailles 4b. Le paragraphe [0013] du docu- ment KUNUGI me paraît être le seul paragraphe de la descripƟon qui indique comment posiƟonner les entailles 4b (le nombre d’entailles est menƟonné au paragraphe [0019]). Il est d’abord suggéré que les entailles 4b entre deux rainures 3 peuvent être alignées, ce qui est contraire à l’enseignement du brevet EP’838 s’agissant de la rigidité. Le seul autre en- seignement technique concerne le posiƟonnement des entailles latérales 4b par rapport à l’entaille longitudinale 4a : il est indiqué que la posiƟon des entailles 4b de part et d’autre de l’entaille 4a est arbitraire : il me semble clair pour la personne du méƟer que la circula- Ɵon d’air n’est pas affectée par la posiƟon des entailles 4b de part et d’autre de l’entaille 4a. Il n’y a aucune suggesƟon ni indicaƟon à ce stade sur la rigidité. […] 25 33. […] Je ne trouve donc pas dans le document KUNUGI un enseignement correspondant à celui du brevet EP’858, ni sur l’évacuaƟon de l’eau, ni sur l’ouverture et l’exposiƟon de rainures noyées après usure d’une première couche de la bande de roulement, ni sur l’al- ternance des entailles transversales 4b. ” 110. According to GOODYEAR, Fig. 1 of KUNUGI is clear enough and self-sufficient to disclose feature 7 of Claim 1 (SoD, §215-223). Defendants refer to [0013] of KUNUGI’s patent (Exhibit AD 3.01bis): “The sipe 4b which connects to the grooves may be arranged linearly between one groove 3 and the other groove 3 that sandwich the rib 2, or may be arranged independently, at any posiƟons on each side of the sipe 4a in the circumferenƟal direcƟon.” 111. This sentence defines two possible configuraƟons: 1) The sipe 4b “which connects to the grooves may be arranged linearly between one groove 3 and the other groove 3 that sandwich the rib 2”, meaning that the lateral sipes 4b and corresponding submerged groove F cross the rib 2 from a first side longitudinal groove 3 to the other side longitudinal groove 3. This first configuraƟon is illustrated in Fig. 2 of KUNUGI and is not the one relevant for the anƟcipaƟon of Claim 1 of EP’858. 2) The sipes 4b “may be arranged independently, at any posiƟons on each side of the sipe 4a in the circumferenƟal direcƟon”, meaning that in contrast with the first configuraƟon, the sipes 4b on one side of the longitudinal sipe 4a are not aligned with the sipes 4b on the opposite side (otherwise, the second configuraƟon would be the same as the first configuraƟon). This is all the truer that claim 1 merely requires that two lateral grooves be offset arranged and arranged on one side and the other side. 112. The Defendants contend that the second configuraƟon is illustrated by Fig. 1 of KUNUGI, as it is shown in the Figure coloured and annotated by the Defendants (SoD, §129): 113. Defendants explain that in Fig. 1, the longitudinal pitching distance “P” between two sipes 4b indicated on the leŌ side of the longitudinal sipe 4a appears to be equal to the one used on the right side of sipe 4a, which leads to an alternaƟng arrangement of the lateral sipes 4b and of the corresponding lateral bulges F. 114. GOODYEAR adds that this is also Mr van Tuijl’s understanding of the disclosure of KUNUGI (G034, points 22, 39). 26 115. The Court finds that, on Fig. 1 of KUNUGI, sipes 4a and sipes 4b are not in line; they are obviously shiŌed. 116. Contrary to MICHELIN’s argument, this is the amount of spacing, which is arbitrary and not the alternate arrangement. The passage regarding the ‘arbitrary’ placement of the lateral bulges only means that when the lateral channels are not axially aligned (as shown in Fig. 1), they can start at an arbitrary axial posiƟon on the longitudinal groove relaƟve to each other. This is not in contradicƟon with the drawing but rather in line with it. The drawing thus confirms the fixed offset with the arrows P. 117. This is confirmed in [0012] and [0013] of KUNUGI’s descripƟon3: [0012] “Figure 1 is a cross-secƟonal perspecƟve view illustraƟng an example of the tread part of a pneumaƟc tyre according to one embodiment of the present