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Overview · Filed: Feb 12, 2024

UPC_CFI_54/2024

VERIFIABLE DEVICE ASSISTED SERVICE POLICY IMPLEMENTATION

InfringementMain Infringement ActionMunich LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Headwater Research LLC sued Samsung Electronics entities at the Munich Local Division for infringement of EP 2 391 947, a patent covering network management policy implementation on Android mobile devices. Samsung successfully counterclaimed for revocation, with the court finding the patent invalid for lack of inventive step both as granted and in all 24 auxiliary requests filed by Headwater; the court also ruled Samsung's Art. 138(1)(e) invalidity attack inadmissible. The infringement action was dismissed and a separate revocation counterclaim was fully upheld.

Accepted arguments
What the court agreed with — by party.

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

    RespondentLegal basis: Art. 138(1)(a) EPC; Art. 56 EPC

    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

    RespondentLegal basis: Art. 138(1)(c) EPC; 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

    ClaimantLegal basis: Art. 138(1)(e) EPC; applicable German and French 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

    RespondentLegal basis: Art. 69(4) UPCA; R. 158 RoP

    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.

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

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

    ClaimantLegal basis: Art. 56 EPC

    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

    ClaimantLegal basis: R. 158 RoP

    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

    ClaimantLegal basis: R. 175 RoP

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

Key legal principles
Doctrines and rules cited in the reasoning.
problem-solution approach to inventive step under EPO case law applied by UPCinvalidity attack based on Art. 138(1)(e) EPC inadmissible under applicable national lawsecurity for costs for US-based non-practicing entity under R. 158 RoPUS bank guarantee not adequate security; deposit requiredlate-filed prior art documents admissible in response to auxiliary requestscancellation of second oral hearing upon finding all forms of patent invalid

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • ZP8-ZP9 (late-filed documents admitted in response to AR1-24)Obviousness combination
Claim construction notes

The claims relate to a verifiable device-assisted service policy implementation system for Android devices (network management of mobile end-user devices with OS Android 7 or higher). The claim construction was contested but the substantive analysis is not reproduced in the available excerpts.