Motorola Mobility v ASUSTek Computer (CFI, 10 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

The Munich Local Division revokes claims 1 and 11 of Motorola Mobility’s EP 3 972 309 (split bearer configuration in dual connectivity) for added matter over the parent application, rejects the amendment requests and, as a result, dismisses the infringement action against ASUSTek Computer, ASUS Computer and ASUSTEK (UK) concerning 5G-capable devices. Issued in the joined proceedings UPC_CFI_303/2024 and UPC_CFI_688/2024, the decision confirms that a divisional patent must stay within the content of each earlier application and that auxiliary requests which do not address the ground of invalidity upheld serve no purpose.

Facts and procedure

Motorola Mobility alleged direct and indirect infringement of claims 1 and 11 by 5G-capable smartphones and laptops. The defendants counterclaimed for revocation of those claims for lack of novelty and added matter. Motorola filed Auxiliary Requests 0 to 10. The oral hearing took place on 9 July 2025. The reasons are not numbered.

The applicable law

The subject matter of a divisional patent must not extend beyond what the skilled person derives directly and unambiguously, including implicitly, from each earlier application. The panel construes the claims under Art. 69 EPC and its Protocol, following the case law of the Court of Appeal.

Question

Do claims 1 and 11, which provide for a second connection reconfiguration message and omit the bearer identification field and chaining counter found in the parent application, extend beyond the content of that application?

Decision

The panel answers yes (section A.IV). The parent application discloses neither explicitly nor implicitly a first and a second reconfiguration message: it describes a single message, so adding a second message carrying the counter used to derive a third security key is an inadmissible extension. Omitting the bearer identification field and the chaining counter, presented in the parent as elements of the reconfiguration message, amounts to dropping an essential feature. The auxiliary requests are rejected because they do not address that ground of invalidity (section A.V). With the claims revoked, the infringement action is dismissed without any infringement analysis (section B). Motorola, having lost on both claims, bears the costs (section C). The novelty attacks are not examined.

Key points for practice

• For a divisional, added matter is assessed against the parent application as well as the application as filed.
• Omitting a feature presented as essential in the original disclosure is enough to establish added matter.
• Auxiliary requests that do not cure the added-matter objection upheld are of no avail.
• Practical point: the proprietor of a divisional should build its auxiliary requests in response to each added-matter attack, application by application.

Provisions applied

Agreement on a Unified Patent Court

Arts 69 and 73(1)

Rules of Procedure

Rules 118.8, 158.2, 220.1(a), 224.1(a), 354 and 355.4

European Patent Convention

Art. 69 and its Protocol on Interpretation

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), Court of Appeal, UPC_CoA_382/2024, Expert e-Commerce v Seoul Viosys, Court of Appeal, 2 October 2025 (UPC_CoA_764/2024 and UPC_CoA_774/2024).

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.