invenƟon. The pneu- maƟc tyre according to an embodiment of the present invenƟon comprises a sipe 4 such as that illustrated in Fig.1 in at least one rib 2 of a plurality of ribs 2 which consƟtute a tread 1. The sipe 4 consists of a sipe 4a in a circumferenƟal direcƟon of the tyre and a sipe 4b which connecƟng the sipe 4a to a groove. The boƩom part of the sipe 4 has the bulge F, and the bulges F of the sipes 4a and 4b are connected at the same height. However, it goes without saying that other porƟons of the bulges F than the connected porƟon can be arranged at shallower or deeper heights.” [0013] “The sipe 4b which connects to the grooves may be arranged linearly between one groove 3 and the other groove 3 that sandwich the rib 2, or may be arranged inde- pendently, at any posiƟons on each side of the sipe 4a in the circumferenƟal direcƟon. In addiƟon, if the grooves in the circumferenƟal direcƟon are bent, the sipes 4a in the cir- cumferenƟal direcƟon are preferably arranged parallel to the bent grooves.” 118. Therefore, it is demonstrated that the “alternaƟng arrangement of lateral grooves”, as disclosed in feature 7 of Claim 1 in EP’858, can clearly be found in KUNUGI. 5th argument from MICHELIN: the relevant features would not be disclosed in one embodiment 119. MICHELIN argues that all the features of Claim 1 are not disclosed in one embodiment, which is not in line with the UPC caselaw on the assessment of novelty and not in line with the case law of the EPO Board of Appeal (Reply to SoD, §11: It is not permissible to combine separate items of prior art together. It is also not permissible to combine separate items belonging to different embodiments described in one and the same document, unless such combinaƟon has specifically been suggested (T 305/87)). 120. On the contrary, the Court notes that only Fig.1 of KUNUGI, which is the main embodiment of KUNUGI’s publicaƟon and two paragraphs in the descripƟon (meaning [0012]and [0013]), are needed to disclose the enƟre invenƟon taught in Claim 1 of the Patent in suit. 3 For the sake of clarity, certain terms have been highlighted by the Court using bold font. 27 121. Fig.1 and the accompanying paragraphs 12 and 13 of KUNUGI disclose a structure of sipes and bulges that reads onto the claim. The lateral dimension of the bulges is larger than the sipes. The bulges, as shown in Fig. 1, undeniably have a capability for water channelling and a change in CSR. This is a single embodiment of a single disclosure, having the elements recited in the claim. Thus, the Court considers the “bulges” as claimed in KUNUGI idenƟcal to the “submerged grooves” in EP’858, and the “circumferenƟal bulge” in KUNUGI idenƟcal to a “longitudinal groove” in EP’858. 122. The disclosure of KUNUGI, regarding the Fig. 1 embodiment, is clear in itself and is clarified further as the same elements are discussed in more detail in other parts of the descripƟon in a consistent way, as has been demonstrated in the above-menƟoned § of the present decision. 123. To conclude, the Court considers that Claim 1 of EP’858 is not novel since this Claim is disclosed directly and unambiguously with all its features in KUNUGI and is not novel over KUNUGI. B- Validity of the dependent claims 124. GOODYEAR argues that all dependent Claims (2 to 14) are invalid as follows: -Claims 2 and 3 lack invenƟve step over KUNUGI and other prior art documents and lack novelty over Riches 1 (SoD, secƟons 3.2.1-3.2.2). - Claims 4, 5 and 6 lack novelty over KUNUGI, RICHES 1 and TANABE (SoD, secƟon 3.2.3) and lack invenƟve step over Riches 2 and other prior art documents. -Claim 7 lacks novelty over KUNUGI and RICHES 1 and lacks invenƟve step over other prior documents (SoD, secƟon 3.2.4.1 et secƟon 3.2.4.2). -Claims 8 and 9 lack invenƟve step over KUNUGI, RICHES 2 and over other prior documents (SoD, secƟon 3.2.5). - Claim 10 lacks invenƟve step RICHES 2 and over other prior documents (SoD, secƟon 3.2.6). - Claim 11 lacks invenƟve step over KUNUGI, RICHES 1 over other prior documents (SoD, secƟon 3.2.7). -Claims 12, 13 and 14 lack invenƟve step over KUNUGI, RICHES 1 and over other prior documents (SoD, secƟon 3.2.8). 