expert e-commerce & Anor v Seoul Viosys (UPC_CoA_774/2024 & UPC_CoA_764/2024)

• Seoul Viosys (SV) is the owner of a patent relating to a light emitting diode (LED) (EP 698). This patent is based on a divisional application of a European Patent application (published as EP 320), which was also a divisional application of a European Patent application (the parent application or EP 598 A2). The parent application is the European regional phase of a Korean language PCT application. The patent in suit (EP 698) claimed priority from two Korean applications.
• SV started infringement proceedings in the Düsseldorf LD. expert filed a counterclaim for revocation. In response, SV filed various auxiliary requests. The Düsseldorf LD found that the patent could not claim priority from the two Korean patent applications, but, contrary to expert's arguments, it held that the patent did not contain added matter nor was it obvious. The court also found that the patent was infringed by expert.
• On appeal, expert argued that the Court of Appeal should annul the Düsseldorf LD's decision and revoke the patent. SV requested that expert's appeal be dismissed or validity of the patent confirmed on the basis of an auxiliary request.
• The Court of Appeal first acknowledged that the skilled person was undisputed. It then considered what the claim meant to the skilled person and went through the applications looking for the basis for the elements of the claim, applying the claim interpretation principles from NanoString v 10x Genomics.
• In interpreting feature 5.2 of claim 1, the Court of Appeal agreed with expert. At first instance, SV had agreed with the interpretation put forward by expert but changed its position on appeal, arguing that the Düsseldorf LD had been correct in its interpretation. The Court of Appeal disagreed, noting that the fact that Figures 24-26 only showed the opening within the mesa area would not lead the skilled person to any conclusion other than that there should be no further mesa between the outer opening and the edge of the substrate. The court noted that the skilled person would assume that the embodiment in Figures 24-26 was not covered by claim 1. This is particularly the case because the description did not discuss feature 5.2 in relation to Figures 24-26 and the patent also contained a number of other figures that, as the parties agreed, had nothing to do with the invention according to claim 1.
• The parties agreed that claim 1 covered LEDs compromised of only one mesa. This was also the view of the Düsseldorf LD, which the Court of Appeal endorsed. On this basis, in expert's revocation counterclaim, it argued that claim 1 went beyond the content of the original application as it covered embodiments with a single mesa. SV counterclaimed by pointing out that Figures 24-26 disclosed the presence of a single mesa on the LED chip.
• The Court of Appeal gave clarity on the principles relating to added matter, explaining that:

"An inadmissible extension of the subject-matter exists if the subject-matter of the granted claim extends beyond the content of the application as filed. In order to determine this, the court must first determine what information the skilled person would derive directly and unambiguously from the entirety of the application as filed if viewed objectively and on the date of filing with his general knowledge. In this context, implicitly disclosed objects are also to be regarded as part of the content, i.e. those that are clear and unambiguous from what is expressly mentioned."

• It further added that in the case of patents arising from a divisional application, this requirement also applies to each earlier application. Thus, in this case, the subject-matter of granted claim 1 must not go beyond: "(1) the disclosure of the originally filed application of the patent in suit and (2) the disclosure of the original PCT application which has entered the regional phase and constitutes the patent application of the divisional application".
• The Court of Appeal's approach to the principles of added matter looks similar to the EPO's approach, although notably the court made no mention of the EPO's approach or any previous UPC decisions on added matter.
• Ultimately, the Court of Appeal held that claim 1 did contain an inadmissible broadening of the subject matter of the parent application as it covered embodiments (an LED with a single mesa) that were not clearly and unambiguously disclosed in the parent application. As such, the Court of Appeal overturned the Düsseldorf LD's first instance decision.
• Moreover, the Court of Appeal held that there was added matter even if an embodiment with a single mesa was disclosed in the embodiments of Figures 24-26 of the parent application because, based on the Court of Appeal's interpretation, feature 5.2 of claim 1 was not clearly and unambiguously disclosed in those Figures. As for SV's auxiliary requests, the Court of Appeal held that these all related to embodiments with a single mesa and therefore could not lead to a valid claim.
• In view of the invalidity of the patent due to added matter, the court did not discuss the further invalidity attacks raised by expert or SV's infringement claim. SV was considered the unsuccessful party and order to pay expert's costs for the appeal and first instance proceedings for both its infringement action and expert's revocation counterclaim.

This analysis is based on a machine translation of a decision not available in English.