UPC CFI no. 178/2024, no. 432/2024 – PROGRESS MASCHINEN & AUTOMATION AG v AWM s.r.l. and Schnell s.p.a.

Expert Commentary

Full Decision Text

Milan Local Division COURT OF FIRST INSTANCE OF THE UNIFIED PATENT COURT UPC CFI no. 178/2024, no. 432/2024 DECISION delivered on 27 October 2025 HEADNOTES 1. An invention 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 identical in its constituent elements, in the same form, with the same arrangement and the same features. This principle applies also when a novelty attack is based on a single piece of prior art made available to the public by use. 2. When assessing whether or not the claimed subject-matter involves an inventive step, the technical problem must be derived from effects directly and causally related to the technical features of the claimed invention. An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the patent application. KEYWORDS novelty; inventive step; added matter; requirements for admissibility of a request to amend the patent under rule 30.2 RoP UPC CFI no. 178/2024 - no. 432/2024 2 of 45 CLAIMANT PROGRESS MASCHINEN & AUTOMATION AG - Julius‐Durst‐Strasse 100, 39042, Brixen, Italy represented by Markus Gangl and Florian Robl, Patentanwälte Torggler & Hofmann GmbH & Co KG, Wilhelm‐Greil‐Straße 16, 6020 Innsbruck, Austria DEFENDANTS 1) AWM s.r.l. - SS. 13 Pontebbana, Km. 146 33010 Magnano in Riviera (UD), Italy 2) Schnell s.p.a. - via Sandro Rupoli, 2, zona Ind. San Liberio 61036 Colli al Metauro (PU), Italy both represented by Cristina Schiavone and Federico Manzella, Manzella & Associati, via dell’Indipendenza 13, 40121, Bologna, Italy PATENT AT ISSUE EP 2726230 B1 (hereafter referred to as EP’230) entitled “Method and device for continuously producing a mesh type” DECIDING JUDGE This decision has been issued by the Court of First Instance - Milan Local Division in the following panel - Pierluigi PERROTTI presiding judge and judge rapporteur - Camille LIGNIERES legally qualified judge - Alima ZANA legally qualified judge - Koen CALLEWAERT technically qualified judge LANGUAGE OF PROCEEDINGS English SUBJECT-MATTER OF THE PROCEEDINGS Infringement action and counterclaim for revocation DATE OF THE ORAL HEARING 16 September 2025 UPC CFI no. 178/2024 - no. 432/2024 3 of 45 1. Summary of facts Progress Maschinen & Automation AG (hereinafter referred to as Progress) is the proprietor of EP’230, that protects a method and an apparatus for continuously producing a lattice girder. On 23.8.2023 Progress filed two applications against AWM s.r.l. and Schnell s.p.a. (UPC CFI no. 286/2023 - 287/2023), requesting measures to preserve evidence and to inspect premises, to be ordered without hearing the Defendants. The Claimant gathered information about the ongoing production, promotion and commercial offer of an apparatus named Girderflex / Girderflex VSX, carried out by AWM, a member company of the Schnell Group since 2022. Progress claimed that the features of these machineries, as described and partially visible on AWM’s website, replicated all the teachings of its patent. By order dated 25.9.2023, the Court granted the requested measures ex parte. The order was enforced at the Defendants’ premises on 17.10.2023 and was not subject to appeal or review. On 16.2.2024 Progress filed an application for access to the contents of the experts’ reports. The request was denied by order of 8.4.2024, against which an appeal was filed on 15.4.2024 (UPC CoA no. 177/2024 - Apl no. 20002/2024). At the same time, on 15.4.2024 Progress also filed an application for restitutio in integrum (App. no. 20003/2024) pursuant to rule 320 RoP, in respect of the failure to comply with the time limit for commencement of the proceedings on the merits set by the Court in its order of 25.9.2023. In view of the close connection with the outcome of the appeal, the parties agreed to stay the decision on this request until the Court of Appeal has ruled proceeding no. 20003/2024. This proceeding was therefore stayed accordingly by order of 16.5.2024. By decision of 23.7.2024, the Court of Appeal set aside the order of 8.4.2024 in its entirety and referred back the decision on the request to have access to the experts’ report to the same panel of the Court of First Instance which had issued the contested order. By order no. 45643/2024, delivered on 9.9.2024, the Court decided that there was no need to adjudicate on the “request for restitutio in integrum” filed by Progress. Progress was granted access to the documents by orders dated 9.10 - 25.11.2024, and a confidentiality club was established for some of these documents (order no. 60710/2024 dated 25.11.2024). In the meanwhile, on 15.4.2024 Progress also commenced proceedings on the merits against AWM and Schnell (Act. no. 20004/2024 - UPC CFI no. 178/2024). The Claimant reiterated that two apparatus for the production of lattice girders, named Girderflex and Girderflex VSX, were offered for sale on the website of AWM, a company that had recently joined the Schnell Group, and that these machineries infringed patent EP’230. Progress requested a declaration of infringement, with injunction, the setting of a penalty and the payment of interim damages. It also requested that the Defendants be ordered to provide all UPC CFI no. 178/2024 - no. 432/2024 4 of 45 information useful for understanding (i) the origin and distribution channels of the infringing products, (ii) the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products and (iii) the identity of any third person involved in the production or distribution of the infringing products. On 25.7.2024 AWM and Schnell filed their statement of defence with counterclaim for revocation. Schnell emphasized that it had nothing to do with the events in question. Its involvement was solely due to the fact that AWM has been part of the Schnell Group since 2022. All documents lodged by Claimant referred only to AWM and nothing was found during inspection / preservation of evidence at Schnell’s premises. Progress alleged that Schnell was liable for threatened infringement because it could start production. Schnell objected to this, on the grounds that it was merely alleged with no evidence at all. Defendants clarified that the apparatus Girderflex VSX included the possibility to vary the diagonal wire welding pitch in the range of 190 - 210 mm (a feature that was not relevant for assessing infringement). Girderflex machines were made in different variants (VSX, 350, 370, 400) which differ only in the size of the maximum height of the lattice girder (also not relevant for infringement). Therefore, they might be considered unitarily. AWM disclosed to the public the same technical solution contested by the Claimant before the priority date (30.6.2011) claimed by EP’230 through publications in trade journals, presentations at trade fairs, sales of some units and submission of commercial offers for previous models of the same machines, called JIT or 350 (hereafter referred to as JIT machine). All these circumstances could also be confirmed by various witnesses. Defendants thus argued that as AWM was already marketing (old) JIT machines prior to the filing of the patent, the (new) Girderflex machines do not infringe upon the patent or, if the JIT machines fall within the scope of the patent, the patent was not valid in light of the prior disclosure of the claimed features. Progress did not dispute that JIT machines were manufactured, offered on the market and sold since 2008. According to the Claimant, these apparatuses were different from later Girderflex machines and did not include all the features of the claimed invention. Therefore, they were not novelty-destroying. At the same time, the most recent Girderflex fell within the scope of the patent. On 20.12.2024 Progress filed an application to amend the patent pursuant to Rule 30.1 RoP, with five conditional auxiliary requests. Subsequently, in its reply to the defence to application to amend the patent, the Claimant submitted a new version of the auxiliary request 4, considering it justified in light of the defences raised by AWM and Schnell. UPC CFI no. 178/2024 - no. 432/2024 5 of 45 The Defendants objected to the admissibility of this new application to amend the patent and requested the Court not to grant the permission to file it, pursuant to Rule 30.2 RoP. The judge rapporteur held the interim conference on 5.6.2025. The parties finally discussed the case at the oral hearing on 16.9.2025. During the oral hearing, the Panel asked the Claimant to clarify the content of its conditional request for examination of the auxiliary requests in view of the somewhat unclear wording of the request itself.1, with an express request to specify whether it had current and actual interest in a possible decision of partial validity of the patent at issue. Progress has confirmed that it is still interested in maintaining the validity of the patent, even if only partially. The Defendants disputed this position, arguing that the wording contained in the defence brief should be interpreted in the most restrictive sense, with the result that the Claimant has no interest in a possible ruling of partial validity. Otherwise, the Claimant would have amended its claim and outside the limits permitted by Rule 263 RoP. Following the oral hearing, the Court granted the parties until 25.9.2025 to file an updated summary of their respective legal costs, so as to include the defence activities related to the oral hearing. 2. Parties’ requests Claimant requests that II. the Court find that Defendants infringe EP 2726230 B1 in Italy, Austria, Belgium, Germany, Denmark, Finland, France, The Netherlands and Sweden a. when manufacturing, offering for sale, marketing or using, or importing or possessing for said purposes an (patent claim 8 of EP 2 726 230 B1), A1 Apparatus for continuously producing a lattice girder A2 [the lattice girder] comprising A2.1 a lower chord arrangement which includes at least one lower chord A2.2 an upper chord arranged at a specific height relative to the lower chord arrangement A2.3 at least one diagonal member which extends back and forth between the at least one lower chord and the upper chord 1 “... the following conditional requests are presented and it is respectfully requested that on the condition that the Courts considers these requests in the given order on the condition that the Court finds that counteraction for revocation cannot be rejected in its entirety” (see page 28 Reply to the Statement of Defence dated 20.12.2024). UPC CFI no. 178/2024 - no. 432/2024 6 of 45 A2.4 wherein the at least one lower chord and the upper chord are welded to the at least one diagonal member A3 the apparatus for that welding operation includes A3.1 a lower chord welding device and an upper chord welding device A3.3 a cutting device for cutting the upper chord A3.4 a device for height adjustment of the upper chord during the continuous production of the lattice girder, and/or b. when using, marketing or offering for use (patent claim 1) M1 Method of continuously producing a lattice girder M2 by welding M2.1 a lower chord arrangement which includes at least one lower chord M2.2 and an upper chord, which is arranged at a specific height in relation to the lower chord arrangement M2.3 to at least one diagonal member which extends back and forth between the at least one lower chord and the upper chord M3 wherein welding of the at least one lower chord and the upper chord to the at least one diagonal member is effected by means of a lower chord welding device and an upper chord welding device M4 wherein the height of the upper chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder M5 wherein the upper chord is cut prior to a change in its height relative to the lower chord arrangement c. in particular, when the feature of features of any of the dependent claims are additionally present; III. Defendants be ordered by the Court, a. in order to avoid a penalty payment, to be fixed by the Court for each offence, to cease and desist from manufacturing, offering for sale, marketing or using, or from importing or possession for the said purposes in Italy, Austria, Belgium, Germany, Denmark, Finland, France, The Netherlands and Sweden the apparatus and/or method according to request II b. in order to avoid a penalty to be fixed by the Court to provide Claimant with details to the extent to which the defendant has been carrying out the activities described under request II within the last five years, i.e., to state i. the origin and distribution channels of the infringing products ii. the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products iii. the identity of any third person involved in the production or distribution of the infringing products UPC CFI no. 178/2024 - no. 432/2024 7 of 45 c. to eliminate the infringing characteristics of the infringing products at Defendant’s expense d. to pay to the Claimant interim damages to be reasonably determined by the Court, at least covering the expected costs of the procedure for the award of damages and compensation of the Claimant; IV. the Court find that Defendants are obliged to pay Claimant for all damages exceeding the interim damages according to request III.d and suffered by the Claimant as a result of the infringing activities within the last five years; V. Defendants be ordered by the Court to bear the legal costs and other expenses of the Claimant for the present proceedings and for the proceedings for inspection and to preserve evidence; VI. Defendants be ordered by the Court to disseminate information concerning the Court’s decision at Defendants’ expense. Defendants request that the Court reject all the requests made by Claimant; revoke the patent at issue in its entirety; if it is deemed appropriate and/or necessary, hear in person the witnesses indicated and/or order an inspection of the Girderflex machines marked with serial numbers 386 and 395 order the Claimant to reimburse the Defendants for all the legal fees incurred in the proceedings. 