125. In response, MICHELIN merely states that these claims are dependent on Claim 1 (Reply to Statement of Defence, secƟon 2.4.5) and that, since Claim 1 is valid, the dependent claims are therefore also valid. 126. The Court notes that MICHELIN provides no substanƟated arguments to explain why the dependent claims might be novel and invenƟve themselves. Since the Court finds the independent Claim 1 not valid, MICHELIN fails to demonstrate that the dependent claims would be valid if Claim 1 were not valid. 28 V. Auxiliary requests 127. In their defence to the counterclaim, MICHELIN sought an amendment to the patent in suit with 14 auxiliary requests (Reply to SoD of 13 August 2025, secƟon 3). This applicaƟon is condiƟonal according to R. 30.1 c) RoP. “Reasonable number “(R.30.1 (c) RoP) 128. In its Reply to the defence to the counterclaim (Statement of 13 October 2025, secƟon 3), GOODYEAR raised the quesƟon of a “reasonable number” of the auxiliary requests proposed by MICHELIN. 129. During the Interim conference (IC), the judge-rapporteur asked MICHELIN to reduce the number of the auxiliary requests to a “reasonable” number according to R.30.1 (c) RoP. In their brief filed further to the IC of 16 February 2026, MICHELIN replied to the judge- rapporteur’s brief on 16 February 2026 with some proposiƟons, as is menƟoned in the order following the IC (R.105.5 RoP). The judge-rapporteur took these proposiƟons into account in the organisaƟon of the oral hearing, and decided to postpone the decision on this quesƟon to the decision on the merits. 130. The panel notes that the Claimant presents all the auxiliary requests in a table (Reply to the SoD, §365) as follows: 131. In this table the various combinaƟons are categorised according to five addiƟonal features, and the parƟes’ ensuing discussions focused on this summarised presentaƟon. Therefore, the panel considers that the number of auxiliary requests presented in this case is reasonable, as it is ‘manageable’ by the Court. Admissibility and relevance of the auxiliary requests for overcoming the invalidity of EP’858 as granted (AR1 to AR14) 132. GOODYEAR challenges the admissibility of the auxiliary requests proposed by the Claimant on the grounds of added maƩer and clarity (Rejoinder of 13 October 2025, secƟon 3.1) as follows: Features 1 and 2: added maƩer, (in the event that MICHELIN’s incorrect narrow interpre- taƟon was adopted) would not be supported by the applicaƟon as filed (WO 276 descrip- Ɵon of EP’858) Feature 3: added maƩer Feature 5: added maƩer and lack of clarity 29 133. All the addiƟonal features have been summarised in table §861 and comments §862 of the Rejoinder, as follows: §862 Hence, the auxiliary requests in red AR3, AR5, AR7, AR8, AR9, AR11, AR13 and AR14 are invalid regardless of the adopted interpretaƟon. Auxiliary requests in yellow AR1, AR2, AR4, AR6 and AR12 are invalid if Michelin’s narrow interpretaƟon of F1/F2 and F5 is adopted. 134. In the claim interpretaƟon, the Court adopted the interpretaƟon supported by MICHELIN (§51-54 of the present decision). Therefore, the inadmissibility issue is raised by GOODYEAR for all the auxiliary requests, except AR10. - F1: “said submerged longitudinal groove and said one or more submerged lateral grooves are configured to channel water when exposed” 135. This addiƟonal feature fails to improve the lack of novelty over KUNUGI of EP’858 since it has no technical effect. GOODYEAR rightly argues that it is irrelevant that the submerged grooves of KUNGI are not primarily designed or intended for water channelling when exposed, as long as they are suitable for water channelling when exposed (Rejoinder of 13 October 2025, §741). - F2: “said submerged longitudinal groove and said one or more submerged lateral grooves pro- vide addiƟonal surface void and addiƟonal volumetric void when exposed” 136. The Court notes that F2 fails to improve the lack of novelty over KUNUGI of EP’858 since it has no technical