UPC_CFI_483/2023

LIGHT EMITTING DIODE

InfringementMain Infringement ActionDusseldorf LDInfringementCase Closed

Overview Decisions Reasoning Citations Documents Timeline

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

Plain-English summary

Seoul Viosys brought an infringement action against expert e-Commerce GmbH and expert klein GmbH concerning its LED patent EP 3 223 320 before the Düsseldorf Local Division. Following a counterclaim for revocation by one defendant, the court revoked the patent for Germany, France, Italy, and the Netherlands on the ground of added matter under Art. 123(2) EPC — specifically, the requirement of a mesa with a reflective electrode arranged thereon was not present in the application as filed and could not be cured by any auxiliary request. The infringement action was dismissed and Seoul Viosys was ordered to pay all costs.

Accepted arguments

What the court agreed with — by party.

EP 3 223 320 is invalid for added matter (Art. 123(2) EPC): the claims include a mesa with a reflective electrode on it, which was not disclosed in the application as filed
RespondentLegal basis: Art. 138(1)(c) EPC; Art. 123(2) EPC
Note: The Düsseldorf Local Division found the requirement of a mesa with a reflective electrode arranged thereon was not disclosed in the original application; the feature was added beyond the application content.

Rejected arguments

What the court did not agree with — and why.

All auxiliary requests to amend the patent to overcome the added-matter objection
ClaimantLegal basis: Art. 123(2) EPC
Reason: All auxiliary requests likewise required a mesa with the reflective electrode arranged on it, thus the added matter could not be cured by any of the proposed amendments.
Infringement of EP 3 223 320 by expert e-Commerce and expert klein for LED products
ClaimantLegal basis: Art. 138(1)(c) EPC
Reason: Patent was revoked for invalidity (added matter); infringement action therefore lacks the necessary foundation.
A defendant that did not file its own revocation counterclaim can still benefit from invalidity arguments in its defence
RespondentLegal basis: R. 25.1 RoP
Reason: Under R. 25.1 RoP, invalidity argumentation is formally excluded for defendants who did not file a revocation counterclaim; however, as long as the court does not separate proceedings against co-defendants, this has no practical effect where other defendants did file a counterclaim.

Key legal principles

Doctrines and rules cited in the reasoning.

Where multiple defendants are sued jointly, each runs its own formally independent proceeding; acts of one defendant create no advantages or disadvantages for others A defendant who did not file a revocation counterclaim is formally barred from invalidity argumentation, but this has no practical effect as long as the proceedings against co-defendants (who did file) are not separated Security for enforcement (R.118.8 RoP) requires balancing claimant's effective enforcement interest against risk of unenforceable damages award; financial position of claimant is a relevant factor Added matter (Art. 123(2) EPC): subject-matter must be directly and unambiguously disclosed in the application as filed

Browse other cases on this principle.

Claim construction notes

The central claim construction issue was the interpretation of 'mesa' and 'reflective electrode arranged on the mesa.' The court found that Claim 1 protects a mesa structure with a reflective electrode disposed on top of it. This was not disclosed in the application as originally filed, which did not unambiguously disclose such an arrangement, constituting added matter.