3. The patent at issue Progress is the sole proprietor of EP’230, entitled Method and device for continuously producing a mesh-type support. The application was filed on 22.6.2012, claiming the priority of the Austrian patent application AT 9512011 dated 30.6.2011. The patent was granted on 1.2.2017 and is currently in force - inter alia - in Italy, Austria, Belgium, Germany, Denmark, Finland, France, The Netherlands and Sweden. Two oppositions (and appeals) were filed before the EPO by EVG GmbH and by Schlatter Industries AG. They were rejected on 18.8.2023, by decision published on 20.9.2023, and the patent was maintained unamended. The patent at issue was initially opted out on 13.5.2023. The opt-out was then withdrawn on 9.8.2023. The patent in question concerns a method of and an apparatus for continuously producing a lattice girder. These girders, made from steel wire, are typically used in the construction industry to reinforce concrete structures. A schematic representation of a lattice girder is shown below (Fig. 1 of the patent), where 2 is the lower chord(s), 3 is the upper chord, 4 is the diagonal member, 26 are the weld points and H is the height of the upper chord relative to the lower chord arrangement. UPC CFI no. 178/2024 - no. 432/2024 8 of 45 The introduction of the patent specification (see para. [0004]) states that lattice girders are generally available only in certain standard sizes. The characteristic dimensions of a lattice girder include in particular (i) the height at which the upper chord is arranged relative to the lower chord arrangement, (ii) the length of the lattice girder and (iii) the wire diameter of the chord and struts. The production of lattice girders of standard size presents some disadvantages. (1) Often the customer only needs a given number of items of a given type of lattice girder but frequently has to accept a minimum quantity. That is problematic, in particular, when many different types of lattice girders are necessary in a building construction. The customer has to put the lattice girders which are not needed into intermediate storage, in which case he has to provide not only the space required for that purpose but also suitable equipment for handling the bulky lattice girders. Taking a minimum amount of a given type of lattice girder is also problematic in particular in view of the background of greatly fluctuating steel costs. (2) If a customer has to rework a lattice girder which is of certain standard sizes for his specific purposes, a great amount of waste is involved. Furthermore, additional welding operations - which are only rarely standardised - are required. The modification operations further frequently give rise to weak spots which are susceptible to rusting. (3) The above-described disadvantages involve overall increased costs. The basic idea of EP’230 is that the height of the upper chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder. The apparatus according to the patent at issue has a device for height adjustment of the upper chord during the continuous production of the lattice girder. The object of the invention of the patent is to avoid the above disadvantages and to provide a method and an apparatus for continuously producing a lattice girder. This is obtained by UPC CFI no. 178/2024 - no. 432/2024 9 of 45 changing the height of the upper chord (3) relative to the lower chord (2) during production of the lattice girder. The patent comprises 20 claims, of which claims 1 and 8 are independent. Claim 1 protects a method and claims 2 to 7 are dependent on claim 1. Independent claim 8, on which claims 9 to 20 are dependent, claims an apparatus. Claim 1 of the patent reads as follows: M1 a method of continuously producing a lattice girder (1) M2 by welding M2.1 a lower chord arrangement which includes at least one lower chord (2) [...] M2.2 and an upper chord (3), which is arranged at a specific height (H) in relation to the lower chord arrangement M2.3 to at least one diagonal member (4) which extends back and forth between the at least one lower chord (2) and the upper chord (3) [...] M3 wherein welding of the at least one lower chord (2) and the upper chord (3) to the at least one diagonal member (4) is effected by means of a lower chord welding device (5) and an upper chord welding device (6) characterised in that M4 the height (H) of the upper chord (3) relative to the lower chord arrangement is changed during the continuous production of the lattice girder (1) M5 wherein the upper chord (3) is cut prior to a change in its height (H) relative to the lower chord arrangement Claim 8 reads as follows: A1 apparatus for continuously producing a lattice girder (1) A2 [the lattice girder (1)] comprising A2.1 a lower chord arrangement which includes at least one lower chord (2) [...] A2.2 an upper chord (3) arranged at a specific height (H) relative to the lower chord arrangement and A2.3 at least one diagonal member (4) which extends back and forth between the at least one lower chord (2) and the upper chord (3) [...] A2.4 wherein the at least one lower chord (2) and the upper chord (3) are welded to the at least one diagonal member (4) and A3 the apparatus for that welding operation includes A3.1 a lower chord welding device (5) and an upper chord welding device (6) A3.2 a cutting device (14) for cutting the upper chord (3) [characterised in that the apparatus further includes] UPC CFI no. 178/2024 - no. 432/2024 10 of 45 A3.3 a device (10) for height adjustment of the upper chord (3) during the continuous production of the lattice girder (1). According to the invention, a further substantial advantage arising out of the combination of the device for height adjustment of the upper chord during the continuous production of the lattice girder and the presence of a cutting device for cutting the upper chord is that ad hoc conversion to the production of a lattice girder involving an altered upper chord height is possible without any noteworthy loss of material. In that case, the change in height can be effected completely between two welding cycles (for welding the upper chord to the diagonal members). It is also possible in that way to implement a product‐related “just in time” manner of production: more specifically it is frequently the case that, for a given concrete mould, lattice girders of different upper chord heights are required, in differing numbers. It is possible to comply with that wish in timely fashion by the flexible capacity for conversion. The patent shows two embodiments: (i) the first one in figures 1 to 7b (with no reference to a bending machine for the diagonal members); (ii) the second in fig. 8 (which is schematic and shows only one bending machine). Besides the presence of a bending machine 24 and a wire guidance device 39 for the upper chord, in the embodiment of figure 8, the position of the upper chord cutting device 14 is provided upstream from the bending machine 24. Further, in the embodiment of figure 8, the diagonal members 4 and the lower chords 2 are fed at the same height. 4. Claim construction The interpretation of the claims is governed by Art. 69 EPC and the Protocol on the Interpretation of Art. 69 EPC in conjunction with Art. 24.1(c) UPCA. The same approach to claim construction is to be used when assessing infringement and validity; thus, Art. 69 EPC must be the governing principle in claim interpretation also in the context of validity. According to the principles defined by the Court of Appeal (see UPC CoA no. 335/2024, decision 26.2.2024), the patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. UPC CFI no. 178/2024 - no. 432/2024 11 of 45 However, this does not mean that the patent claim merely serves as a guideline and that its subject-matter also extends to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection. 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 protection for the patent proprietor with sufficient legal certainty for third parties. These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent. The discussion between the parties focused mainly on the possibility of classifying lattice girders as “standard lattice girders” and “very special lattice girders”, as well as on the interpretation of the following features: M1, A1 continuously producing a lattice girder M4, A3.3 the continuous production of the lattice girder and M2.3, A2.3 at least one diagonal member (4) which extends back and forth between the at least one lower chord (2) and the upper chord 4.1. Very special lattice girder / Standard lattice girder For the purpose of a correct interpretation of the claims of the patent at issue, the Court firstly clarifies that it is not possible to accept the distinction proposed by the Claimant, according to which it would be possible to classify lattice girders as either “standard” or “very special”. According to Progress’ proposal, “standard” lattice girders would be those which use diagonal members composed of a single wire which is repeatedly bent and welded to the top and bottom chords. The “very special” lattice girders, on the other hand, are those that use a plurality of inverted V-shaped single diagonal members welded sequentially to the top and bottom chords. This classification would be based on a textbook published in September 2021 (see Enclosure W of the Claimant) which shows the following figure. UPC CFI no. 178/2024 - no. 432/2024 12 of 45 As Defendants correctly point out, this classification is entirely arbitrary because it has no basis in the language of the patent. The only document supporting this distinction is the above-mentioned textbook, which was published after the priority date claimed by the patent. It was published at the request of a private company - Baustahlgewebe - for commercial purposes only and appears to be unrelated to any institutional research. KT800 is the commercial name of the lattice girder produced by Baustahlgewebe. Only lattice girders of this type are shown and offered for sale in the same company’s product catalogue (see Defendants’ Exhibit 55). It is therefore clear that Baustahlgewebe has adopted this technical solution as its own standard, which cannot be considered as a valid basis for a general and common standard production. In support of this conclusion, reference can also be made to the catalogues of another manufacturer - Filigran Trägersysteme GmbH - which, by contrast, produced lattice girders of both types, i.e. (i) with diagonals consisting of a plurality of individual V-shaped elements and (ii) with diagonals consisting of a single element repeatedly bent in a zigzag shape (see Defendants’ Exhibit 56), as shown below. UPC CFI no. 178/2024 - no. 432/2024 13 of 45 Thus, there is no basis in the patent, nor any other documented basis, for receiving a pre-defined distinction between “standard” and/or “very special” lattice girders. They are both usable “lattice girders” for the skilled person in the relevant technical field. 