UPC – Maxell, Ltd. v. Samsung Electronics Co., Ltd and others, UPC CFI, Local Division The Hague, 10 August 2026, Case nos. UPC_CFI_251/2025, UPC_CFI_769/2025
Maxell, a Japanese-based consumer electronics company brought an infringement action against various members of the Samsung corporate group, under their granted European patent EP 2 061 230, which was in force in France, Germany and the Netherlands.
In response, Samsung argued non-infringement and also counterclaimed for invalidity of EP’230. Various invalidity attacks were initially filed, based on a total of 24 prior art documents, but ultimately following the interim conference, Samsung limited its invalidity attacks against the main request to one added matter attack, three novelty attacks, and a single inventive step combination of “Wormald” (D9) and “Milley” (D12). Similarly, a reduced set of attacks was agreed for the auxiliary requests, featuring only one or two attacks per AR.
In response to the counterclaim for invalidity, Samsung filed various counter-arguments but also submitted auxiliary requests, made up of several variations of each of 10 basic requests, giving a total of 44 requests. In response to the more focussed invalidity attacks, Maxell selected 10 of these auxiliary requests to take forward.
Ultimately, the Patent and all of the Auxiliary Requests were found to be invalid and therefore the infringement claim was dismissed. There were a few particularly notable points in this reasoning, as set out below – of particular interest is the approach taken to the assessment of inventive step in case of the claim including a series of modifications over the closest prior art, and also the Court’s approach in assessing inventive step of a series of progressively narrowing auxiliary requests.
The Court applied the principles set out in UPC CoA NanoString v 10x Genomics to interpret the claims.
The Patent related to “casting” technology, which allowed a user of a first device (e.g. mobile telephone) to “cast” video content to a secondary device (e.g. television display). One of the key points of construction in dispute was the interpretation of “content information” which claim 1 recites being received by a receiver unit of “A portable terminal” (e.g. cellular phone). “Content information” was deemed to refer not only to “internet-site-based content” (as argued by Samsung) but to “any content that the portable terminal may receive in a network setting, including video, audio, images and text”.
The Court was similarly reluctant to construe narrowly the term “history information”, which claim 1 recites as being acquired by a “history information acquiring unit” of the terminal. Both parties agreed that “history information” related to changes of a display state, and it was construed by the Court that “display” was not limited only to visual display but included all human senses, e.g. audio or haptic displays.
Based on the claim construction, in particular of these features, the Patent as a whole was found to lack novelty over D3.
Turning to the Auxiliary Requests, these were all considered to lack inventive step, using the inventive step approach as established in several prior Court of Appeal decisions (UPC_CoA_528/2024 and UPC_CoA_529/2024 Amgen v Sanofi/Regeneron and UPC_CoA_ 646/2024, Meril v Edwards. See also UPC_CoA_71/2025, VMR v Njoy and Fujifilm v. Kodak, all cited in the decision).
The Court reviewed the auxiliary requests and determined that they progressively limited the Patent, with auxiliary requests 7a and 8a being the narrowest, and in effect both being the same since the variation in wording between the two served only to address a potential added matter issue. The Court therefore determined that if AR7a lacked inventive step then so too must all of the other auxiliary requests. The decision therefore primarily considered only the validity of AR7a, albeit with brief comments provided in relation to AR8a and ARs 3d & 5d. Following this approach allowed the Court to streamline the invalidity case significantly compared to considering each auxiliary request in sequence.
Compared to claim 1 as granted, the amendments in AR7a introduced four different feature groups which effectively related, respectively, to: “handback functionality” which terminates the “casting” process; the content relating to an internet site requiring authentication; the portable terminal acting as a remote control; and the identification information for the content including a URL.
Of the four groups, only the “handback functionality” was considered to be a substantive technical distinction, and this was already considered to be pointed to by disclosure made in D1. The rest of the features were considered to be routine or to follow automatically when D1 was combined with D3.
Although it was acknowledged that these distinctions appeared numerous, they were each considered to be obvious and, since they did not achieve any further synergistic effect through being combined, we held to lack inventive step when taken together. It was considered that each simply provided “the standard functionalities that the skilled person would usually associate with these distinguishing features and for which the skilled person would routinely employ them in a technical implementation” (Paragraph 82 of Decision) and that no technical effect had been demonstrated “that a combination of two or more [of] these distinguishing features would add beyond a mere aggregation/juxtaposition” (Paragraph 82 of Decision).
Thus, the presence of a number of distinguishing features may not be sufficient to confer inventive step, if each of these features taken alone is obvious and the combination together lacks any further synergistic effect.
A copy of the Decision can be read here.
