Structural Novelty and Auxiliary Requests at the Paris Local Division
The Paris Local Division clarifies that product claims defined purely by structural features lack novelty over identical prior art structures, regardless of differing technical effects. The panel also provides guidance on managing multiple auxiliary requests.
The assessment of novelty for product claims defined purely by structural features has long rested on a strict physical comparison, independent of the inventor's intended purpose. The Paris Local Division's recent decision in UPC_CFI_138/2025 reinforces this boundary, confirming that a prior art document disclosing the exact physical structure anticipates a claim even if it was designed to solve an entirely different technical problem.
Water drainage versus air extraction
The dispute between Michelin and Goodyear centred on EP 2 323 858 B1, which claims a "multi-stage tire tread" featuring a "submerged longitudinal groove" and "submerged lateral grooves". The patent's stated aim is to maintain tire performance in wet conditions by providing additional void space for water drainage as the tire wears.
Goodyear sought revocation based on a single prior art document, KUNUGI, which disclosed a tire tread with submerged "bulges". Michelin argued KUNUGI was irrelevant because it addressed a fundamentally different problem: reducing air-pumping noise rather than channelling water.
The panel firmly rejected this functional distinction. Applying Article 54 EPC, the Court held that the same technical effect is not required in the case of a product invention defined by structural technical features only, which covers a product considered in its own right, independently of any technical result or effect (reasons 74). Because the claims recited a physical tread structure without functional limitations regarding water drainage capacity, the intended use was irrelevant.
The alternating arrangement of lateral grooves
Michelin's primary structural defence relied on a characterising feature of claim 1: that the lateral grooves extending from the first side of the longitudinal groove are "longitudinally offset" from those on the second side to form a "longitudinally alternating arrangement of lateral grooves".
Michelin contended KUNUGI did not disclose this alternating arrangement, pointing to a passage stating the lateral sipes could be arranged "arbitrarily". However, the panel looked to KUNUGI's Figure 1, observing that the sipes "are not in line; they are obviously shifted" (reasons 115). The Court concluded that the arbitrary placement described in the text merely meant the channels could start at an arbitrary axial position relative to each other, which was consistent with the fixed offset shown in the drawing.
Employee declarations and auxiliary requests
Both parties submitted written statements from individuals tied to their companies. The panel took a pragmatic approach, holding that although such statements do not carry the probative value of an independent and objective expert, they still constitute "valuable technical information" (reasons 65).
Michelin also submitted an application to conditionally amend the patent with 14 auxiliary requests. The panel found this a "reasonable number" under Rule 30.1(c) RoP because Michelin provided a table categorising the combinations, making them "manageable" (reasons 131). However, adding features like "configured to channel water when exposed" failed to confer novelty, as KUNUGI's grooves were physically suitable for water channelling regardless of their primary design (reasons 135).
Practical implications
This decision illustrates the vulnerability of product claims that rely on a novel intended use for a known physical structure. When defending such claims, practitioners must remember that if a prior art structure is physically capable of performing the claimed function, adding functional language like "configured to channel water" will not establish novelty over that structure.
Procedurally, the order offers a helpful blueprint for managing multiple auxiliary requests. By presenting 14 requests in a structured table that mapped the combinations of additional features, the patentee successfully convinced the panel that the volume was reasonable under Rule 30.1(c) RoP. While the requests ultimately failed on substantive grounds, this tabular approach is an effective tactic for navigating the Unified Patent Court's procedural thresholds.
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Further Reading
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