Progress Maschinen & Automation v AWM (CFI, 27 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 27 October 2025 (UPC_CFI_178/2024 and UPC_CFI_432/2024), the Milan Local Division upheld the counterclaim of AWM and Schnell, revoked in its entirety Progress Maschinen & Automation’s EP 2 726 230, concerning the continuous production of lattice girders, dismissed the application to amend and, as a result, the infringement action. The patent, maintained by the EPO after the oppositions were rejected, fell before the UPC against an earlier machine of the defendant itself. The decision shows the UPC’s strict approach to late auxiliary requests and intermediate generalisations.

Facts and procedure

The action was preceded by a saisie and inspection ordered without hearing the defendants on 25 September 2023 and executed on 17 October 2023, and by a dispute over access to the report decided by the Court of Appeal on 23 July 2024. Progress brought the merits action on 15 April 2024, AWM and Schnell responded on 25 July 2024 with a revocation counterclaim. The patentee filed an application to amend with five auxiliary requests on 20 December 2024 and a new auxiliary request 4 on 20 March 2025. The oral hearing took place on 16 September 2025. The patent claims a method of continuously producing a lattice girder in which the upper chord is cut before its height is changed during production.

The applicable law

The division applied Art. 69 EPC and its Protocol, the claim being the decisive basis and the description an aid to interpretation, together with Art. 54, 56 and 123(2) EPC and the problem-solution approach used by the parties. It referred to Enlarged Board of Appeal decision G 2/21 on relied-on technical effects. Amendments fall under Rules 30.1 and 30.2 RoP, and costs under Art. 69 UPCA and Rule 152.2 RoP.

Question

Construed without the patentee’s distinction between ‘standard’ and ‘very special’ lattice girders, is the patent novel and inventive over AWM’s JIT machine, and can any auxiliary request save it?

Decision

The distinction between standard and special girders was rejected as arbitrary, having no basis in the patent’s language. Continuous production allows a temporary stop to change the chord height, and a single inverted-V diagonal suffices (section 4). The JIT machine, made, offered and sold since 2008 without the patentee disputing those facts (Rule 171.2 RoP), anticipates claims 1 and 8 (section 5.1). Auxiliary requests 1 to 3 restore novelty but not inventive step, combining the JIT machine with DE 10037281 being obvious (section 5.2.3). The new auxiliary request 4 was refused under Rule 30.2 RoP, as the construction objection had been known since the Statement of Defence. In the original request 4, claim 1 adds matter and claim 7 lacks inventive step, the centring effect relied on not being encompassed by the patent’s teaching within the meaning of G 2/21 (section 5.2.4). Request 5 is an impermissible intermediate generalisation (section 5.2.5). The patent is revoked for all Contracting Member States concerned, the infringement action is dismissed and Progress bears the costs of both actions, each valued at EUR 2 million, within an overall ceiling of EUR 400,000.

Key points for practice

• A construction with no anchor in the patent’s language is rejected, even where it would assist validity.
• An auxiliary request answering an objection known since the Statement of Defence is late under Rule 30.2 RoP.
• A technical effect relied on for inventive step must derive from the patent’s teaching, in line with G 2/21.
• Practical point: rejection of oppositions at the EPO offers no shelter against prior use, which the UPC examines afresh in the counterclaim.

Provisions applied

Agreement on a Unified Patent Court

Art. 24(1)(c), 65(2) and 69(1)

Rules of Procedure

Rules 30.1, 30.2, 50.2, 152.2, 171.2, 263 and 320

European Patent Convention

Art. 54, Art. 56, Art. 69, Art. 84, Art. 123(2), Art. 138(1)

Case law cited

Progress Maschinen v AWM, 23 July 2024 (Court of Appeal, UPC_CoA_177/2024, access to the saisie report), Court of Appeal, 25 September 2024 (UPC_CoA_182/2024), 14 February 2025 (UPC_CoA_382/2024) and 2 October 2025 (UPC_CoA_764/2024), various first instance decisions cited by number

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.