4.2. M1, A1 continuously producing a lattice girder M4, A3.3 the continuous production of the lattice girder Both parties base their arguments about this feature on the interpretation adopted by the Board of Appeal, according to which the concept “continuous production of the lattice girder” means that “one lattice girder is produced after another, (i) without there being any rejects or offcuts in between, and (ii) without the production in the machine being completely stopped and having to be restarted again” (see para 1.1.3, decision of the Technical Boards of Appeal, 12.7.2023) According to the Claimant, the definition is very clear on both points. The change in height of the lattice girders must be carried out in such a way that there is no waste or offcut between a lattice girder of height H1 and the next one of height H2 and, above all, that there is no interruption in production. In order to clarify the meaning of the proposed interpretation, Progress referred to the content of the videos showing the operation of the JIT machine, which AWM itself attached to the case file. According to the Claimant, these machines perform the height adjustment of the upper chord in a substantial and appreciable time interval of at least one and a half minutes, during which there is a complete interruption of production. This type of arrangement therefore does UPC CFI no. 178/2024 - no. 432/2024 14 of 45 not correspond to the content of the claim to the extent that it requires continuous production, as clarified by the EPO Board of Appeal. Defendants disagree with Claimant’s interpretation and emphasize that the temporary interruption - i.e. a pause in operation - is within the scope of the patent. Both embodiments show a stepwise functioning (respectively, for embodiment 1, para. [0022]; for embodiment 2, fig. 8). This means that a pause implying a momentary (and alternate) “stop”, inherent to any “stepwise” functioning, must be included in the scope of protection of the patent. The patent does not mention anything about the time required to make the adjustments. The adjective “continuous” is also related to the fact that the production does not cause any waste of material during a height change of the lattice girder. This means that the height change of the lattice girder thus results in an uninterrupted succession of lattice girders with no ramp in-between. The Court considers that the wording “continuously producing” or “continuous production” is not explicitly defined in the patent. However, from the description it is clear that such a continuous production involves a stepwise advancement of the lattice girder. Such a stepwise advancement is by definition composed of sequential steps. The description of the patent explicitly indicates that, after cutting the upper chord, stepwise advance continues until the location at which the upper chord was cut has reached the centering device. See para. [0027]: “following the operation of cutting the upper chord, the lattice girder is transported stepwise towards the right with the advance being effected by means of the advance device 15 in the manner described with reference to fig. 3a and 3b (see fig. 4b). That stepwise advance continues until the location at which the upper chord was cut has reached the centering device for the upper chord (see fig. 4c). That means that the gripper of that centering device can fix the end of the left-hand part of the cut upper chord. In that way part of the upper chord is held stably between the two grippers and can subsequently be moved upwardly by an upward movement of the height-adjustable carrier [...]. The two lower chords remain in the original position. The altered spacing of the two grippers on the advance device is accommodated by means of the height compensation device”. This clearly implies that the stepwise advance is stopped for moving the height-adjustable carrier 11 upward (or downward). Once the end position of the movement of the height-adjustable carrier 11 is reached, the lattice girder is further moved stepwise. See para. [0028]: “The end position of the upward movement of the height-adjustable carrier is shown in Fig. 4d. After that end position is reached, the lattice girder is further moved stepwise towards the right (the stepwise advance again being effected by means of the advance device in the above described manner), namely until the end of the right-hand part of the cut upper chord is completely welded, that is to say until the height UPC CFI no. 178/2024 - no. 432/2024 15 of 45 change position has reached the lower chord welding device and the upper chord welding device, respectively (see Fig. 4e)”. The patent description indicates explicitly that “the stepwise advance again being effected by means of the advance device”. Accordingly, it is clear from the patent specification that a continuous production, within the meaning of the patent, not only comprises a stepwise advancement of the lattice girder, but also implies a temporary stop for modifying the height of the height-adjustable carrier 11. The patent specification is silent as to the duration of this temporary stop. The wording “continuous production” can also be related to the fact that the lower chords run continuously and uncut along the successive lattice girders during production. 4.3. M2.3, A2.3 at least one diagonal member (4) which extends back and forth between the at least one lower chord (2) and the upper chord According to Claimant, in patent law, the phrase “at least one” means “one or more”. Thus, the independent claims cover the possibilities that there is a single diagonal member which extends back and forth between the at least one lower chord and the upper chord, and that there are two or more diagonal members which extend back and forth between the at least one lower chord and the upper chord. It does not matter whether there is only a single diagonal member or there are more than one, as the skilled person understands that each diagonal member must extend back and forth between the at least one lower chord and the upper chord over the whole length of the at least one lower chord and the upper chord. In the prior art the individual diagonal members are not connected to each other and, therefore, do not form a single diagonal member which itself runs back and forth between the lower chord and upper chord, i.e., over the length of the lattice girder. Each diagonal member only runs once from the lower chord to the upper chord and there is a sequence of individual diagonal members. This can be derived by the contents of para. [0004] of the patent. The same applies for feature A2.3. In addition to this, it is also clear that in the invention only continuous elements are used: ‐ continuous lower chord(s); ‐ continuous diagonal member(s); ‐ continuous upper chord; and it is possible to bring about a height change without having to adjust any non‐continuous elements to the height change. All that has to be done is to bend the continuous diagonal members with the correct height and no extra step is needed. UPC CFI no. 178/2024 - no. 432/2024 16 of 45 The Claimant’s proposed interpretation would be also supported by the already mentioned textbook published in September 2011 (see Enclosure W), which does not even mention the solution of separate individual inverted V-shaped diagonal members. This should mean the independent claims cover lattice girders having a single diagonal member only. This “at least one diagonal member” goes back and forth between the lower chords and the upper chord. What is meant by the patent is a single diagonal member which, over the length of the lattice girder, goes back and forth between the lower chords and the upper chord several times as shown in the figures of the patent. Defendants point out that the disputed claim should be interpreted as including also a sequence of individual elements having the form of an inverted V. The mentioned para. [0004] in no way even mentions the diagonal members of lattice girders, either explicitly or implicitly. Therefore, any attempt to exclude methods and machines for producing lattice girders with individual V-shaped diagonal members from the scope of protection is unfounded and cannot be shared. On the contrary, the meaning of “extending back and forth” between the upper chord and the at least one lower chord applies to each single diagonal member of a lattice girder made of a succession of individual diagonal members, connecting one upper chord and two lower chords. The book (Enclosure W) has been published at the request of a private company - Baustahlgewebe - and not for institutional research at a date subsequent to the priority date. This company only produces lattice girders with continuous diagonal members, so it has no general value at all. (enclosure 55), In reply to this argument, Claimant adds that according to the interpretation proposed by the Defendants, the invention would have to make sense for a sort of “mini‐lattice‐girder”, composed of a single inverted V shaped diagonal member, as showed in the figure below. The invention deals with the problem of how to produce lattice girder having different heights without having to stop production and without having waste material. However, for a “mini‐lattice‐girder” production is necessarily over after welding the single diagonal member to the lower chords and the upper chord and the problem which is solved by UPC CFI no. 178/2024 - no. 432/2024 17 of 45 the invention does not occur. Each diagonal member can be chosen for each “mini‐lattice‐ girder” with any desired height and there will be no “extra” stop of production and no waste material anyway. The Court considers that the wording of the claim does not exclude that the “at least one diagonal member” is formed by an individual element having the form of an inverted V. The claims do not require a diagonal member run multiple times back and forth between a lower chord and the upper chord and, in particular, for the entire length of these lower and upper chords. A lattice girder presenting such a diagonal member having the form of an inverted V welded between the upper chord and a lower chord therefore complies with the features M2.3 and A2.3. 5. Counterclaim for revocation 5.1. Lack of novelty The Defendants primarily request that the patent be declared invalid due to lack of novelty, in accordance with the provisions of Article 54 EPC, according to which “1. An invention shall be considered to be new if it does not form part of the state of the art. 2. The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.” The Defendants claim to have manufactured, offered for sale and marketed machines for the production of lattice girders - here all grouped under the same trade name JIT (see page 4) - prior to the priority date claimed by the patent. These devices fully anticipate all the teachings of EP’230, with the consequent prior disclosure of all features claimed by the patent at issue. UPC CFI no. 178/2024 - no. 432/2024 18 of 45 As already clarified in UPC case law, it is a prerequisite for the acceptance of lack of novelty that the claimed subject matter is directly and unambiguously derivable from the prior art. The technical disclosure in a prior art document must be considered as a whole (UPC CoA no. 182/2024 - order 25.9.2024, para 123). An invention 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 identical in its constituent elements, in the same form, with the same arrangement and the same features (UPC CFI no. 233/2023, 31.7.2024 - Munich LD; UPC CFI no. 239/2024, 28.7.2025 - CD Paris). This principle applies also when a novelty attack is based on a single piece of prior art made available to the public by use, as alleged by the Defendants in the case at hand. AWM and Schnell have submitted numerous exhibits demonstrating the existence of JIT machines prior to the priority date (30.6.2011) and the features of such machines (Exhibits 2 through 47). They also requested, to the extent deemed necessary by the Court, the admission of testimonial evidence corroborating the facts set forth in various written witness statements already attached. The existence of these machines prior to the priority date is not disputed by the Claimant and, therefore, no assessment of this specific factual point is necessary, in accordance with the general provision contained in Rule 171.2 of the Rules of Procedure, according to which "a statement of fact which is not expressly denied by a party shall be taken as true as between the parties". Progress, on the other hand, strongly denies that all the features claimed in the patent are actually present in the JIT machines. Progress devoted much of its written defence to analysing the differences between the old JIT machines and the new Girderflex machines, particularly with respect to: (i) the methods of welding and bending the diagonal chord; (ii) stopping production for adjustments to the cutting device, feeding device and bending device; (iii) sequentially positioning the upper chord welding device, the lower chord welding device and the bending device. The Court considers that it is not necessary to examine in detail the differences between those two machines, since the only useful reference for examining the novelty attack is the JIT machine with its specific features. The characteristics of the new Girderflex machines are not relevant for these purposes and will only be examined - if necessary - at the time of the assessment of the infringement alleged by Progress. UPC CFI no. 178/2024 - no. 432/2024 19 of 45 In short, Defendants argue that: - the height adjustment of the upper chord is done during continuous production of the lattice girder because it is done in an analogous way as disclosed by the patent, taking into account the required displacement of the height-adjustable carrier 11 during the stepwise production of the lattice girder; - the individual diagonal members formed by inverted V shapes are arranged in a zig-zag and extend back and forth between the lower and upper chords within the meaning of the claims of the patent. Claimant, on the other hand, counters that in the JIT machine: - it is not possible to perform height adjustment of the upper chord during the continuous production of the lattice girder such that the production needs to be stopped when changing the height of the upper chord, meaning that features M1, A1, M4 and A3.4 are not disclosed; - the structure between the upper and lower chords is constituted by individual diagonal members formed by inverted V-shaped rods that do not form diagonal members that run back and forth between the lower and upper chords over the whole length of at least one lower chord and one upper chord, such that features A2.3 and M2.3 are not disclosed. In the Court’s view, the validity attack under Article 54 EPC is well-founded: according to the claim construction adopted by the Court, the JIT machine effectively anticipates all