UPC_CFI_303/2024

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

InfringementMain Infringement ActionMunich LDInfringementCase 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 (US) sued ASUSTek Computer Inc. and related ASUS entities for infringement of EP 3 972 309, a telecommunications patent relating to bearer-specific changes during LTE connection reconfiguration impacting security keys. The Munich Local Division revoked claims 1 and 11 of the patent in full for added matter, finding the claimed feature combinations not derivable from the parent application (exhibit KWY-4), dismissed the infringement action, and ordered Motorola to bear all costs.

Accepted arguments

What the court agreed with — by party.

Claims 1 and 11 of EP 3 972 309 contain added matter beyond the parent application
RespondentLegal basis: Art. 76 EPC; Art. 65 UPCA
Note: Court found that the parent application (KWY-4) contained no passage, claim, or drawing from which the claimed feature combinations of claims 1 and 11 could be derived, and the combination did not emerge from the application as a whole.

Rejected arguments

What the court did not agree with — and why.

Claims 1 and 11 are supported by the parent application and do not go beyond its content
ClaimantLegal basis: Art. 76 EPC
Reason: Neither the claims, text passages, nor drawings of the parent application disclosed the specific feature combinations claimed in claims 1 and 11 of EP 3 972 309, and this could not be derived from the totality of the parent application.
Auxiliary requests to amend the patent should cure the added-matter defect
ClaimantLegal basis: Art. 65 UPCA; R. 30 RoP
Reason: The auxiliary requests did not address the added matter ground of invalidity and therefore could not influence the outcome of the revocation counterclaim.

Key legal principles

Doctrines and rules cited in the reasoning.

Added matter (lack of original disclosure) is assessed against the parent application as a whole, not just individual passages Patent claims invalid for added matter if neither the explicit text nor the drawings of the parent application disclose the claimed feature combination Auxiliary requests to amend must address the specific invalidity ground to be relevant Where asserted claims are invalid, the infringement action must be dismissed

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