PIRELLI TYRE v Sichuan Yuanxing Rubber (CFI, UPC_CFI_770/2024, 26 May 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 26 May 2026 in the joined proceedings UPC_CFI_770/2024 (infringement action) and UPC_CFI_556/2025 (counterclaim for revocation), the Milan Local Division ruled on Pirelli Tyre’s action against Sichuan Yuanxing Rubber on EP 3 519 207, concerning a motorcycle tyre. It dismisses the counterclaim, finds literal infringement of claim 1 by the HA-51R and HA-51F tyres shown at the EICMA trade fair and on the defendant’s website, and grants an injunction for all Contracting Member States where the patent is in force, together with publication on that website.

For practitioners, two points stand out: the Local Division applies the Court of Appeal’s inventive step criteria of 25 November 2025 while checking that the problem-solution approach leads to the same result, and it declines to take measurements from schematic drawings not made to scale.

Facts and procedure

At EICMA 2024 Pirelli applied for ex parte measures against Sichuan Yuanxing Rubber’s HA-51R and HA-51F tyres: the Local Division refused an injunction but ordered a seizure on 5 November 2024, carried out the next day. The defendant’s request for re-establishment of rights concerning service of the seizure order was refused on 14 July 2025. The withdrawal against a second defendant was recorded on 21 October 2025. Sichuan Yuanxing Rubber challenged the validity of the patent for insufficiency and lack of inventive step. The oral hearing took place on 14 April 2026.

The applicable law

The court construes the claims under Art. 69 EPC and its Protocol and examines the grounds of Art. 138(1)(a) and (b) EPC, in particular inventive step under Arts 52 and 56 EPC, with reference to Art. 65(2) UPCA.

Question

Is EP 3 519 207, as construed, sufficiently disclosed and inventive over D1, an off-road motorcycle tyre, alone or combined with other documents?

Decision

On construction, the « tread pattern » means its developed representation on a plane, a technique forming part of common general knowledge, and the void-to-solid ratio is calculated on that plane, disregarding groove walls and depth (sections 5.2 and 5.5). Transverse grooves are grooves running parallel to the axis of rotation, curved grooves included (section 5.6).

Insufficiency is rejected under the Court of Appeal’s test: the skilled person can reproduce the invention without undue burden, and any difficulty in reconciling two parts of a feature is at most a clarity issue (section 6.1).

On inventive step, having invited the parties to address the Court of Appeal decisions published after the written procedure closed, the court finds that D1, directed solely to off-road use, is not a realistic starting point for a compromise between road and off-road performance. Measurements taken from schematic drawings are not a disclosure. The combinations relied on do not yield all the features, since tyre parameters interact. Both grounds for revocation are rejected (section 6.3).

All features of claim 1 are found in the tyres, the division relying on the seized samples, the brochure and the defendant’s website, the defendant having offered no measurements of its own (sections 7.1 to 7.10). Presentation at the trade fair and on an English-language website, without an online shop but with a commercial contact form, amounts to offering and placing on the market under Art. 25(a) UPCA (section 8). The order dismisses the counterclaim, declares infringement, enjoins offering and placing on the market in all Contracting Member States where the patent has effect (Art. 34 UPCA), orders a notice on the homepage of the website for two months, sets penalty payments of EUR 400 per tyre and EUR 5,000 per day of delay, and orders the defendant to pay damages, to be assessed in separate proceedings, and costs, capped at EUR 56,000 per action. Recall, destruction, information and an interim award of damages are refused, absent proof of actual sales (section 9). The value in dispute is set at EUR 500,000 for each action, and the seized goods will be handed to the claimant once the decision is final (section 10).

Key points for practice

• The court checks the Court of Appeal’s holistic approach against the problem-solution approach and finds that both lead to the same result.
• Dimensions measured on figures not drawn to scale do not disclose a numerical ratio, whereas infringement may be proved by measurements on photographs that the defendant does not rebut (section 7.4).
• An English-language website presenting the products with a commercial contact form suffices to establish an offer in the Contracting Member States, even without online sales (section 8).
• Practical point: the choice of closest prior art must be justified by the technical problem as it emerges from the patent, without hindsight.

Provisions applied

Agreement on a Unified Patent Court

Arts 24(1)(c), 25, 34, 62, 63, 64, 65(2), 67, 68, 69, 80 and 82

Rules of Procedure

Rules 9, 25, 101, 118.8, 119, 125, 150, 152.2, 191, 197.3, 197.4, 206, 209.4, 212.3, 262, 262A, 265, 300, 354 and 355.4

European Patent Convention

Art. 52(1), 56, 69, 70(1), 99 and 138(1)(a) and (b)

Other provisions

Regulation (EU) No 168/2013, Arts 2 and 4, Italian Code of Civil Procedure, Art. 138

Case law cited

Amgen v Sanofi, Court of Appeal, 25 November 2025, Amgen v Regeneron, Court of Appeal, 25 November 2025, Court of Appeal, 25 November 2025 (UPC_CoA_457/2024), CJEU, 21 July 2011, Kelly, C-104/10, EPO Boards of Appeal, T 1000/12, T 412/09, T 1641/11 and T 2052/14

Related decisions

• Pirelli Tyre v Sichuan Yuanxing Rubber, 5 November 2024, seizure order made at EICMA.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.