Seoul Viosys & Anor v expert e-Commerce & Anor (UPC_CGI_483/2023 & UPC_CFI_363/2023)

• These decisions related to joint infringement actions brought by Seoul Viosys in relation to two of its patents concerning light emitting diodes and revocation counterclaims brought by the second defendant.
• The Düsseldorf LD found that the fact that the invalidity counterclaim was only expressly raised by the second defendant and not by the first defendant did not affect the admissibility of the claim. The court did not decide to separate the proceedings against each defendant in this case but, if it had done so, the first defendant would not have been able to rely on the lack of validity arguments in its proceedings. However, because the proceedings were kept together, if the patent was declared invalid due to the claim of one defendant, then the infringement claim as a whole as against both defendants would lack its basis.
• EP 320 was held to be invalid due to added subject matter, while EP 698 was held to be valid and infringed.
• In relation to EP 698, the Düsseldorf LD assessed inventive step on a more patentee-friendly basis compared to the EPO, taking the view that the next step for the skilled person from the prior art would take them outside of the scope of the claim and as such the claim was inventive. The court found in relation to a first prior art document that “the skilled person has no reason to look for a solution to reduce possible tension between the two layers and possibly to provide a further (stress-relieving) layer for this purpose. For the design of the metal barrier layer with palladium, he already has a material at his disposal in which such tensions do not occur in the first place”
• As for EP 320, the Düsseldorf LD also appeared to depart from the EPO approach on added matter. It took a less literal approach that lent on the description of the patent to interpret the test (the granted claim must be directly and unambiguously derivable from the original application) in a more patentee-friendly way.

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