TCL Europe v Corning (UPC_CFI_337/2025)
Decision date:
24 February 2026
Osborne Clarke summary
- This decision concerned a revocation action brought by TCL against Corning, an international manufacturer of specialty glass, regarding Corning’s patent concerning boroalumino silicate glass. TCL claimed invalidity on the basis of lack of novelty, lack of inventive step, insufficient disclosure and added matter
- On claim construction, the Munich CD applied the principles set out by the Court of Appeal in Nanostring v 10x Genomics and Insulet v EOFlow. In doing so, it held that the skilled person, reading the claim as a whole, would understand the various features of claim 1 to be interdependent. Based on expert evidence from both parties, the court considered it to be part of the common general knowledge that in glass systems like the one produced by the claimed method, the individual components are interdependent and the effects of adding or removing components or changing concentrations are often non-linear.
- In considering added matter, the court noted that the application as filed did not contain the exact wording of feature 1.4, but literal support is not required to satisfy Article 138(1)(c) EPC. It is sufficient if the skilled person can, directly and unambiguously, using their common general knowledge, derive the subject matter of the claim from the application as a whole. Applying this standard, all of the features of claim 1 were found to have basis in the application as filed and there was no added matter.
- On sufficiency of disclosure, the court applied the framework from the Court of Appeal in Amgen v Sanofi – is the skilled person able to reproduce the claimed subject matter on the basis of the patent without any inventive effort and without undue burden. An invention is sufficiently disclosed if the patent specification shows the skilled person at least one way – or in the case of functional features: one technical concept – of performing the claimed invention. TCL had argued that the invention was not sufficiently disclosed over the whole range of the claimed invention as the invention required a specific range in the viscosity to be performed. The court disagreed with this on the proper construction of the claim and, accordingly, found that the skilled person would be able to reproduce the claimed subject matter without any inventive effort or undue burden.
- The court confirmed the established UPC standard on novelty, citing the Court of Appeal in Mammut v Ortovox: it is decisive whether the subject-matter of the claim with all its features is directly and unambiguously disclosed in the prior art. The Munich CD found the subject matter of the patent to be novel. There was some discussion on the law relating to novelty of numerical ranges. The Munich CD found that, as a general rule, a generic disclosure does not take away the novelty of a specific (combination of) features. In this case, the skilled person would have had to make a considerable number of selections from multiple broadly defined ranges without any teaching in the prior art to justify those selections in order to arrive at the claimed subject matter. As such, there was no direct and unambiguous disclosure of the claimed subject matter in the prior art.
- On inventive step, the court followed the approach from the Court of Appeal in Amgen v Sanofi and Meril v Edwards. In this case, TCL had tried to rely on one specific example in a prior art document but did not provide a justification or explanation as to why the skilled person would proceed from that specific example in insolation. The Munich CD held that a realistic starting point is typically a prior art disclosure as a whole; the selection of a particular example merely because it comes closest to the claimed subject matter in structural terms risks introducing hindsight at the outset of the analysis. Where claim features are interdependent in providing a solution to the objective problem, dividing the objective problem into separate sub-problems and addressing each independently amounts to impermissible hindsight reasoning. The court found that none of the prior art starting points, alone or in combination, rendered the claimed subject matter obvious. The non-linear and unpredictable interdependencies within glass compositions of this type meant that the skilled person would not have arrived at the claimed solution with a reasonable expectation of success.
- The court dismissed the revocation action in its entirety. TCL was ordered to bear Corning’s legal costs.
Issue
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