features claimed by the patent and is therefore novelty-destroying. Below is a detailed analysis regarding the presence of each claimed feature in the JIT machine. Feature M1 A method of continuously producing a lattice girder The JIT machine makes it possible to produce a lattice girder. The production of the lattice girder is a continuous process as the lower chords run continuously and uncut along the successive lattice girders during production. The lower and upper chords are fed stepwise and during adaptation of the height of the upper chord with respect to the lower chords, the stepwise advancement of the chords is stopped temporary for modifying the height (see for example videos of Exhibit 14.27, 18 and 34.5 submitted by Defendants). Such a temporary stop falls within the meaning of a continuous production as interpreted above taking into account the description of the patent. There is no waste of material too as there is no ramp between two lattice girders with different heights. UPC CFI no. 178/2024 - no. 432/2024 20 of 45 Thus feature M1 of claim 1 is disclosed by the JIT machine. The same reasoning applies for A1. Feature M2 at least one diagonal member which extends back and forth between the at least one lower chord and the upper chord It is clear that the JIT machine is designed for producing lattice girders. These lattice girders have two lower chords and an upper chord which is arranged at a specific height (H) in relation to the lower chords. The lattice girders produced by means of the JIT machine comprise a sequence of V-shaped diagonal members. Each such V-shaped diagonal member is welded to the upper chord and a lower chord and extends back and forth between the lower chord and the upper chord. According to the claim interpretation, this option falls within the scope of the patent. The figure below is an extract from exhibit 35 submitted by Defendants showing a lattice girder having V-shaped diagonal members. Thus, feature M2 is not new as the JIT machine was marketed before the priority date of the patent. Feature M3 UPC CFI no. 178/2024 - no. 432/2024 21 of 45 wherein welding of the at least one lower chord and the upper chord to the at least one diagonal member is effected by means of a lower chord welding device and an upper chord welding device As identified in the pictures below, the JIT machine has a lower chord welding device and an upper chord welding device for welding respectively the lower chord and the upper chord to the diagonal member. lower chord welding device (extract from exhibit 14.26 submitted by Defendants) upper chord welding device (extract from exhibit 14.27 submitted by Defendants) Accordingly, feature M3 is disclosed by the JIT machine. Feature M4 the height of the upper chord is changed during the continuous production of the lattice girder UPC CFI no. 178/2024 - no. 432/2024 22 of 45 The video submitted as Exhibit 14.27 by Defendants, clearly shows that the height of the upper chord is changed during the production of the lattice girder within the JIT machine. During the displacement of the upper chord, the stepwise movement is stopped temporarily and once the upper chord has reached its new position relative to the lower chords, the stepwise movement of the lower and upper chords is resumed. As explained above, such a temporary interruption of the stepwise advancement is part of the continuous production of the lattice girder within the meaning of the claim of the patent. Accordingly, the height of the upper chord is changed during the continuous production of the lattice girder such that feature M4 is disclosed by the JIT machine. Feature M5 the upper chord is cut prior to a change in its height (H) relative to the lower chords A cutting tool for the upper chord is provided at the entrance side of the JIT machine. Exhibits 17.2 and 34BIS.2 show a technical drawing of this upper chord cutting tool. The drawing below is extracted from page 7/12 of “Sectie B, Algemene beschrijving van de machine” concerning the Girderflex 350 386-machine, as enclosed in Exhibit 21 (page 26) and UPC CFI no. 178/2024 - no. 432/2024 23 of 45 shows the position of the cutting tool for the upper chord (“Bovenstaaf knipmes” [=‘upper bar cutting tool’]) Accordingly, the upper chord is cut prior to its change in height (H) relative to the lower chords such that feature M5 is disclosed by the JIT machine. Feature A1 Apparatus for continuously producing a lattice girder The reasoning developed with respect to feature M1 equally applies to feature A1 such that also feature A1 is disclosed by the JIT machine. Features A2 [the lattice girder] comprising a lower chord arrangement which includes at least one lower chord [...] an upper chord arranged at a specific height (H) relative to the lower chord arrangement and at least one diagonal member which extends back and forth between the at least one lower chord and the upper chord [...] wherein the at least one lower chord and the upper chord are welded to the at least one diagonal member All of features A2.1, A2.2 and A2.3 together form feature M2, such that these features are also disclosed by the JIT machine. Feature A2.4 specifies that the at least one lower chord and the upper chord are welded to the at least one diagonal member. It is clear that this feature is also present in the lattice girder produced by the JIT machine. Features A3 the apparatus for that welding operation includes a lower chord welding device and an upper chord welding device, a cutting device for cutting the upper chord [and] a device for height adjustment of the upper chord during the continuous production of the lattice girder As already stated, the JIT machine has a lower chord welding device and an upper chord welding device, such that feature A3.1, corresponding to feature M3, is disclosed by the JIT and ‘Girderflex 350’-machine. Furthermore, the JIT machine has a cutting device for cutting the upper chord as discussed under feature M5 such that feature A3.2 is also disclosed. Feature A3.3 specifies that the apparatus includes a device for height adjustment of the upper chord during the continuous production of the lattice girder. The JIT machine also features a mobile frame carrying the upper feeding unit for the upper chord during the continuous production of the lattice girder. This is, for example, illustrated by the video of Defendants’ exhibit 14.27. Hence, feature A3.3 is disclosed by the JIT and ‘Girderflex 350’ machines. UPC CFI no. 178/2024 - no. 432/2024 24 of 45 As all features of independent claims 1 and 8 of the patent are disclosed by the JIT machine that was marketed before the priority date of the patent, the subject matter of claims 1 and 8 is not new. The parties did not discuss the validity of the dependent claims. Defendants extended the novelty attack to almost all dependent claims, arguing also lack of inventive step for others (2, 11, 15) (see Statement of Defence, pp. 36 ff.). Progress did not respond to these allegations, nor did it address or discuss the issue during the interim conference or the oral hearing. From this procedural position it can at least be inferred that the Claimant has no interest in maintaining one or more dependent claims. According to the principle of the burden of proof, the perimeter of the allegations and evidence on which the court is called upon to decide is therefore limited to that outlined by the Defendants, as the court cannot conduct any independent investigation in this regard ex officio. In any event, it is clear that the lack of novelty established with respect to the independent claims is also apparent with respect to almost all of the dependent claims (with the exception of claim 2), since the respective features are clearly visible in various fragments of the videos submitted by the Defendants (Enclosure 14.18, 14.27, 34.4, 34.5) or in the technical and commercial documents referring specifically to the JIT machine (Enclosure 21). 5.2. Auxiliary requests Progress has filed five auxiliary requests pursuant to rule 30.1 RoP, to be examined “on the condition that the Court find that the counteraction for revocation cannot be rejected in its entirety” (see page 28, Reply to the statement of defence). As already mentioned, this conditional wording did not seem entirely clear to the Court, which therefore asked the parties to comment on this point during the oral hearing in order to clarify whether the patentee had a genuine interest in maintaining the patent only in part, with the examination of the auxiliary requests being based on the sole hypothesis of the complete invalidity of the patent in its original form. No further consideration of this specific point is necessary, since the Court’s assessment is that the patent as originally granted is invalid in its entirety, with the result that the conditional auxiliary requests can be considered without further doubt. 5.2.1. Auxiliary request 1 In the first auxiliary request the wording “in particular” before the phrase “in a zig-zag form” has been deleted. UPC CFI no. 178/2024 - no. 432/2024 25 of 45 Thus claims 1 and 8 have been limited to the production of lattice girders wherein the at least one diagonal member extends back and forth between the at least one lower chord and the upper chord in a zig-zag form2. This amendment satisfies the requirements of Articles 84 and 123(2), (3) EPC, because it is clear in language and limits the scope of the claim. Defendants did not raise any objection on this point. It is undisputed that the patent does not define a zig-zag form. Claimant refers to an excerpt from Wikipedia that states “A zigzag is a pattern made up of small corners at variable angles, though constant within the zigzag, tracing a path between two parallel lines”. This would mean that a sequence of diagonal members is not encompassed by the scope of the claims of the first auxiliary request. In Defendants’ view “the amended definition of the at least one diagonal member comprises the case in which a plurality of individual members forms a zig-zag structure”, such that the amendment does not reestablish novelty of the claims. In this respect Defendants refer to prior art document AT 404103 (Enclosure 50 - 50a) read in conjunction with DE AS 2733252 (Enclosure 52 - 52a). Here the lattice girders feature a succession of V-shaped diagonal members and are described as diagonal bars running in a zig- zag pattern. “Lattice girders with top and bottom chords arranged in a triangular cross-section and diagonal bars running in a zigzag pattern on both sides are used in a wide variety of applications in the construction industry and are used in a wide range of applications and have also proved to be ideal for storing concrete reinforcement or similar items. In addition, these lattice girders can be produced mechanically in suitable automatic welding machines. As can 2 1. A method of continuously producing a lattice girder by welding a lower chord arrangement which includes at least one lower chord, in particular two lower chords, and an upper chord which is arranged at a specific height in relation to the lower chord arrangement to at least one diagonal member which extends back and forth between the at least one lower chord and the upper chord, in particular in a zig-zag form, wherein welding of the at least one lower chord and the upper chord to the at least one diagonal member is effected by means of a lower chord welding device and an upper chord welding device, characterized in that the height of the upper chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder, wherein the upper chord is cut prior to a change in its height relative to the lower chord arrangement. 8. Apparatus for continuously producing a lattice girder comprising a lower chord arrangement which includes at least one lower chord, in particular two lower chords, an upper chord arranged at a specific height relative to the lower chord arrangement and at least one diagonal member which extends back and forth between the at least one lower chord and the upper chord, in particular in a zig-zag form, wherein the at least one lower chord and the upper chord are welded to the at least one diagonal member and the apparatus for that welding operation includes a lower chord welding device and an upper chord welding device, wherein the apparatus further includes a cutting device for cutting the upper chord, characterised in that the apparatus further includes a device for height adjustment of the upper chord during the continuous production of the lattice girder. UPC CFI no. 178/2024 - no. 432/2024 26 of 45 be seen from DE-AS 27 33 252, these automatic welding machines are combined bending and welding devices with two processing stations arranged one behind the other in the feed direction, in which corresponding pieces of wire are first cut off from two parallel fed wires to produce the diagonal bars, v-shaped and welded to the lower chord wires and then these stirrups are aligned and welded to the upper chord wire, whereby the wire pieces are clamped in pairs in the centre, bent downwards together using a bending punch with a V-shaped recess and then pressed apart for welding to the lower chord wires using an upward-guided expanding wedge. An indexed longitudinal feed allows endless lattice girder production and a subsequent cutting-off process.” (see Enclosure 50 with English translation 50A, lines 5-27 of page 2 of Enc. 50A; underlining formatting added). Therefore, the expression “in a zig-zag form” also applies to a structure made of a succession of individual (inverted) V-shaped diagonal members. The Court considers that according to the new wording of claim 1 a lower chord arrangement and an upper chord are welded to at least one diagonal member which extends back and forth in a zig-zag form between the at least one lower chord and the upper chord. This wording implies that the at least one diagonal member itself runs back and forth in a zig- zag form. Notwithstanding a clear definition of a zig-zag form is not given, it is clear that a V-shape is not a zig-zag form, but it can be part of a zig-zag form. Thus, by arranging multiple V-shapes end to end, a zig-zag form is created. Therefore, method described in claim 1 is new. As the JIT machine is not suitable for producing a lattice girder featuring at least one diagonal member which extends back and forth between at least one lower chord and an upper chord in a zig-zag form, apparatus claim 8 is also new in presence of the JIT machine. Compliance with Art. 56 EPC of the first auxiliary request will be discussed under the third auxiliary request. 