UPC CFI 54/2024

patent EP 2 391 947 lacks inventive step under Art. 56 EPC over the prior art

Note: Samsung's invalidity attack on inventive step succeeded both against the patent as granted and against all Headwater's auxiliary requests (AR1-24), leading to full revocation.

patent EP 2 391 947 contains added matter under Art. 123(2) EPC

Note: Samsung invoked added matter as one of its invalidity grounds; while the decision found invalidity primarily on inventive step, added matter was also pleaded.

invalidity attack based on Art. 138(1)(e) EPC is inadmissible under applicable national law

Note: The court accepted this argument at the interim conference stage, ruling Samsung's Art. 138(1)(e) attack inadmissible.

Headwater as a non-practicing US entity with no assets other than patents must provide security for costs

Note: Samsung's security-for-costs application was granted by the Munich LD at EUR 100,000; the court applied the CoA standard requiring legitimate and real concern about recoverability.

the patent as amended (auxiliary requests AR1-AR1-24) should be maintained as valid

Reason: All auxiliary requests were found to lack inventive step for the same reasons as the main request; the second oral hearing scheduled for September 2025 was cancelled.

security for costs should be set at no more than EUR 100,000 and may be provided by a US bank guarantee

Reason: The court set the amount at EUR 100,000 (accepting claimant's alternative) but held that a bank guarantee from a US bank was not adequate, consistent with CoA guidance.

the written witness statement of Dr. Raleigh qualifies as a full witness statement under R. 175 RoP

Reason: Samsung noted the statement lacked certain requirements of R. 175 RoP; the court did not call live witnesses.