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Overview · Filed: Jun 30, 2023

UPC_CFI_52/2023

Programmable hybrid transmitter

InfringementMain Infringement ActionMunich LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Plain-English summary

Avago Technologies sued Tesla entities for infringement of EP 1838002 B1 (a programmable hybrid transmitter patent) before the Munich Local Division. Tesla counterclaimed for revocation, arguing the patent was anticipated by prior art document D3. The court found claims 1 and 7 (and all dependent claims) fully anticipated by D3, revoked the patent for Germany, and dismissed the infringement action. Avago's auxiliary request to amend claim 1 to clarify that all three outputs are produced simultaneously was rejected as not introducing any substantive additional restriction.

Accepted arguments
What the court agreed with — by party.

  • EP 1838002 is anticipated (lacks novelty) over prior art document D3

    RespondentLegal basis: Art. 138(1)(a) EPC; Art. 54 EPC; Art. 65(2) UPCA

    Note: Munich Local Division found claims 1 and 7 (and dependent claims) of EP 1838002 B1 (programmable hybrid transmitter) fully anticipated by D3; patent revoked for Germany.

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

  • Auxiliary request to amend claim 1 to require all three outputs (normalized complex signal, offset information, and transmit property information) simultaneously

    ClaimantLegal basis: Rule 30 RoP; Art. 65(3) UPCA

    Reason: The proposed amendment (feature 1.1.2bis) introduced no additional restriction on the claim scope because the original claim, properly construed, already required all three outputs; amendment therefore did not overcome the anticipation finding.

  • Tesla's vehicles infringe EP 1838002 (programmable hybrid transmitter patent)

    ClaimantLegal basis: Art. 65(2) UPCA

    Reason: Infringement action dismissed due to invalidity of patent; whether infringement would have existed in case of a valid patent was left open.

Key legal principles
Doctrines and rules cited in the reasoning.
Patent can be revoked for anticipation (lack of novelty) by a single prior art document disclosing all claimed featuresDependent claims fall if independent claims they depend on are invalid, where not independently defendedClaim amendment in auxiliary request must actually narrow scope to overcome prior art; clarification that does not narrow scope does not assist validityInfringement action is dismissed without further analysis where patent is revoked

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • D3Novelty-destroying
Claim construction notes

The Munich Local Division construed claim 1 of EP 1838002 (a programmable hybrid transmitter with first and second modes) to require that offset information and transmit property information are necessarily associated with normalization of the complex signal. On this construction, the auxiliary request's amendment (explicitly requiring all three outputs) was found to introduce no additional restriction since the original claim was already construed to require this relationship.