5.2.2. Auxiliary request 2 The second auxiliary request specifies that the lattice girder features two lower chords and two diagonal members, in addition to the changes of the first auxiliary request3. 3 1. A method of continuously producing a lattice girder, by welding a lower chord arrangement which includes at least one lower chord, in particular two lower chords, and an upper chord which is arranged at a specific height in relation to the lower chord arrangement to at least one two diagonal members which extends back and forth between the at least one lower chord and the upper chord, in particular in a zig-zag form, wherein welding of the at least one two lower chords and the upper chord to the at least one two diagonal members is effected by means of a lower chord welding device and an upper chord welding device, characterized in that the height of the upper UPC CFI no. 178/2024 - no. 432/2024 27 of 45 This feature is disclosed in all of the figures and is described in para. [0017] of the patent (corresponding to page 7, line 5 to 14 of the original application). It is beyond doubt that the amendment limits the scope of the patent, and that the language is clear too. Therefore, the requirements of Articles 84 and 123(2), (3) EPC are fully met. The line of argument developed with regard to auxiliary request 1 applies equally to auxiliary request 2. The subject matter of amended claims 1 and 8 remains not new in the presence of the JIT machine. Compliance with Art. 56 EPC of the second auxiliary request will be discussed under the third auxiliary request. 5.2.3. Auxiliary request 3 In the third auxiliary request, independent claims 1 and 8 are further limited by specifying that the lattice girder consists of two lower chords, two diagonal members and an upper chord4. chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder, wherein the upper chord is cut prior to a change in its height relative to the lower chord arrangement. 8. Apparatus for continuously producing a lattice girder, comprising a lower chord arrangement which includes at least one lower chord, in particular two lower chords, an upper chord arranged at a specific height relative to the lower chord arrangement and at least one two diagonal members which extends back and forth between the at least one two lower chords and the upper chord, in particular in a zig-zag form, wherein the at least one two lower chords and the upper chord are welded to the at least one two diagonal members and the apparatus for that welding operation includes a lower chord welding device and an upper chord welding device, wherein the apparatus further includes a cutting device for cutting the upper chord, characterised in that the apparatus further includes a device for height adjustment of the upper chord during the continuous production of the lattice girder. 4 1. A method of continuously producing a lattice girder which consists of two lower chords, two diagonal members and an upper chord, by welding a lower chord arrangement which includes at least one lower chord, in particular the two lower chords, and an the upper chord which is arranged at a specific height in relation to the lower chord arrangement to at least one the diagonal member which extends back and forth between the at least one lower chord and the upper chord, in particular in a zig-zag form, wherein welding of the at least one two lower chords and the upper chord to the at least one two diagonal members is effected by means of a lower chord welding device and an upper chord welding device, characterized in that the height of the upper chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder, wherein the upper chord is cut prior to a change in its height relative to the lower chord arrangement. 8. Apparatus for continuously producing a lattice girder which consists of two lower chords, two diagonal members and an upper chord, and compriseing a lower chord arrangement which includes at least one lower chord, in particular the two lower chords, an the upper chord arranged at a specific height relative to the lower chord arrangement and at least one the two diagonal members which extends back and forth between the at least one two lower chords and the upper chord, in particular in a zig-zag form, wherein the at least one two lower chords and the upper chord are welded to the at least one two diagonal members and the apparatus for that welding operation includes a lower chord welding device and an upper chord welding device, wherein the apparatus further includes a cutting device for cutting the upper chord, characterised in that the apparatus further includes a device for height adjustment of the upper chord during the continuous production of the lattice girder. UPC CFI no. 178/2024 - no. 432/2024 28 of 45 These features are disclosed in para. [0017] (corresponding to page 7, line 5 to 14 of the original application) and para. [0003] (corresponding to page 1, lines 26 to 30 of the originally filed application) of the patent. Defendants object to the third auxiliary request because the amendment of claim 1 would render this claim unclear. The wording “the at least one lower chord” does not have an antecedent in the claims since the claims specify that the “lattice girder consists of two lower chords, two diagonal members and an upper chord”. Hence, the necessary presence of two lower chords is not consistent (“lattice girder which consists of two lower chords”) with subsequent reference to “diagonal member which extends back and forth between the at least one lower chord and the upper chord”. The Claimant responds to this objection by pointing out that “two lower chords” is one example of “at least one lower chord” and, consequently, the wording “two lower chords” is not inconsistent with “at least one lower chord”. In general terms, the Court notes that any amendment to the patent at issue must satisfy the requirements of Article 84 EPC (“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description”). Under Article 65.2 EPC, the court may only revoke a patent in whole or in part on the grounds specified in Articles 138.1 and 139.2 EPC, so that lack of clarity is not a ground for revocation as it is not listed in the exhaustive list of grounds for revocation. Article 84 EPC is a requirement separated from the validity also in rules 30.1(b) and 50.2 RoP. Consequently, the features of a patent claim contained in the granted version do not have to be reviewed under Article 84 EPC. However, this does not mean that an amendment to a claim cannot be reviewed in this respect. On the contrary, Rule 30.1(b) RoP explicitly requires that an application for amendment of the patent must include, inter alia, an explanation of why the amendment complies with the requirements of Article 84 EPC. It must therefore be examined whether the amendment introduces a lack of clarity (see UPC CFI no. 248/2024 - decision 22.8.2025, LD Munich; UPC CFI no. 309/2023 - decision 5.11.2024, CD Paris). The explanation provided by the Claimant is not completely satisfactory, but not to such an extent that this would justify a refusal of the auxiliary request as inadmissible. It is in fact true that when the claim is read by the person skilled in the art, he/she will understand that “the at least one lower chord” refers to at least a lower chord of both lower chords of the lattice girder. Therefore, auxiliary request 3 is not found inadmissible under rule 30.1 RoP, as the required explanation required might be considered partially incomplete in this regard, but it is not completely lacking. (see UPC CFI no. 355/2023 - decision 28.1.2025, LD Düsseldorf) UPC CFI no. 178/2024 - no. 432/2024 29 of 45 The amendment also limits the scope of the patent, so it satisfies all the requirements set out in rule 30.1 RoP. Auxiliary request 3 overcomes the novelty attack because the new wording certainly refers only to diagonal members formed by a single continuous wire each, and they cannot be a series of multiple inverted V-shaped pieces. Defendants challenged the validity of this amendment for lack of inventive step. This attack involves an examination of the general problem of how to assess inventive step. According to Article 65.2 UPCA and Article 138.1(a) EPC, the Court may revoke a European patent, either entirely or partly, if the subject matter of the patent is not patentable under Articles 52 to 57 EPC. Article 52.1 EPC stipulates inter alia that a European patent may only be granted for an invention that involves an inventive step and Article 56 EPC specifies that an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. For assessing whether an invention shall be considered obvious, having regard to the state of the art, in a structured form, the EPO has developed a test that normally is referred to as the problem-solution approach. This test is regularly used by the EPO, including the Boards of Appeal, and by most national courts in the participating member states. However, there is no legal obligation to apply the problem-solution approach. It is well- known that some national Courts use a different test but normally come to the same conclusion. So far, the UPC has explicitly referred to and applied the problem-solution approach in some cases, but in other cases the Court has applied a test that is very similar if not identical to the test for inventive step applied by the German Federal Court of Justice (see UPC CFI no. 380/2023 - decision 21.7.2025, RD Nordic Baltic). In the course of the proceedings, the parties have discussed inventive step on the basis of the problem-solution approach. Therefore, the Court sees no reason to deviate from its application in the case at hand, in order to adopt a decision that is consistent with the defence arguments and with the dialectic exchange that took place between the parties during the proceedings. It is widely recognized that the problem-solution approach consists of the following stages (see also UPC CFI no. 324/2024 - decision 6.6.2025, LD Munich): (a) determining the closest prior art; (b) comparing the subject-matter of the claim at issue with the disclosure of the closest prior art and identifying the differences between both; (c) assessing the technical results (or effects) achieved by the claimed invention when compared with the identified closest prior art; UPC CFI no. 178/2024 - no. 432/2024 30 of 45 (d) defining the technical problem to be solved, the object of the invention being to achieve said results; (e) considering whether or not the claimed solution, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person. The parties agree to refer (only) to the JIT machine as the most promising starting point. No alternative has been suggested or proposed in identifying the closest prior art. Amended claim 1 differs from the JIT machine in that the lattice girder obtainable through the method consists of two lower chords, two diagonal members and an upper chord, wherein the two diagonal members extend back and forth between at least one lower chord and the upper chord in a zig-zag form. The effect of this difference is that an alternative type of lattice girder is obtained. Thus, the objective technical problem to be solved is how to adapt the JIT machine so that an alternative product - that is, a lattice girder that consists of two diagonal members extending back and forth between the at least one lower chord and the upper chord in a zig zag form - can be produced continuously. This definition of the technical problem is undisputed. There is a very slight difference between the parties about the definition of the person skilled in the art in the case at hand. For the Claimant he/she should be a “mechanical engineer with a university degree and several years of experience in constructing automatic machines for reinforcement processing” (page 19, reply to the statement of defence); for the Defendants a “mechanical engineer with a university degree and several years of experience in designing specific automatic machines for reinforcement processing, namely