Microsoft v Suinno Mobile & AI Technologies Licensing (CFI, 7 January 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

Ruling on Microsoft Corporation’s counterclaim for revocation (UPC_CFI_433/2024), the Paris Central Division revokes in its entirety European patent EP 2 671 173 held by Suinno Mobile & AI Technologies Licensing Oy, which concerns the ranking of search results according to the location of mobile stations. Claim 1 extends beyond the application as filed in respect of two features and, in any event, lacks inventive step. The decision matters chiefly for its statements on the admissibility of applications to amend under Rule 30 RoP: any substantive amendment requires a full set of amended claims, and the Court will not redraft requests on the proprietor’s behalf.

Facts and procedure

Suinno brought an infringement action against Microsoft on 9 April 2024 (UPC_CFI_168/2024). On 25 July 2024 Microsoft responded with a counterclaim for revocation based on added matter, lack of novelty and inventive step, and insufficiency. On 20 September 2024 Suinno filed its defence, a conditional application to amend the patent and its reply. Ordered on 27 September 2024 to provide security for costs of EUR 300,000, Suinno appealed unsuccessfully. The infringement action was dismissed by a decision by default of the Court of Appeal of 12 July 2025 (paragraphs 8 and 9). Microsoft’s request for a stay pending payment of costs was dismissed by the judge-rapporteur on 30 September 2025, and no appeal followed (paragraphs 13 to 15). The oral hearing took place on 31 October 2025.

The applicable law

On added matter, the Division asks what the skilled person derives directly and unambiguously, including implicitly, from the application as filed (paragraph 35), deleting a non-essential feature does not add matter (paragraphs 36 and 37). The decision refers to Art. 76(1) EPC (paragraphs 73, 87 and 104) and to Art. 123(2) EPC (paragraph 126). On amendments, Rule 30 RoP lays down objective requirements (time limit, at least one amendment, language), failing which the application is inadmissible, and requirements assessed by the Court (clarity, explanation of validity, reasonable number) (paragraphs 111 to 113).

Question

Does claim 1 of EP 2 671 173 extend beyond the application as filed, is it inventive over the prior art and, if not, are Suinno’s seventeen auxiliary requests admissible and capable of saving the patent?

Decision

The added matter ground succeeds for feature 1.2, as location by Wi-Fi was extended by an intermediate generalisation and the combined use of GPS, Wi-Fi and cellular networks was not disclosed (paragraphs 55 to 73), and for feature 1.4, as the application does not disclose a comparison between time-dependent and time-independent click-through rates (paragraphs 74 to 87). It fails for features 1.1, 1.5, 1.6 and 1.7 (paragraphs 38 to 54 and 88 to 104). Claim 1 is invalid and the dependent claims fall with it (paragraph 105). The number of auxiliary requests is not unreasonable (paragraph 118), but only Auxiliary Request I, filed with a full set of claims, is admissible (paragraphs 119 to 122), it amends only claims 6, 10 and 12 and does not cure the defect (paragraphs 123 and 124). Auxiliary Requests II to XVII are inadmissible (paragraph 125). In addition, claim 1 lacks inventive step over EP 2 264 662 A1 combined with US 2006/0253409 (paragraphs 127 to 133), as do the dependent claims (paragraph 134). The patent is revoked for all Contracting Member States in which it has effect and Suinno bears the costs (paragraphs 136 and 137), the value of the action is confirmed at EUR 5,000,000 (paragraph 138).

Key points for practice

• An application to amend that merely offers to “delete any dependent claim as needed”, or that does not provide a full claim set before the reply, is inadmissible (paragraphs 114, 119 and 125).
• An auxiliary request that leaves the invalid independent claim untouched is of no avail, whatever its effect on the dependent claims (paragraph 124).
• The Division addresses inventive step even though added matter suffices for revocation, which strengthens the decision on appeal (paragraphs 127 to 134).
• Practical point: a proprietor intending to rely on auxiliary requests should file, with the defence to the counterclaim, a full set of claims for each of them (paragraphs 111 to 114).

Provisions applied

Rules of Procedure

Rules 30 and 355

European Patent Convention

Art. 76(1), Art. 84, Art. 123(2) and (3)

Case law cited

Court of Appeal, 26 February 2024, UPC_CoA_335/2023, Court of Appeal, 14 February 2025, UPC_CoA_382/2024, Paris Central Division, 19 July 2024, UPC_CFI_255/2023, Court of Appeal, 25 November 2025, UPC_CoA_457/2024, Paris Central Division, 20 October 2025, UPC_CFI_189/2024, Munich Local Division, 18 April 2025, UPC_CFI_526/2024, Paris Central Division, 5 November 2024, UPC_CFI_309/2023.

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.