Tiroler Rohre v SSAB Europe (CFI, 6 June 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 6 June 2025, in Tiroler Rohre’s infringement action and the counterclaim for revocation of SSAB Swedish Steel and SSAB Europe Oy, the Munich Local Division holds that claim 1 of EP 2 839 083 B9 (driving shoe for a tubular pile) as granted lacks novelty, but that the patent is to be maintained in the limited form of the third auxiliary request, and that the GS115, GS140 and GS170 products infringe that limited version. The decision matters for practice through its two headnotes: the burden of proving that infringement is impossible lies on the defendant, and suitability of the device is enough, regardless of whether the claimed effects occur regularly or only by chance. The operative part orders an injunction, recall, destruction, information and publication backed by penalty payments, and puts 80% of the costs on the defendants.

Facts and procedure

The patent, filed on 12 April 2013 claiming priority of 20 April 2012 and granted on 22 November 2017, protects a driving shoe that can be fitted onto the end of a tubular pile. The claimant sought, among other things, an injunction for twelve States and publication of the decision. The defendants sought dismissal and, by counterclaim, revocation of the patent in full. The patentee defended the patent as granted and, in the alternative, in twenty-nine auxiliary requests, examined in the order 3, 1, 2, then 4 to 29.

The applicable law

The division construes the claim on the basis of its wording, with the description and drawings as aids (section IV). Novelty and inventive step fall under Arts. 54 and 56 EPC and revocation under Art. 138(1)(a) EPC, inventive step being assessed with the problem and solution approach, several realistic starting points being permissible (section V.1). The territorial reach of the decision follows from Art. 34 UPCA and the burden of proof from Art. 54 UPCA.

Question

Is claim 1 as granted novel over E3/E3’, is the limited version valid, and do the accused products fall within it, given the defendants’ argument that no suitable pile could be made?

Decision

“Fittable” is read broadly: a loose connection by support suffices, the support web need not be free-standing and the support surface need not be flat (sections IV.2 and IV.3). E3/E3’ discloses a driving shoe with a recess receiving the end of the pile, so claim 1 as granted is not novel (section V.2). The third auxiliary request, limiting the support web to a circular or annular segment spanning 40° to 120°, is novel and inventive, combining E3/E3’ with E7 involving hindsight (sections V.3.b and V.3.c). The alleged impossibility of infringement rests on circumstances outside the claim, which the defendants had to prove and did not. Amended dependent claims 4 to 7, 9, 10 and 11 are also infringed, but not claim 3 (section VI). The injunction extends to all states in which the patent has effect (section VII), the objection that recall and destruction are disproportionate fails for lack of reasoning (section VIII), and the fact that UPC decisions are published does not deprive a publication request of its purpose (section IX). The penalty payment is set at up to EUR 50,000 per infringement or per day of delay, the period running from the notification under Rule 118.8 RoP (section X). The parties having agreed on a lump sum of EUR 120,000 for costs, the division assesses the claimant’s share of failure at 30% on revocation and 10% on infringement, 20% overall (section XI). The operative part also orders destruction of the moulds, publication in four trade journals and compensation for all damage, and declares the decision immediately enforceable. Costs are borne 20% by the claimant and 80% by the defendants.

Key points for practice

• A defendant arguing that infringement is technically impossible for reasons outside the claim bears the burden of proof. The claimant need not plead the design of unclaimed components.
• A device suitable for achieving the claimed effects infringes even if those effects occur only exceptionally or by chance.
• The injunction covers every state in which the patent has effect, not only those where sales were shown (section VII).
• Practical point: a substantial limitation of the patent weighs on the costs split even where the attacked products remain infringing (section XI), prior art merely listed without argument is not examined (section V.3.d).

Provisions applied

Agreement on a Unified Patent Court

Arts. 33, 34, 47, 54, 65 and 76

Rules of Procedure

Rule 118.8

European Patent Convention

Art. 54, Art. 56 and Art. 138(1)(a)

Case law cited

Court of Appeal, UPC_CoA_335/2023, Court of Appeal, UPC_CoA_182/2024, Munich Local Division, 4 April 2025, UPC_CFI_501/2023, Munich Central Division, UPC_CFI_1/2023, and EPO Board of Appeal decision T 1078/23.

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.