welding machines for manufacturing lattice girders”, because the field of automatic machines for reinforcement is very wide (page 30, rejoinder to reply to statement of defence). For the purposes of this decision, the two different definitions can be considered to be substantially equivalent, since the choice of one or the other does not make any practical difference. In any case, it seems more convincing to refer to persons skilled in the art with a specific degree of specialisation, given the likely breadth of the technical field in question. The Court considers that the Defendants’ attack on the lack of inventive step is well founded in light of the combination of the JIT machine and document DE 10037281 (hereafter DE’281, enclosure 51). Prior art document DE’281 (dated 3.5.2001) discloses an apparatus and a method for producing continuously a type of lattice girders alternative to the ones manufactured by the JIT machine. UPC CFI no. 178/2024 - no. 432/2024 31 of 45 These lattice girders consist of two lower chords, two diagonal members and an upper chord, wherein the two diagonal members extend back and forth between the lower chords and the upper chord in a zig-zag form. figure 1 DE 10037281 Defendants point out that a bending device 6 provided with a bending punch 14, actuated in alternating motion, is disclosed in figure 1 and in the description (see para. 13). The document teaches in detail in which sequence the bending and welding operation are carried out to continuously produce the lattice girder (see para. 14). The skilled person, starting from the JIT machines and confronted with the defined objective technical problem, would consider DE’281 because it deals with a method (and a device) for continuously producing lattice girders. The skilled person would find a hint in the same document, for the conversion from the production of lattice girders with individual V-shaped diagonal wires to the production with repeatedly bent diagonal members. Para. 4 mentions DE 2733252 (see Enclosure 52, 52A), which relates to the production of the former and para. 3 mentions AT 365486 (see Enclosure 53, 53A), which relates to the production of the latter. In particular, disadvantages of the former are highlighted. Further, the skilled person would find the solution therein, since all steps for production of a lattice girder with the claimed diagonal wires are described in detail. In particular, the skilled person would be explicitly taught to carry out - in sequence - the bending of the diagonal wires, UPC CFI no. 178/2024 - no. 432/2024 32 of 45 the welding thereof to the upper chord and then the welding thereof to the lower chords. The document teaches in detail in which sequence the relevant assemblies are arranged (bending assembly, upper chord welding assembly and lower chords welding assembly) along the production line. The skilled person would therefore find the appropriate solution for converting the JIT machine without any inventive skill. Claimant did not specifically reply to this attack in its Reply to the defence to the application to amend the patent. The Court considers that for producing the lattice girders according to DE’281, continuous diagonal wire 4 is fed to a bending device 6 and subsequently welded to the upper chord 2 and the lower chord 3 in a zig-zag form. A skilled person wishing to adapt the JIT machine for continuous production of a lattice girder of the type disclosed by DE’281, will actually learn from this document how to deform continuous diagonal members by means of the bending device 6, in order to obtain diagonal members extending back and forth between the lower chords and the upper chord in a zig-zag form. Therefore, the skilled person would have no difficulty in modifying the JIT machine by incorporating the bending device 6 from DE’281 in order to continuously produce an alternative type of a lattice girder, as defined in the objective technical problem. Furthermore, it is obvious to the skilled person to adjust the working stroke of the bending punch 14 of the bending device 6 to the height of the upper chord. Hence the subject matter of claim 1 does not involve an inventive step. The same arguments apply to claim 8 such that this claim is not inventive either. As the difference between the scope of protection of independent claims 1 and 8 of the first auxiliary request and of the second auxiliary request and of the third auxiliary request lies only in the features of the produced lattice girder, the above reasoning applies equally to the claims of the first and second auxiliary requests. Thus, in neither the first nor second auxiliary request does the subject matter of independent claims 1 and 8 involve an inventive step. 5.2.4. Auxiliary request 4 In the fourth auxiliary request, independent claims 1 and 8 are further limited by adding: (i) to claim 1, as amended by auxiliary request two, the features of claim 4 of the patent as initially granted and, at the end, the wording “wherein the two lower chords are welded to the two diagonal members after the upper chord has been welded to the two diagonal members”; UPC CFI no. 178/2024 - no. 432/2024 33 of 45 (ii) to claim 8, as amended by auxiliary request two, the features of claim 12 of the patent as initially granted and, in the end, the wording “wherein the upper chord welding device is arranged before the lower chord welding device in the direction of advance”. The amended claim 1 introduces the feature of the order in which the diagonal members are welded to the upper chords and lower chords, i.e. first welding to the upper chord and then welding to the lower chords. The amended claim 7 (renumbered) introduces the feature of the positioning order of the welding devices with respect to the direction of production advancement, i.e. first the upper chord welding device and then the lower chord welding device.5. Afterwards, Progress requested that the Court permit the filing of a “new” fourth auxiliary request pursuant to rule 30.2 of the Rules of Procedure, replacing auxiliary request 4 as originally filed (see reply to the application to amend the patent of 20.3.2025). The request is conditional so should the Court not allow the request, the “old” fourth auxiliary request would remain in the proceedings. The Claimant argues that the filing of the new AR4 was necessary and at the same time possible only as a consequence of the new invalidity attack to old AR4 raised by the Defendants on the grounds of insufficient disclosure pursuant to Articles 83 and 138.1(b) EPC, with particular reference to the amended version of claim 1. Defendants challenge the admissibility of the new AR4 on the grounds that it was filed late, without valid justification, and at a time that prevented them from mounting a full defence. 5 1. A method of continuously producing a lattice girder by welding a lower chord arrangement which includes two lower chords, and an upper chord which is arranged at a specific height in relation to the lower chord arrangement to two diagonal members which extend back and forth between the two lower chords and the upper chord in a zig-zag form, wherein welding of the two lower chords and the upper chord to the two diagonal members is effected by means of a lower chord welding device and an upper chord welding device, characterized in that the height of the upper chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder, wherein the upper chord is cut prior to a change in its height relative to the lower chord arrangement and in that the upper chord and the two lower chords are fed stepwise to the upper chord welding device and the lower chord welding device respectively, wherein the two lower chords are welded to the two diagonal members after the upper chord has been welded to the two diagonal members 7. Apparatus for continuously producing a lattice girder comprising a lower chord arrangement which includes two lower chords, an upper chord arranged at a specific height relative to the lower chord arrangement and two diagonal members which extend back and forth between the two lower chords and the upper chord in a zig-zag form, wherein the two lower chords and the upper chord are welded to the two diagonal members and the apparatus for that welding operation includes a lower chord welding device and an upper chord welding device, wherein the apparatus further includes a cutting device for cutting the upper chord, characterized in that the apparatus further includes a device for height adjustment of the upper chord during the continuous production of the lattice girder and in that the apparatus further includes an advance device for stepwise feed of the upper chord and the two lower chords to the upper chord welding device and the lower chord welding device respectively, wherein the upper chord welding device is arranged before the lower chord welding device in the direction of advance. Only clean versions of the claims have been provided by Claimant. UPC CFI no. 178/2024 - no. 432/2024 34 of 45 Rule 30.1 RoP provides that the patentee may amend the patent including a specific application to this purpose in the Defence to the counterclaim for revocation. According to rule 30.2 RoP, subsequent applications for amendments to the patent can only be admitted with the permission of the Court. This provision thus grants the Court the discretionary power to allow applications for amendment of the patent even if an application for amendment of that patent has already been filed and if the time limit for amending the patent, i.e. the time limit for the defence to the counterclaim for revocation, has already expired. In exercising its discretion, the Court must observe the principles of proportionality, flexibility, fairness and equity set out in the Preamble to the RoP (see UPC CFI no. 255/2023 - order 27.2.2024, CD Paris). It must be avoided that the patent proprietor, by successively filing various applications for amendment, deprives the opponent of the opportunity to respond at an early stage and the Court of the opportunity to deal with the applications in an appropriate manner. In this respect, when deciding whether to allow a new amendment, it will be important to consider whether the new amended version would have been necessary at an earlier stage in response to the arguments already put forward by the party seeking annulment and whether the late amendment request will cause delays in the proceedings (UPC CFI no. 210/2023 - order 27.6.2024, LD Mannheim). In order for the Court to strike an appropriate balance between the conflicting interests in connection with the application to amend the patent, the applicant must justify its application and explain why the later amended version is necessary. The application must also enable the Court to examine whether the subsequent applications could have been filed at an earlier stage (See UPC CFI no. 733/2024 - order 12.9.2025, LD Düsseldorf). In the present case, the arguments put forward by the Defendants in support of their claim that the ‘old’ AR4 is invalid due to insufficient disclosure are by no means new. AWM and Schnell have merely reiterated a position that has been apparent since their initial defence, namely that the correct interpretation of the patent claims, with particular regard to the feature “diagonal member which extends back and forth between the at least one lower chord and the upper chord”, encompasses methods (and machines) for producing lattice girders with two endless repeatedly bent diagonal members as well as with (at least) two individual V-shaped diagonal members (as for the JIT machines). At the moment of the timely submission of the first set of auxiliary requests, in compliance with the deadline indicated in Rule 30.1 RoP, the Claimant was already fully aware of the existence of this precise and fundamental objection, with the consequent ample and full opportunity to prepare the text of all the amendments in such a way as to overcome the interpretative doubt raised by the Defendants. The Claimant itself has repeatedly stated that one of the main purposes of the amendments is to make it even clearer that the invention refers only to methods (and machines) for producing lattice girders with endless repeatedly bent diagonal members. UPC CFI no. 178/2024 - no. 432/2024 35 of 45 Under the front-loaded system of UPC proceedings, parties are under an obligation to set out their full case as early as possible (Preamble of the RoP, para. 7). Therefore, the Court does not give permission for the subsequent application to amend as lodged by the Claimant in the brief dated 20.3.2025, comprising a new auxiliary request 4, because Progress was in the position to cover promptly and preventively any possible objection regarding the interpretative scope of features M2.3 and A2.3. Under these circumstances, the Court is of the opinion that the Claimant could and should have filed the auxiliary request earlier. Permission under Rule 30.2 RoP is therefore not given. Consequently, auxiliary request 4 is examined below in its original wording, as filed on 20.12.2024. Claimant argues that the features are disclosed in claim 4, claim 12 and figures 3, 4, 5, 8 (corresponding to claims 5 and 17 and the same figures of the originally filed application). The amendment limits the scope of the claim and