Avago International Sales v Tesla Germany (CFI, 30 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision on the merits of 30 August 2024 (UPC_CFI_52/2023), the Munich Local Division ruled on the infringement action brought by Avago Technologies International Sales against Tesla Germany and Tesla Manufacturing Brandenburg on EP 1 838 002 (programmable hybrid transmitter), directed at the in-cabin radar of Tesla vehicles, and on the counterclaims for revocation. The grounds open with the outcome: the counterclaims are well founded, the patent is to be revoked and the infringement action dismissed. The division held that document D3, an earlier application published later and falling under Art. 54(3) EPC, anticipates claims 1 and 7, including in the version of the auxiliary request. The operative part revokes the patent for Germany, rejects the requests to amend and the infringement action, and orders Avago to bear the costs.

Facts and procedure

The patent, filed on 5 December 2006, is now in force only in Germany. Avago alleged that vehicles fitted with an in-cabin radar using a TI AWR6843 chip directly and indirectly infringed claims 1, 5, 6, 7, 11 and 12. The defendants denied infringement and counterclaimed for revocation. Avago defended the patent with auxiliary requests under Rule 30, which the defendants challenged as late. The oral hearing took place on 25 June 2024.

The applicable law

The division applied the approach to claim construction laid down by the Court of Appeal in NanoString v 10x Genomics: the claim is the decisive basis for the extent of protection, with the description and drawings always used as aids, and the same principles govern infringement and validity. For novelty under Art. 54(3) EPC, the invention must be disclosed directly and unambiguously in a single document, with all its elements.

Question

Are claims 1 and 7, construed as requiring cumulatively a normalised complex signal, offset information and transmit property information, new over the earlier application D3?

Decision

The division construed feature 1.1.2 (« at least one of ») as cumulative, rejecting the readings of both parties. A « complex signal » requires a real and an imaginary component processed on separate paths, and the up-conversion of feature 1.2 is performed by quadrature mixing. Claim 7 was assessed in the same way as claim 1. The counterclaims, directed against the registered proprietor in accordance with Rules 25, 42 and 8.6, are admissible, so the question of substantive ownership could be left open. As the action failed for invalidity, Avago’s standing did not need to be decided. Document D3 (WO 2007/010091) is prior art under Art. 54(3) and discloses the subject-matter of claims 1 and 7: its figures 3, 6, 8 and 10 form a single disclosure, showing a programmable hybrid transmitter operating in both claimed modes, the description linking the figures. The two input signals in D3 derive from the same outbound data, and up-conversion based on offset information is disclosed, the skilled person reading the « I/Q MOD » block as a quadrature modulator. The auxiliary request, which specifies that all three elements result from converting the outbound data, adds no limitation to the construction adopted for claim 1, its admissibility, challenged as late, could therefore be left open. The dependent claims, defended only on the basis of the patentability of claims 1 and 7, fall with them. Infringement was not examined. The operative part revokes the patent for Germany, rejects the requests to amend and the infringement action, and orders Avago to bear the costs (Art. 69(1) UPCA), no value in dispute is set.

Key points for practice

• An earlier application published later (Art. 54(3) EPC) may be enough for the patent to be revoked, and several figures of one document may be read together where the description links them.
• An auxiliary request that merely clarifies the construction adopted by the division adds no limitation and shares the fate of the main claim.
• A counterclaim for revocation is properly directed against the registered proprietor, without any need to decide on substantive ownership.
• Practical point: against Art. 54(3) prior art only novelty counts. Auxiliary requests must include a feature that the document does not disclose.

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1)

Rules of Procedure

Rules 8.6, 25, 30 and 42

European Patent Convention

Art. 54(3), 64 and 69

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, Munich Local Division, UPC_CFI_233/2023

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.