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Overview · Filed: Jul 25, 2024

UPC_CFI_433/2024

METHOD AND MEANS FOR BROWSING BY WALKING

Parent infringement case:UPC_CFI_164/2024

RevocationCounter Claim for RevocationParis CDCounter claim for revocationOral Phase
OverviewDecisionsReasoningCitationsDocumentsTimeline
Plain-English summary

Microsoft Corporation filed a counterclaim for revocation of Suinno Mobile & AI Technologies Licensing Oy's EP 2 671 173 (location-based mobile search / browsing by walking) at the Paris Central Division. The court found claim 1 invalid for added subject-matter (Art. 123(2) EPC) and independently for lack of inventive step over BP07 combined with BP08; all auxiliary requests either failed to remedy the defects or were inadmissible for non-compliance with R. 30 RoP because the scope of proposed amendments was insufficiently clear for the court to understand without subjective reconstruction.

Accepted arguments
What the court agreed with — by party.

  • Claim 1 as granted lacks inventive step over EP 2 264 662 A1 (BP07) combined with US 2006/0253409 (BP08)

    Claimant

    Note: BP07 discloses all features of claim 1 except the local area receiver and short-range search; BP08 teaches exactly that combination to solve the objective technical problem of increasing location-contextual relevance of search results.

  • Auxiliary Requests II–XVII are inadmissible for failure to comply with R. 30(1) RoP (unclear scope of proposed amendments)

    ClaimantLegal basis: R. 30(1) RoP

    Note: Court found the proposed amendments left the court unable to unambiguously understand the scope of the claims without subjective reconstruction.

  • Patent as granted also contains added subject-matter in claim 1 (features 1.2 and 1.4)

    ClaimantLegal basis: Art. 123(2) EPC

    Note: Court found the patent invalid for added subject-matter; Auxiliary Request I failed to remedy this defect.

Rejected arguments
What the court did not agree with — and why.

  • Auxiliary Requests I–XVII save the patent from the invalidity attacks

    RespondentLegal basis: R. 30(1) RoP; Art. 123(2) EPC

    Reason: Auxiliary Request I did not remedy the added-matter defect; Requests II–XVII were inadmissible for failure to submit full sets of claims enabling unambiguous understanding of the proposed amendments.

Key legal principles
Doctrines and rules cited in the reasoning.
Problem-solution approach: objective technical problem must be identified from the distinguishing features before assessing obviousnessPatent amendment application must comply with R. 30 RoP (filing deadline, at least one amendment, official language, clarity, full claim set for substantive amendments)Court cannot assist parties in drafting amendments; amendments must be immediately intelligible without subjective reconstructionRequirements of R. 30(1) that are objective (deadline, language, inclusion of amendments) cause inadmissibility if not met; those that are discretionary (clarity, number, explanation) may lead to non-examinationAdded subject-matter assessed under Art. 123(2) EPC: features 1.2 and 1.4 not directly and unambiguously derivable from application as filed

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Prior art relied on
References cited and the role they played.
  • EP 2 264 662 A1 (BP07)Obviousness combination
  • US 2006/0253409 (BP08)Obviousness combination
  • WO 2012/104474 (application as filed of EP 2 671 173)Background
Claim construction notes

The court construed claim 1 of EP 2 671 173 (method for browsing by walking) around features including a mobile station configured to receive information pages via short-range communication links and to search received pages (features 1.5-1.6). The court found these distinguishing features over BP07 are taught by BP08 to solve the problem of increasing location-contextual relevance of search results.