Avago Technologies International Sales v Tesla Germany (CFI, 26 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 26 August 2024 (UPC_CFI_54/2023), the Hamburg Local Division dismissed as unfounded the infringement action brought by Avago Technologies International Sales against Tesla Germany and Tesla Manufacturing Brandenburg on EP 1 612 910, and partly upheld the counterclaim for revocation: claims 1 and 3 as granted lacked novelty, but claim 1 was held valid in the form of auxiliary request 1. Two procedural points, set out in the headnotes, matter for practitioners: failure to use the CMS workflow does not prevent a pleading lodged within the time limit from being timely, and a patent may be revoked only to the extent that a ground for revocation applies, which may mean independent claim by independent claim.

Facts and procedure

Avago, a Singapore company registered as proprietor of the patent since 15 March 2017, filed its action on 1 June 2023, the first day of the Court’s operation. The patent concerns a monitoring circuit for an on-board power supply and power supply control. The accused embodiment is the Tesla Model Y, whose AMD Ryzen processor is powered by one MP 2858 chip and five MP NM 8694 chips on a common circuit board. The defendants disputed the claimant’s title and counterclaimed for revocation. In its reply, Avago filed applications to amend the patent without using the CMS workflow, which it only opened on 4 March 2024. An auxiliary request 1bis was first presented at the oral hearing. The action and the counterclaim were joined for the hearing by order of 23 April 2024, and the hearing took place on 19 June 2024.

The applicable law

The registered proprietor benefits from a rebuttable presumption of title (Rule 8.5(c)). An application to amend the patent must be included in the defence to the counterclaim, within the two-month period of Rule 29(a) to which Rule 30.1 refers. Rule 4.1 requires pleadings to be lodged electronically using the available forms. On the merits, the Local Division applied Art. 65 UPCA and Art. 138 EPC, which confine revocation to the part of the patent affected by the ground relied on, together with Arts 54 and 69 EPC on novelty and claim interpretation.

Question

Is an application to amend lodged within the time limit, but outside the CMS workflow, admissible? Can a patent whose two independent claims are invalid as granted survive in part?

Decision

The Local Division first rejected the objection that the assignment had been signed by the same person on behalf of both parties: the presumption arising from registration was not rebutted. It then held the amendment applications admissible: using the available forms is a mere procedural burden (“Obliegenheit”), failure to comply with which does not mean the time limit was missed, and a more lenient standard was called for in the Court’s start-up phase. The panel adopted a functional construction of features 1.3 to 1.6: the power supply circuit need not be a single circuit, and the third device may be integrated into the integrated circuit. No added matter was found. On that construction, D1 (WO 02/093340) anticipated claims 1 and 3 as granted. Claim 1 was nevertheless valid in the form of auxiliary request 1, whereas claim 3 remained invalid in its auxiliary versions over D4. The patent was not revoked in its entirety. The infringement action was admissible but unfounded, and the counterclaim admissible and partly well founded. The feature added by auxiliary request 1, taken from former claim 2 (the third device arbitrates between the two devices according to their power needs or priorities), is not disclosed by D1, which instead provides individual power to each area, nor by D2, D3 or D5, and is not obvious, D1 leading away from taking account of the needs of the whole. D4, by contrast, anticipates claim 3 and renders its auxiliary versions obvious. As claims 1 and 3 are independent and do not form closed sets, the patent is maintained on amended claim 1, without any need to rule on request 1bis (Art. 65(3) UPCA and Art. 138(3) EPC). The action fails because Avago did not show that the Tesla Model Y power supply performs the claimed arbitration: the data sheet shows the two rails being handled separately, and the overall over-current limit is not enough, the panel also doubted that the received, rather than the delivered, current is measured. The operative part dismisses the action, revokes the patent beyond claim 1 in the form of auxiliary request 1 and splits costs 85% to Avago and 15% to the defendants. The values taken were EUR 1 million for the action and EUR 1.5 million for the counterclaim, uplifted by 50% under the Administrative Committee guidelines.

Key points for practice

• Failure to use the CMS workflow does not make a pleading late if it is lodged within the period set by the Rules of Procedure, although the panel also relied on the Court’s start-up phase to justify leniency.
• The Local Division accepts partial revocation affecting only some independent claims, unless the sets of claims put forward are closed sets.
• The functional construction of the claims, applied throughout the case, led to the granted claims being anticipated by D1.
• Practical point: proprietors should structure auxiliary requests so as to allow maintenance claim by claim rather than as closed sets.

Provisions applied

Agreement on a Unified Patent Court

Arts 32(1)(e), 36(3), 47(1), 63(1), 65(2) and (3) and 83(3)

Rules of Procedure

Rules 4.1, 8.5, 29, 30.1, 263.2 and 370.6

European Patent Convention

Art. 54, Art. 56, Art. 69 and Art. 138(1) and (3)

Regulation (EU) No 1215/2012

Arts 24(4), 71a and 71b

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.