2026-11-09 - LD Milan - Ericsson v. ASUS et al. - UPC_CFI_319/2024
- Aktenzeichen:
- UPC_CFI_319/2024
- Datum:
- Spruchkörper:
- Court of First Instance - Milan (IT) Local Division
- Art:
- Decision
- Parteien:
- Telefonaktiebolaget LM Ericsson v. ASUSTek Computer Inc., Arvato Netherlands B.V., Digital River Ireland Ltd.
Kernaussage: HEADNOTES
2026-11-09 - LD Milan - Ericsson
v.
ASUS et al.
UPC_CFI_319/2024
HEADNOTES
1. Having regard to Art. 84 EPC and Art. 123(3) EPC, the requirement of legal certainty
disallows the introduction of an evident lack of clarity into the patent claims if this lack
is suitable to create variable scopes of protection depending on selective limiting effects
that could be derived from the description without excluding a violation of Art. 123(3)
EPC.
2. A document uploaded to a standardisation body’s document-management server is available to the public where at least one member of the public could obtain access without
being bound by an express or implicit obligation of confidentiality. The applicant’s own
identification of the upload date as the publication date may corroborate public availability but does not dispense with the assessment of access and confidentiality.
notable
The Milan Local Division revoked Ericsson's HEVC-related patent in its entirety on the counterclaim and dismissed the infringement action against ASUSTeK and Arvato. A limitation introduced during prosecution, restricting the claimed method to a current picture in a layer other than the highest decoded layer, was not directly and unambiguously disclosed in the parent application: the application disclosed applying the method to any picture, but did not individualise this subgroup, so the claims extended beyond the earlier application (Art. 76(1), Art. 138(1)(c) EPC). For the same reason the claims were not entitled to priority, so the April 2013 HEVC standard became prior art and anticipated them. The Court also held that a JCT-VC draft uploaded to the standardisation body's document server was publicly available, and refused the single auxiliary request because deleting the limitation extended the scope of protection (Art. 123(3) EPC) and the replacement wording was unclear (Art. 84 EPC).
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent invalid (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“With priority lost, the April 2013 HEVC standard (made available on 13 April 2013) is prior art and directly and unambiguously discloses every feature of independent claims 1, 3, 5, 6, 8 and 9; independent ground of revocation [197]-[201]. The HEVC draft JCTVC-K0030_v3 was also held publicly available on upload to the JCT-VC server [117]-[121].”
Added Matter
Patent invalid (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Feature 1.3 (current picture belonging to a layer other than the highest decoded layer) not directly and unambiguously derivable from the parent application; the application did not individualise that subgroup of pictures. Ground under Art. 138(1)(c) with Art. 76(1) EPC established for all claims [155]-[166].”
Clarity
Patent invalid (this ground)Art. 84 EPC · derivative
“Clarity objection against the auxiliary request succeeded: the relationship between the method being 'performed on pictures in multiple layers' and the 'current picture' was not defined with sufficient precision, contrary to Art. 84 EPC [254]-[256], [267].”
Priority
Patent invalid (this ground)Art. 87 EPC · derivative
“The attack on priority succeeded: the limitation to pictures in layers other than the highest layer is not directly and unambiguously disclosed in the US priority document, so no claim is entitled to the priority date of 28 September 2012 and the effective date is 26 September 2013 [193]-[197].”