Nera Innovations v Xiaomi Communications (CFI, 10 July 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 10 July 2025, given in the joined proceedings UPC_CFI_173/2024 and UPC_CFI_424/2024, the Hamburg Local Division dismissed Nera Innovations’ infringement action against four Xiaomi group companies and partially revoked EP 2 642 632 (wireless power receiver), maintaining it in the form combining auxiliary requests 1 and 2. Claim 1 as granted improperly generalised the application on two points (a substrate not described as magnetic, a receiving space of undefined shape). Once limited, it is not embodied in the smartphones at issue, whose substrate is merely recessed rather than cut through. It also excludes documents from another field (contactless smart cards) as a starting point for the skilled person.

Facts and procedure

Nera Innovations, assignee of the patent filed by LG Innotek, sued Xiaomi Communications, Xiaomi Inc., Xiaomi Technology Netherlands and Xiaomi Technology Germany over the Xiaomi 13 Pro and POCO F5 Pro 5G in Germany and the Netherlands. The defendants disputed standing and infringement and sought revocation of claims 1 to 6 and 18 for added matter, lack of novelty and lack of inventive step over six prior art documents. Nera filed 33 pairs of auxiliary requests. The German Federal Patent Court had ruled on the patent on 9 May 2023, an appeal on service of the statement of claim was decided on 6 August 2024.

The applicable law

Revocation for added matter is governed by Article 65(2) UPCA, Article 138(1)(c) and Article 123(2) EPC, under the test laid down by the Court of Appeal in Abbott v Sibio. Construction follows Article 69 EPC and its Protocol. The number of auxiliary requests is reviewed under Rule 30.1(c) RoP.

Question

Does claim 1 as granted add matter, is the limited patent novel and inventive, and do Xiaomi’s smartphones embody it?

Decision

Nera has standing, the action and counterclaim are admissible, including against claim 18, which was not asserted, and the high number of auxiliary requests is accepted given their small core. The Division found an inadmissible intermediate generalisation in dropping the word “magnetic” and in omitting the predetermined shape of the receiving space, which the application tied to that of the connecting unit. The receiving space must go right through the substrate, a mere recess being insufficient. Auxiliary requests 1 and 2 cure these extensions, and the limited patent is novel over D1 to D6 and inventive over the combination of D5 and D6, which concern near-field communication and would not have been consulted by the skilled person. The smartphones have only a recess in the substrate, without a shape matching the connecting unit: feature 3 is not embodied, and the action was dismissed without any proportionality assessment. The Division nonetheless ruled on the counterclaim. Nera bears the court fees of the infringement action and 20% of those of the counterclaim, the defendants bearing the rest. Each side bears its other costs, save those of the appeal on service, charged to Nera. The value in dispute was set at EUR 3.75 million (EUR 1.5 million for the action, EUR 2.25 million for the counterclaim, with a 50% uplift).

Key points for practice

• Deleting a qualifier from a claim (here “magnetic”) may amount to an intermediate generalisation, even where the term seems redundant to the skilled person.
• A document from another field of application, here contactless smart cards, is not a realistic starting point for assessing the inventive step of a wireless charging receiver.
• The limitation needed to save validity sets the scope of protection: the proprietor should check that the accused product remains within the version defended in the alternative.
• Practical point: the Division rules on the counterclaim even where infringement is dismissed, so the proprietor may end up with a limited patent and nothing in return.

Provisions applied

Agreement on a Unified Patent Court

Arts 32(1)(e), 63(1) and 65(1) and (2)

Rules of Procedure

Rules 8.5, 19.7, 30.1, 30.2, 32.3 and 263

European Patent Convention

Art. 54, 56, 69, 123(2) and (3) and 138(1)(c)

Regulation (EU) No 1215/2012

Art. 24(4), Art. 71a(2)(a) and Art. 71b(1)

Case law cited

Nera Innovations v Xiaomi Communications, Court of Appeal, 6 August 2024, Avago v Tesla, Hamburg Local Division, 26 August 2024, 10x Genomics, Court of Appeal, 26 February 2024, DexCom v Abbott, Paris Local Division, 4 July 2024, 10x Genomics v Curio Bioscience, Düsseldorf Local Division, 30 April 2024 (UPC_CFI_463/2023), Hamburg Local Division, 30 April 2025 (UPC_CFI_278/2023), Munich Central Division, 19 April 2025 (UPC_CFI_526/2024), Court of Appeal, 18 September 2024 (UPC_CoA_265/2024), Abbott v Sibio, Court of Appeal, 14 February 2025 (UPC_CoA_382/2024), Munich Local Division, 31 July 2024 (UPC_CFI_233/2023), Düsseldorf Local Division, 28 January 2025, and 7 March 2025 (UPC_CFI_459/2023), Munich Central Division, 17 October 2024 (UPC_CFI_252/2023), Paris Central Division, 21 January 2025 (UPC_CFI_311/2023), Lionra v Cisco, Hamburg Local Division, 19 February 2025 (UPC_CFI_58/2024).

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.