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- within Technology topic(s)
1. Key takeaways
Interim conference reduced the number of auxiliary requests and prior art documents
Following the order issued after the interim conference, Maxell reduced the number of auxiliary requests from 44 to 10. Samsung, which had originally cited 24 documents against the main request and the auxiliary requests, correspondingly reduced its attacks against the main request to added matter, lack of novelty based on 3 documents, and lack of inventive step based on a combination of 2 documents; the attacks against the auxiliary requests were reduced to a set of 5 documents (mn. 13-16).
A grammatical plural in the claim wording did not require an actual plurality of elements
The proprietor argued that the phrase “a history of operations” requires more than one operation, which would have avoided anticipation by prior art disclosing only a single operation. The Court rejected this understanding based on functional considerations (technically, it was meaningful to use only a single operation) as well as on an embodiment in the patent describing a scenario with a single operation (mn. 43-45), and applied the resulting construction equally to novelty, allowing a single operation in the prior art to destroy novelty.
The Court examined only the narrowest auxiliary request since its obviousness invalidates all broader requests as well
In case auxiliary requests limit the scope of protection of the patent progressively, and the auxiliary request that limits the scope furthest is not considered inventive, the previous auxiliary requests are also obvious as these contain less distinguishing features (headnote 2, mn. 68).
A plurality of routine modifications, absent any synergistic effect between them, amounts to a mere aggregation of features
In the absence of any functional interdependencies that establish a synergistic effect, a plurality of routine modifications that the skilled person would each take as a next step and as a matter of routine, amount to a mere aggregation of features that is obvious (headnote 1, mn. 80).
A pointer to combine two prior art documents was found in the background section of the closest prior art
The claim required the mobile phone to trigger a handback, instructing the television to stop displaying and return content to the phone. Embodiments of D1 disclosed only a forward handover from mobile phone to television, with no return mechanism. The background section of D1, however, mentioned that a user might want to continue watching on the mobile phone after leaving the television behind. The Court found this sufficient to direct the skilled person to D3, whose “catch operation” discloses that reverse handback in detail (mn. 84-86, 96-99).
2. Division
LD The Hague
3. UPC number
UPC_CFI_251/2025, UPC_CFI_769/2025
4. Type of proceedings
infringement action, counterclaim for revocation
5. Parties
Claimant / Defendant in the Counterclaim: Maxell, Ltd., Japan
Defendant / Claimants in the Counterclaim: Samsung Electronics Co., Ltd., Korea; Samsung Electronics GmbH, Germany; Samsung Electronics France, S.A.S., France; Samsung Electronics Benelux B.V., the Netherlands
6. Patent
EP 2 061 230
7. Body of legislation / Rules
R. 19.7 RoP, R. 105.5 RoP, Art. 56 EPC
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