UPC_CFI_688/2024

METHOD AND APPARATUS FOR IMPLEMENTING BEARER SPECIFIC CHANGES AS PART OF A CONNECTION RECONFIGURATION THAT IMPACTS THE SECURITY KEYS BEING USED

Parent infringement case:UPC_CFI_303/2024

RevocationCounter Claim for RevocationMunich LDCounter claim for revocationCase Closed

Overview Decisions Reasoning Citations Documents Timeline

Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.

Plain-English summary

Motorola Mobility LLC sued ASUS entities for infringement of EP 3 972 309 B1 (a telecom standard-essential patent on bearer-specific security key changes during LTE connection reconfiguration). The Munich Local Division revoked claims 1 and 11 for all 17 UPCA member states on the basis of added matter — the claimed feature combinations could not be derived from the parent application — and dismissed both the infringement action and all auxiliary amendment requests, with Motorola bearing the full costs.

Accepted arguments

What the court agreed with — by party.

Claims 1 and 11 of EP 3 972 309 contain added matter extending beyond the original parent application
ClaimantLegal basis: Art. 76(1) EPC; added matter
Note: Munich Local Division accepted ASUS's argument that the claimed feature combinations of claims 1 and 11 cannot be derived from any explicit text, claim, passage or drawing of the parent application (Stammanmeldung), either individually or in overall context.

Rejected arguments

What the court did not agree with — and why.

Applications to amend the patent (auxiliary requests) should cure the added-matter defect
RespondentLegal basis: Art. 76(1) EPC; R. 30 RoP
Reason: The auxiliary requests did not address the ground of lack of original disclosure (added matter), and could therefore not affect the outcome of the revocation counterclaim.
Claims 1 and 11 of EP 3 972 309 are infringed by ASUS devices
ClaimantLegal basis: Art. 65 UPCA
Reason: Because claims 1 and 11 were revoked for added matter, they are invalid and the infringement action based on those claims was dismissed.

Key legal principles

Doctrines and rules cited in the reasoning.

Added matter: subject matter of a patent extending beyond the content of the original parent application renders claims invalid (Art. 76(1) EPC)Added matter assessed against all text, claims, passages and drawings of the parent application individually and in overall context Amendment application not addressing the operative revocation ground (added matter) cannot save the patent If the claims relied on in infringement are revoked, the infringement action necessarily fails

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Claim construction notes

The court examined whether the feature combinations in claims 1 and 11 (relating to bearer-specific security key changes during LTE connection reconfiguration) could be derived from the parent application. It found no passage, claim or drawing in the parent application that expressly or implicitly disclosed those specific combinations.