both requirements provided by Articles 84 and 123 EPC are satisfied. Progress clarifies that the technical effect of this additional feature is to facilitate the centring of the two diagonal members with respect to the upper chord, because once the diagonal members have been welded to the upper chord it is only necessary to ensure that the position of the diagonal members with respect to the lower chords is correct in order to guarantee the correct positioning of the desired welding points. Defendants object on grounds of lack of clarity. In particular, it is not clear for the skilled person how this feature is to be interpreted in combination with the claimed stepwise advancement, according to which the welding of the upper chords and the welding of the lower chords to the diagonal members must occur in the same step. Therefore, the amended claim 1 carries an ambiguity which renders unclear any object of protection. Furthermore, AR4 introduces new subject matter, as the features in claim 1 as amended - wherein the two lower chords are welded to the two diagonal members after the upper chord has been welded to the two diagonal members - and the features in claim 8 as amended - wherein the upper chord welding device is arranged before the lower chord welding device in the direction of advance - represent an intermediate generalization. They are both extracted in isolation from the combination of interrelated features illustrated in figures 3 to 5 and 8. Claimant made an arbitrary selection of the features mentioned in the description - para. [0022], para. [0023] and para. [0024], para. [0028] - and shown in the figures and disclosed only in combination. Para. [0028] of the description mentions that the end position of the upward movement of the height-adjustable carrier 11 is shown in Fig. 4d. After that end position is reached, the lattice girder is further moved stepwise towards the right (the stepwise advance UPC CFI no. 178/2024 - no. 432/2024 36 of 45 being effected by means of the advance device 15 in the above described manner), namely until the end of the right-end part of the cut upper chord 3 is completely welded, that is to say until the height change position has reached the lower chord welding device 5 and the upper chord welding device 6, respectively (see Fig. 4e). The cited passage implies that the upper chord welding device 6 is arranged before the lower chord welding device 5 in the direction of advance as claimed, and the described arrangement is clearly functionally and structurally linked to the height-adjustable carrier 11. In turn, the height-adjustable carrier 11 is disclosed only in combination with a holding device 12 for the upper chord 3, arranged on the carrier 11 (see claim 9 as granted). In reply, Claimant adds that in the original application many of the details shown in the figures are subject‐matter of the dependent claims only, thereby stating clearly to the skilled person that these features are not relevant for achieving the overall aim and effect of the invention (see for more details page 16 of the rejoinder, dated 20.3.2025) The UPC Court of Appeal has set out the legal standard for the assessment of added matter (see UPC CoA no. 382/2024 - order 14.2.2025 and, more recently, UPC CoA no. 764/2024 - decision 2.10.2025). There is added matter if the claim as granted contains subject-matter that extends beyond the content of the application as filed. In order to ascertain whether there is added matter, the Court must thus first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content. The assessment of added matter cannot be restricted to only those parts of the original application which the patent proprietor indicated as a basis for an amended claim during the examination proceedings at the EPO, since a proper understanding of these parts also requires an assessment of their content in the context of the disclosure of the application as a whole. It is not required that a claim uses the exact same wording as used in the original application, as long as the skilled person would derive the combination of features from the whole application. Omitting a feature from a disclosed embodiment can be allowable if this feature does not contribute to, and is thus not relevant for, the technical teaching of the invention as disclosed in the original application. In other words, omitting a feature can be allowable if the skilled person would not consider said feature necessary for achieving the overall aim and effect of the invention. If there is no inextricable link between the features of several embodiments, not including a feature in an amended claim cannot be considered as an intermediate generalization. Omitting a feature from a disclosed embodiment may equally be UPC CFI no. 178/2024 - no. 432/2024 37 of 45 allowable if it is clear from the (functional) language of the claim that said feature is implicitly part of the subject matter of the claim as amended. When omitting a feature from the claim language (as amended) does not convey new information to the skilled person vis-à-vis the application as originally filed, the omission does not constitute added matter. From the principles as provided by the UPC Court of Appeal, it follows that it is always required to ascertain what is directly and unambiguously disclosed to the skilled person in the application as filed and to subsequently assess whether an amendment introduces subject matter that comprises technical information going beyond the subject matter that is disclosed in the application as originally filed. This test is consistent with the rationale of the prohibition of added matter within the context of the first-to-file system of the EPC, which is a matter of legal certainty for third parties relying on the application and is to prevent the situation wherein a patentee unwarrantedly improves its position only after filing its patent application. In line with this, it follows from the above principles set out by the UPC Court of Appeal that the content of an application must not be considered to be a reservoir from which features pertaining to separate embodiments of the application could be combined in order to artificially create a particular embodiment which was not so disclosed in the application as filed. This test essentially aligns with the long-standing case law of the EPO Boards of Appeal (see also UPC CFI no. 54/2024, 1.8.2025 - LD Munich). According to these principles, the Court considers that the sequence of welding the two diagonal members to the lower chords and to the upper chords as defined in method claim 1 cannot be derived directly and unambiguously from figures 3 to 5 and 8 as stated by Claimant, even when considered in combination with the features of claims 4 and 12. More specifically, the drawings do not disclose that the lower chords are welded to the two diagonal members after the upper chord has been welded to the two diagonal members. On the contrary, the drawings seem to indicate that the diagonal members are welded simultaneously to the upper chord and the lower chords by means of the upper chord welding device and the lower chord welding device. Accordingly, claim 1 of the fourth auxiliary request does not comply with Art. 123.2 EPC. By contrast, claim 7 of the fourth auxiliary request is deemed to comply with Art. 123.2 EPC. The wording of amended claim 7 of this fourth auxiliary request states that “the apparatus further includes an advance device (15) for stepwise feed of the upper chord (3) and the two lower chords (2) to the upper chord welding device (6) and the lower chord welding device (5) respectively, wherein the upper chord welding device (6) is arranged before the lower chord welding device (5) in the direction of advance”. UPC CFI no. 178/2024 - no. 432/2024 38 of 45 This feature thus specifies the relative location of the upper chord welding device with respect to the lower chord welding device in relation to the advance direction of the chords in the apparatus. The advancing direction and the corresponding relative position of the upper chord welding device and the lower chord welding device can be directly and unambiguously derived from the patent specification, in particular by reference to claim 4 and figures 3 to 5 and 8 (below, in detail, figures 3a and 3b). Accordingly, claim 7 of the fourth auxiliary request complies with Art. 123.2 EPC. This conclusion renders any possible consideration of the invalidity attack for insufficient disclosure under Articles 83 and 138 EPC superfluous, since it refers only to the amended version of claim 1 according to AR4. On the other hand, it is necessary to examine the Defendants’ further invalidity attack, based on the lack of inventive step of claim 7 as a result of the AR4. Following the problem-solution approach, it is undisputed that the closest prior art can be identified in the JIT machine, which includes all the features claimed in auxiliary request 2, which, in turn, is the basis for the amendment under consideration. According to the Claimant, the technical problem should be addressed as follows: “how to facilitate the centring of the two diagonal members with respect to the upper chord”. Defendants object to this definition, as the centring step is not claimed, and the alleged technical effect is not mentioned in the application as filed. Moreover, Claimant mentions clamps for fixing the diagonal members to the upper chord, but these clamps are not claimed either. Even though a skilled person would understand that welding and centring are connected, since any centring step - and corresponding centring means - are missing from the independent claims, UPC CFI no. 178/2024 - no. 432/2024 39 of 45 the technical problem should be formulated broadly, such as “how to devise an alternative method for fixing the upper and lower chords to the diagonal members of a lattice girder”. Claimant replies that the technical effect of the additional features of the fourth auxiliary request is to facilitate the centring of the two diagonal members with respect to the upper chord because once the diagonal members have been welded to the upper chord it is only necessary to ensure that the position of the diagonal members with respect to the lower chords is correct in order to guarantee the correct positioning of the desired welding points. It would be more difficult to correctly center the diagonal members with respect to the upper chord because the position of the upper chord must be variable in height, otherwise it would not be possible to effect the height change during the continuous production of the lattice girder. The skilled person knows that the only actions to be performed on the wires which will form the lattice girders are cutting and welding. According to the patent application, welding of the upper chord and centering the upper chord are connected to each other, because on page 4, last paragraph to page 5, first paragraph (paragraph 13, first sentence of the patent) the original application states: “To ensure that the upper chord is fed to the upper chord welding device in the optimum fashion, it can be provided that the upper chord is centred prior to welding thereof to the at least one diagonal member, in the course of the method according to the invention.” This proves that the effect of facilitating the centering of the two diagonal members with respect to the upper chord due to the welding of the upper chord to the diagonal members is encompassed by the technical teaching and embodied by the same originally disclosed invention. The difference between the subject matter of claim 7 and the JIT machine is the relative position of the lower chord welding device and the upper chord welding device with respect to the advancing direction of the chords. The Court agrees with and hereby adopts the interpretation given by the Enlarged Board of Appeal in case G2/21, according to which the relevant standard for the reliance on a purported technical effect when assessing whether or not the claimed subject-matter involved an inventive step concerned the question of what the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention. The technical effect relied upon, even at a later stage, needed to be encompassed by that technical teaching and to embody the same invention. UPC CFI no. 178/2024 - no. 432/2024 40 of 45 The technical problem must be derived from effects directly and causally related to the technical features of the claimed invention. An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the application in question. This is precisely what is happening in the present case, since the Claimant formulated the technical problem taking into account a technical effect that is not directly and causally related to the technical features of the claimed invention as disclosed. The technical effect of the claimed invention, according to the Claimant, is to facilitate the centring of the two diagonal members with respect to the upper chord, because once the diagonal members have been welded to the upper chord it is only necessary to ensure that the position of the diagonal members with respect to the lower chords is correct in order to guarantee the correct positioning of the desired welding points. EP’230 considers the centring problem only with regard to the upper chord. In