Rematec v Europe Forestry (CFI, 31 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 31 January 2025 (UPC_CFI_340/2023), the Mannheim Local Division (Judges Tochtermann, presiding, Kircher, rapporteur, Kokke and Geier, technically qualified) upheld Europe Forestry’s revocation counterclaim against Rematec’s EP 2 548 648, concerning a grinding mill, and accordingly dismissed the infringement action without examining whether the products infringed. Claim 1 was held to lack novelty over D3 (DE 34 14 567 A1), and claim 15 to lack inventive step.

The decision is chiefly of interest for its method: the broad construction of the claim terms, adopted before any validity analysis, brings the patent close to the nearest prior art. It has since been reversed in its entirety by the Court of Appeal. The operative part revokes the patent in its entirety for the thirteen States still concerned and orders Rematec to bear three quarters and Europe Forestry one quarter of the costs.

Facts and procedure

Rematec, the proprietor of the patent, filed in 2012 and granted in 2014 without opposition, had withdrawn its opt-out on 7 June 2023. It accused Europe Forestry, a Dutch company, of offering and selling « Europe Grinders » and « Europe Chip Mills », alleging direct infringement of claim 1 and indirect infringement of claim 15, and sought among other things an injunction in twelve States, recall, information and publication, and damages. Europe Forestry counterclaimed for revocation. Rematec defended the patent as granted and, in the alternative, in nine amended versions. At the hearing on 27 November 2024, Europe Forestry withdrew its counterclaim for eleven States, including the United Kingdom, Switzerland and Spain. According to the decision, this partial withdrawal accounts for the quarter of the costs borne by it.

The applicable law

The division applied Art. 65(2) UPCA and Art. 138(1)(a) EPC, together with the novelty requirement of Art. 54(2) EPC. On construction, it followed the Court of Appeal’s order of 26 February 2024: the claim is the decisive starting point for the scope of protection under Art. 69 EPC and its Protocol, and the description and drawings must always be consulted, not only to resolve an ambiguity.

Question

Is a grinding mill claim, broadly construed (« material to be ground » not limited to wood chips, and « substantially radial » feed and discharge), novel and inventive over a prior hammer mill?

Decision

No. « Material to be ground » may not be narrowed to wood chips, « substantially radial » does not require strict geometric radiality, and the absence of a screen at the discharge opening is a negative feature. So construed, claim 1 was entirely disclosed by D3: the inner wall feature does not require a smooth wall, and radial feed and discharge are met by one of D3’s figures, since the openings need only allow such flow. In the alternative, even if strict radiality were required, the feature would be obvious from the tangential inlets described in D3.

Claim 15 was not anticipated, since D3 does not disclose radial discharge of all the material, but it was obvious on the same reasoning. Auxiliary requests 1 to 3 also failed, D3 being combined with D5 or D7 for forced feeding and the screw conveyor. Auxiliary requests 4 to 8, adding openings at the same axial height, grinding mainly between the grinding elements and the wall, or radial forced feeding, added nothing inventive, those features being disclosed in D3 or obvious, and auxiliary request 9, adding ribs inclined at 30 to 60 degrees, followed from combining D3 with D9. The patent was therefore revoked in its entirety for Germany, the Netherlands, Austria, Belgium, Bulgaria, Denmark, Finland, France, Italy, Portugal, Romania, Sweden and Slovenia, and the infringement action was dismissed without further examination. Rematec bears three quarters of the costs and Europe Forestry one quarter.

Key points for practice

• Claim construction, settled once at the outset of the reasons, then governs the novelty analysis: a broad reading of the terms widens the relevant prior art accordingly.
• The division upheld revocation without examining infringement, making any technical debate on the accused products unnecessary.
• A partial withdrawal of the counterclaim at the hearing affects the apportionment of costs.
• Practical point: before suing, test the construction to be advanced against the closest prior art, and prepare auxiliary requests that genuinely depart from it.

Provisions applied

Agreement on a Unified Patent Court

Art. 32(1)(a) and (e) and Art. 65(2)

European Patent Convention

Art. 54(2), Art. 69 and Art. 138(1)(a)

Case law cited

Court of Appeal, 26 February 2024, NanoString v 10x Genomics (UPC_CoA_335/2023), Düsseldorf Local Division, 30 March 2024 (UPC_CFI_463/2023)

Related decisions

• Rematec v Europe Forestry, 17 February 2026, Court of Appeal decision reversing this decision.

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.