effect. In this addiƟonal feature, no value for a minimum surface void or volumetric void is specified. The skilled person knows that water drainage capacity is increased with larger grooves (§99 of the present decision referring to Exhibit G015). F2 is not limiƟng Claim 1 and has no impact on the novelty maƩer (GOODYEAR’s Rejoinder, secƟon 3.1.2). -F3: “a height H20 of the submerged longitudinal groove (20) is between 100% of and 200% of said depth Do20” 137. As GOODYEAR states, this addiƟonal feature is not admissible on added maƩer since it lacks support in the applicaƟon as filed, meaning WO 276 (Exhibit G018) (Rejoinder of 13 October 2025, secƟon 3.1.3.1). In the iniƟal applicaƟon, it is menƟoned in [0020]: “Longitudinal groove 20 also includes a height H20. Height H20 may extend any desired distance. In particular embodiments, height H20 may be equal to or greater than 20% of Do20. In other embodiments, height H20 is equal to or greater than 2 mm. Height H20 may also extend a maximum distance equal to 400% of distance Do20, and in particular embodiments, equal to 200% of Do20, and in still other embodiments, 100% of Do20.” 30 138. MICHELIN failed to demonstrate that WO 276 teaches the height range of H20 as claimed in F3. 139. Therefore, F3 is not admissible on the grounds of added maƩer. -F4: “said submerged longitudinal groove extends along the full length of the tread element to form a circumferenƟal groove” 140. This feature is present in KUNUGI, which discloses the ribs having circumferenƟally- extending sipe 4a ending with “bulge” as menƟoned above in the presentaƟon of this prior art document in the present decision. 141. Therefore, F4 does not change the lack of novelty of Claim 2 of EP’858. - F5: “the spacing between each of the one or more lateral sipes is between 5 and 20mm” 142. According to GOODYEAR, F5 lacks support in the applicaƟon as filed (Rejoinder, secƟon 3.1.5.1). MICHELIN argues (Defence to counterclaim, secƟon 3.6.1) that this addiƟonal feature is supported by Claim 13. 143. GOODYEAR argues, in line with its reasoning on the validity of Claim 13, that this addiƟonal feature does not describe any technical effect aƩached to (SoD, §445 and §446: “these addiƟonal features cannot involve any invenƟve step over the teachings that already anƟcipate claim 1 or render its subject-maƩer obvious. Therefore, claim (..)13 (..) lacks invenƟve step over, at least, document Kunugi (G035))”. 144. The Court considers that the selecƟon of this specific spacing distance is merely arbitrary. Nothing in the descripƟon of the patent in suit explains this selecƟon; it is only menƟoned in one of the embodiments in [0024] amongst other embodiments with different distance spacing without further informaƟon. See §213 and §214 of GOODYEAR Rejoinder: « Increasing the density of lateral sipes (i.e., reducing the spacing between neighbouring lateral sipes) does not have any effect on the density of lateral grooves and on the water channelling capacity. This is another arƟficial story made up by Michelin. Consequently, none of the Auxiliary Requests can draw any invenƟve step or synergisƟc effect from the incorporaƟon of feature F5. “ 31 145. According to MICHELIN’s reasoning (Michelin Reply to the SoD, 13 August 2025, §408), this distance is not arbitrary but should be selected because the person skilled in the art would also easily understand that the quesƟon of the spacing of each lateral sipe is directly related to the objecƟve of the invenƟon, which is to enhance Ɵre performance on wet roads. Indeed, having the distance provided by feature 5 between each lateral sipe ensures a good density of lateral grooves, which enables beƩer water evacuaƟon while maintaining the sƟffness of the tread. However, in this case, the Court notes that the spacing distance would have been obtained as a result of a simple rouƟne test that would not require any ‘invenƟve step’ on the part of a person skilled in the art, given the KUNUGI document. Indeed, this prior art document, which is the only document cited in EP’858, and for the reasons set out in §84 of the present decision, consƟtutes a realisƟc starƟng point for the step invenƟve assessment. ParƟcularly, the Court notes that the KUNUGI document was accepted as a starƟng point in examinaƟon because it has many technical features in common with the Patent in suit. It has not been substanƟated in the patent specificaƟon nor elsewhere why or how this parƟcular spacing range would be ‘beƩer’, consequently it may be considered arbitrary and thus not invenƟve– even if starƟng from KUNUGI, the spacing would be directed to noise rather than water drainage. 