para. [0013] there is an explicit reference to the problem of centring the upper chord, and for that purpose the corresponding device according to the invention ideally includes a centering device which is preferably equipped with a gripper, clamp or another technical solution usually employed by a man skilled in the art for that purpose. Para. [0023] states that finally, a centering device is arranged on the height-adjustable support, with the aid of which the upper chord can be centred before it is fed to the upper chord welding device. The patent description makes no explicit reference to the possibility or necessity of achieving better centring of the diagonal members with respect to the upper chord. As already highlighted with reference to claim 1 and as correctly noted by the Defendants, the drawings show the positioning of the welding devices as described in amended claim 7 but do not illustrate the technical effect that the Claimant wishes to attribute to them, as they seem rather to suggest that the best centring of the diagonal member is achieved by simultaneously welding the diagonal member to the upper chord and to the lower chords during the same advancement step. The relative positions of the upper chord welding device and of the lower chord welding device is therefore irrelevant for this purpose and, on its own, does not lead to the technical effect alleged by the Claimant. In light of the foregoing, the Court finds that the amended version of claim 7 lacks inventive step. 5.2.5 Auxiliary request 5 In the fifth auxiliary request, independent claims 1 and 8 - as limited by auxiliary request 2 - are further limited by including the feature that “the two lower chords are fed stepwise to the UPC CFI no. 178/2024 - no. 432/2024 41 of 45 lower chord welding device, wherein the two diagonal members and the two lower chords are fed to the production process at the same height”6. The feature is disclosed in claim 4 and claim 12, para [0034] (corresponding to claims 5 and 17, page 13, lines 11 to 14 of the originally filed application) According to the Claimant the technical effect of this additional feature is that even during a change of height of the upper chord relative to the lower chords, the lower chords and the diagonal members can stay at the same height because the change of height is taken into account by bending the diagonal members with changed length of the limbs of the diagonal members. Defendants hold that this amendment introduces new subject matter as it represents an inadmissible intermediate generalisation. The feature wherein the two diagonal members (4) and the two lower chords (2) are fed to the production process at the same height is extracted in isolation from the combination of interrelated features illustrated in para. [0034] that refers to a second specific embodiment (figure 8) In the fifth auxiliary request, the feature has been added to independent claims 1 and 8 that “the two lower chords (2) are fed stepwise to the lower chord welding device (5), wherein the two diagonal members (4) and the two lower chords (2) are fed to the production process at the same height” 6 1. A method of continuously producing a lattice girder by welding a lower chord arrangement which includes at least one lower chord, in particular two lower chords, and an upper chord which is arranged at a specific height in relation to the lower chord arrangement to at least one two diagonal members which extends back and forth between the at least one two lower chords and the upper chord, in particular in a zig-zag form, wherein welding of the at least one two lower chords and the upper chord to the at least one two diagonal members is effected by means of a lower chord welding device and an upper chord welding device, characterized in that the height of the upper chord relative to the lower chord arrangement is changed during the continuous production of the lattice girder, wherein the upper chord is cut prior to a change in its height relative to the lower chord arrangement, and in that the two lower chords are fed stepwise to the lower chord welding device, wherein the two diagonal members and the two lower chords are fed to the production process at the same height. 8. Apparatus for continuously producing a lattice girder comprising a lower chord arrangement which includes at least one lower chord, in particular two lower chords,, an upper chord arranged at a specific height relative to the lower chord arrangement and at least one two diagonal members which extends back and forth between the at least one two lower chords and the upper chord, in particular in a zig-zag form, wherein the at least one two lower chords and the upper chord are welded to the at least one two diagonal members and the apparatus for that welding operation includes a lower chord welding device and an upper chord welding device, wherein the apparatus further includes a cutting device for cutting the upper chord, characterised in that the apparatus further includes a device for height adjustment of the upper chord during the continuous production of the lattice girder, and in that the apparatus further includes an advance device for stepwise feed of the two lower chords to the lower chord welding device, wherein the two diagonal members and the two lower chords are fed to the production process at the same height. UPC CFI no. 178/2024 - no. 432/2024 42 of 45 The addition of the feature that the two diagonal members and the two lower chords are fed to the production process at the same height constitutes an intermediate generalization. According to Claimant, this feature is based on para. [0034] of the patent specification: the left- hand part of the apparatus further includes a wire change device, a cutting device 38 and a bending machine. They serve to process the diagonal members. The diagonal members and the lower chords are fed to the production process at the same height so that they appear to be in superposed relationship as fig. 8 in a side view That is not the case in reality. However, for a proper functioning of this bending machine (24) within the apparatus of Fig. 8 (second embodiment), it is required that the two diagonal members are fed at the level of the lower chord to the bending machine. Thus, this feature is functionally and structurally related to the position and the working principle of the bending machine (24) within the embodiment of the apparatus of figure 8, as shown below. Accordingly, introduction of the feature into claims 1 and 8 that “the two lower chords (2) are fed to the production process at the same height” constitutes an intermediate generalization and consequently does not comply with Art. 123.2 EPC. 6. Conclusion In conclusion, Claimant’s application to amend the patent is entirely dismissed. As a result of the revocation action, European Patent EP 2726230 B1 is to be revoked in its entirety in the territory of all Contracting Member States in which the patent has effect. Consequently, the infringement action is unfounded and to be dismissed. 7. Value of the case and legal costs At the end of the interim conference the Court set a preliminary value of 2,000,000 EUR for the infringement claim and of 2,000,000 EUR for the counterclaim for revocation. UPC CFI no. 178/2024 - no. 432/2024 43 of 45 Progress has developed a detailed virtual calculation to determine the value of the case. This calculation is based on the assumption that the Defendants sell six machines per year at an average price of 1,300,000 EUR each. The proceeds of these sales are subject to an average license fee of 3%. The final value obtained using this calculation basis is approximately 2,000,000 EUR, given the patent expiry date of 22.6.2032. A former employee of the company and current member of the board of Progress has filed a witness statement (see Claimant’s Enclosure C) where he states that he has seen/heard of a commercial offer by AWM of 2,000,000 EUR for a Girderflex machine. The Defendants strongly deny selling six machines per year and claim that they sell at a lower price than the Claimant indicates. They offer to document these assertions at the Court’s request and on a confidential basis. The Panel confirms the judge-rapporteur’s decision on the value of the case. The machines in question incorporate complex mechanical technology and are designed to withstand significant production loads. The parties indicate that the service life of these machines is approximately 20/25 years. The purchasing companies therefore make a significant and long-term investment, the amount of which is likely to align with the values expressed by the Claimant. The patent in question had a residual validity of approximately nine years at the commencement of these proceedings. Given these considerations, the value of 2,000,000 EUR each for the infringement action and for the counterclaim for revocation is fully justified. Pursuant to Art. 69.1 UPCA, the Claimant - as unsuccessful party - shall bear the costs of the infringement action and the counterclaim for revocation, up to a ceiling determined in accordance with the rules of procedure. According to the ceiling for recoverable costs adopted by the Administrative Committee on 24.4.2023, as set forth in rule 152.2 RoP, there is a maximum limit of 200,000 EUR for cases with a value of up to 2,000,000 EUR. Therefore, in the case at hand the ceiling for recoverable costs for the infringement action and the counterclaim for revocation is set at 400,000 EUR in total. The successful party will be awarded costs in accordance with rules 150 et seq. RoP. DECISION - the European Patent EP 2726230 B1 is revoked in its entirety in the territory of all Contracting Member States in which the patent has effect; - the application to amend the patent is dismissed; UPC CFI no. 178/2024 - no. 432/2024 44 of 45 - the Registry shall send a copy of this decision to the European Patent Office and to the national patent office of any Contracting Member States concerned, after the time limit for appeal has expired; - the infringement action is dismissed; - the costs of the infringement action and the counterclaim for revocation are to be borne by the Claimant - the value in dispute for the infringement action and the counterclaim for revocation is set at EUR 2,000,000 each; - the ceiling for recoverable costs for the infringement action and the counterclaim for revocation is set at 400,000 EUR in total. Milan, 27 October 2025. Pierluigi Perrotti presiding judge and judge-rapporteur Camille Lignières legally qualified judge Alima Zana legally qualified judge Koen Callewaert technically qualified judge for the Deputy Registrar INFORMATION ABOUT APPEAL An appeal against the present Decision may be lodged at the Court of Appeal, by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of its notification (Art. 73 UPCA, rules 220.1(a), 224.1(a) RoP). UPC CFI no. 178/2024 - no. 432/2024 45 of 45 INFORMATION ABOUT ENFORCEMENT An authentic copy of the enforceable decision or order will be issued by the Deputy Registrar upon request of the enforcing party (Art. 82 UPCA, rule 354 RoP, rule 69 RegR).

Key Holdings

• An invention is considered part of the state of the art if found clearly, integrally, directly, and unambiguously in a single piece of prior art, identical in its constituent elements, form, arrangement, and features. This applies even when a novelty attack is based on prior art made available by use.
• When assessing inventive step, the technical problem must be derived from effects directly and causally related to the claimed invention's technical features. An effect requiring additional information not available to the skilled person from the patent application cannot be validly used in the problem formulation.
• Patent claims are the decisive basis for determining protective scope under Art. 69 EPC. The description and drawings serve as explanatory aids, not to extend the subject-matter beyond the claim's literal meaning, and are interpreted from the perspective of a person skilled in the art to balance proprietor protection and legal certainty.
• The Court's discretion to allow subsequent applications for patent amendments (Rule 30.2 RoP) must observe proportionality, flexibility, fairness, and equity. Late amendments should be justified and not cause undue delay or deprive opponents of response opportunities, especially if the need for the amendment was apparent earlier.
• Added matter (Art. 123.2 EPC) occurs if the claim extends beyond the application as filed. The original application is not a reservoir for combining features from separate embodiments to create a new, undisclosed embodiment. Omitting a feature is allowable only if it does not contribute to the invention's technical teaching or if the skilled person would not consider it necessary for the overall aim and effect.

Tags

• Added Matter
• Admissibility of Amendments
• Claim Construction
• Counterclaim
• Infringement
• Inventive Step
• Novelty
• Prior Art
• Problem-Solution Approach
• Unified Patent Court

Related Rules

• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 2 – Supplementary protection certificate
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Preamble – Preamble to the Agreement on a Unified Patent Court

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