Headwater Research v Samsung Electronics (CFI, 1 August 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 1 August 2025 (UPC_CFI_54/2024 and UPC_CFI_396/2024), the Munich Local Division revoked Headwater Research’s EP 2 391 947 in part, to the extent of claims 1, 2, 5, 6, 10 and 35, with effect in Germany and France, and accordingly dismissed the infringement action against Samsung Electronics GmbH, Samsung Electronics France and Samsung Electronics Co. Ltd. The only ground relied on was added matter: claim 1 omits the verifiability of the service policy implementation, which the application as filed presented as indispensable. The decision shows a local division applying the Court of Appeal’s added-matter test, and what happens when auxiliary requests do not engage with the ground of revocation that succeeds.

Facts and procedure

Headwater Research brought its infringement action on 12 February 2024. Samsung counterclaimed for revocation on 5 July 2024, and Headwater responded on 16 September 2024 with an application to amend the patent containing thirty auxiliary requests. The oral hearing took place on 20 May 2025. Samsung also challenged Headwater’s standing as proprietor and relied on prior art against novelty and inventive step.

The applicable law

A patent is revoked if its subject matter extends beyond the content of the application as filed (Articles 138(1)(c) and 123(2) EPC). The Local Division applied the Court of Appeal’s test in Abbott v Sibio: matter implicitly disclosed forms part of the application, but features taken from separate embodiments may not be combined to create an undisclosed one. Article 76(1) UPCA bars the Court from granting more than was requested.

Question

Do the asserted claims, which omit the verifiability of the service policy implementation and combine features drawn from separate passages of the application, extend beyond the application as filed?

Decision

Yes. Having construed the claims (the “first” and “second” networks need not use different technologies, an “agent” is a software unit performing a task autonomously), the Local Division held that verifiability was foreseen as an integral and indispensable part of the invention, whereas claim 1 claims no form of verification at all. Features 1.4 and 1.4a, alone or combined with features 1.6 and 1.6.a, were not directly and unambiguously disclosed either: combining them amounted to artificially creating an embodiment. Claims 2, 5, 6, 10 and 35 shared these defects. Only auxiliary request 17 addressed added matter, and it did not cure the defect, since “can be used to assist” cannot be read as a mandatory verification step. The Court declined to examine the other requests of its own motion. With the asserted claims invalid, the infringement action failed without the Court deciding standing, novelty or inventive step. Headwater was ordered to bear Samsung’s reasonable and proportionate costs. The value in dispute was set at EUR 2 million for the action and EUR 3 million for the counterclaim. Procedural applications under Rules 9, 263, 30.2 and 333 were left undecided, as they could not affect the outcome.

Key points for practice

• A feature presented in the application as essential to the effect of the invention cannot be left out of the claim without adding matter.
• The Local Division will not examine of its own motion auxiliary requests that the proprietor has not put forward as an answer to the ground of revocation in issue.
• Where added matter is decisive, the Court need not rule on standing, novelty or inventive step.
• Practical point: each auxiliary request should be expressly tied to the ground of revocation it is meant to overcome, failing which it may not be examined.

Provisions applied

Agreement on a Unified Patent Court

Arts 26, 31, 32(1), 33(1), 63(1), 64, 76(1) and 82(2)

Rules of Procedure

Rules 9, 19.7, 25.1, 30.2, 33, 42, 263, 333, 352.1 and 354.1

European Patent Convention

Arts 54, 56, 69, 70, 123(2) and 138(1)

Regulation (EU) No 1215/2012

Arts 7(2), 24(4), 26, 71a and 71b

Case law cited

Abbott v Sibio, Court of Appeal, 14 February 2025, UPC_CoA_382/2024, VusionGroup v Hanshow, Court of Appeal, 13 May 2024, UPC_CoA_1/2024, NanoString v 10x Genomics, Court of Appeal, UPC_CoA_335/2023, Insulet v EOFlow, Court of Appeal, 30 April 2025, UPC_CoA_768/2024.

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.