146. The features of F5 therefore cannot provide invenƟve step over KUNUGI. 147. For these reasons, none of the addiƟonal features combined in the AR 1 to 14 proposed by the Claimant to amend its patent is valid. MICHELIN is therefore dismissed in the applicaƟon for amendments of patent EP 2 323 858 according to any of Auxiliary Requests 1 to 14. Conclusion 148. In light of the above, the European patent EP’858 is not valid, neither as granted, nor as amended by Auxiliary requests 1 to 14, and it must be enƟrely revoked in accordance with Art. 138(1) EPC and Art. 65(2) UPCA. 149. Consequently, the infringement acƟon brought by MICHELIN has no legal basis, and all related requests must be dismissed. 150. With regard to costs, both parƟes have requested separate proceedings. 151. Pursuant to R. 118. 5 RoP, the Court decides in principle that MICHELIN, as the unsuccessful party, is required to bear legal costs in accordance with Art. 69 UPCA. 32 For these reasons, the Court orders that: 1. The European patent EP’858 is enƟrely revoked with effect in the territories of the ContracƟng Member States for which the European patent had effect at the date of the counterclaim for revocaƟon, meaning in the territory of France, 2. The Registry shall send a copy of this decision to the European Patent Office and to the naƟonal patent office of any ContracƟng Member States concerned, in accordance with Art. 65(5) UPCA, once the deadline for appeal has passed, 3. All of MICHELIN's infringement claims based on the patent in suit are dismissed, 4. All related claims are dismissed, 5. MICHELIN is required to bear the legal costs of the proceedings in the acƟon UPC CFI 138/2025 and UPC CFI 522/2025. Issued in Paris, on 16 April 2026. Camille Lignières, Presiding judge & Judge-rapporteur Carine Gillet, Legally qualified judge Stefan Johansson, Legally qualified judge Bernard Ledeboer, Technically qualified judge ClerkStefan Erik Johansson Digitally signed by Stefan Erik Johansson Date: 2026.04.16 13:30:21 +02'00' 33 INFORMATION ON APPEAL An appeal against the present decision may be filed by any party which has been unsuccessful, in whole or in part, with its requests, within two months of noƟficaƟon of the decision at the Court of Appeal (ArƟcle 73 (1) UPCA, R. 220.1 (a) RoP, R.224.1 (a) RoP). INFORMATION ON ENFORCEMENT A cerƟfied copy of the enforceable decision will be issued by the Assistant Registrar at the request of the enforcing party (ArƟcle 82 UPCA, ArƟcle 37(2) UPCA, R. 118.8 RoP, R. 158.2 RoP, R. 354 RoP and R. 355.4 RoP). ORDER DETAILS Date: 16/04/2026 UPC number: UPC CFI 138/2025 Action type: Infringement Action Counterclaim for revocation: UPC CFI 522/2025

Key Holdings

• The intended technical effect is irrelevant for assessing the novelty of a product claim.
• Declarations from (ex)employees, even if called 'expert declarations', may be qualified as witness statements by the Court.
• The Court dismissed the infringement claim after finding the independent claim not novel and none of the 14 auxiliary requests to be valid.
• Claimants should argue novelty and inventive step for dependent claims independently, even if the independent claim is found invalid.
• A prior art product reading on patent claims can destroy novelty regardless of its original intended purpose.

Tags

• Infringement
• Revocation
• Novelty
• Inventive Step
• Auxiliary Requests
• Evidence
• Claim Construction

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