Seoul Viosys v expert e-Commerce (CFI, 10 October 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 10 October 2024 (UPC_CFI_483/2023), the Düsseldorf Local Division upheld expert klein’s counterclaim for revocation of Seoul Viosys’s EP 3 223 320, which concerns a light emitting diode, on the ground of added matter, and consequently held unfounded the infringement action against expert e-Commerce and expert klein. Claim 1 covers a single mesa carrying the reflective electrode, whereas the application as filed disclosed only embodiments with a plurality of mesas. No auxiliary request cured the defect. The decision shows how strictly added matter is assessed for divisional patents. The patent was revoked for Germany, France, Italy and the Netherlands, the requests to amend were rejected, the infringement action was dismissed and Seoul Viosys was ordered to bear the costs. On the same day the same panel ruled on a patent from the same family in UPC_CFI_363/2023.

Facts and procedure

The patent is a divisional of EP 2 757 598, claiming Korean priorities from 2011 and 2012. Seoul Viosys targeted the flash LED of Emporia “SMART.5 32 GB” smartphones and sought, among other relief, an injunction for Germany, France, Italy and the Netherlands, recall, destruction, information and damages. Only expert klein counterclaimed for revocation, alleging added matter, lack of novelty and lack of inventive step. Seoul Viosys filed seven auxiliary requests. Three late requests under Rule 30.2 RoP were not admitted by the judge-rapporteur on 1 July 2024, which the panel upheld on 5 August 2024. The hearing took place on 5 September 2024.

The applicable law

The UPC’s jurisdiction over the counterclaim rests on Article 32(1)(e) UPCA, no opt-out being in force and no preliminary objection having been lodged (Rule 19.7 RoP). The counterclaim is governed by Rule 25.1 RoP. Added matter is a ground of revocation under Articles 123(2) and 138(1)(c) EPC, the claim being construed under Article 69 EPC and its Protocol.

Question

Does a claim to a single mesa carrying the reflective electrode find a basis in an application as filed that claims and describes a plurality of mesas?

Decision

As in the related case, the Division held that co-defendants remain autonomous parties and that counterclaims are assessed defendant by defendant under Rule 25.1 RoP. Claim 1, which recites “a mesa” on which the reflective electrode is disposed, was read as requiring a single mesa, dependent claim 2 pointing the same way. “At an edge” of the substrate does not mean the outermost edge. The published application claims “a plurality of mesas” and describes reflective electrodes on each, with no single-mesa embodiment. Figure 24, showing hole-shaped etched areas and three reflective electrodes, is understood by the skilled person as depicting several mesas, each mesa carrying one electrode. The argument based on Korean usage failed: the application was filed and published in English, and translation errors are the proprietor’s responsibility. As every auxiliary request retained the mesa carrying the electrode, none cured the added matter. Novelty and inventive step were not decided. The infringement action fails, the invalidity of the patent depriving it of any basis. The operative part revokes the patent for Germany, France, Italy and the Netherlands, rejects the requests to amend and dismisses the infringement action, with costs against Seoul Viosys (Article 69(1) UPCA). The value in dispute was set at EUR 500,000 for the action and for the counterclaim. The ceiling for recoverable representation costs was set at EUR 56,000 for each, under the scale adopted on 24 April 2023 on the basis of Rule 152.2 RoP. The EUR 100,000 that the parties mutually accepted as recoverable at the hearing was taken to be split equally between the two proceedings and thus stays below that ceiling.

Key points for practice

• The indefinite article “a” may be read as a numerical limit where the structure of the claim and the dependent claims support that reading.
• A figure does not support a generalisation where the description does not link it to the claimed feature and the skilled person reads it otherwise.
• The proprietor bears the consequences of translation inaccuracies in the application as filed.
• Practical point: in a divisional patent, every numerical feature should be traceable to an explicit embodiment of the parent application, and auxiliary requests should offer fallbacks that remove the disputed feature.

Provisions applied

Agreement on a Unified Patent Court

Arts. 32(1)(e), 69(1) and 83(3)

Rules of Procedure

Rules 19.7, 25.1, 30.2, 118.8, 152.2, 303.3, 333.1 and 340

European Patent Convention

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

Regulation (EU) No 1215/2012

Arts. 24(4), 71a and 71b

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, SES-imagotag v Hanshow, Munich Local Division, UPC_CFI_292/2023, Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024, Mammut v Ortovox, Court of Appeal, 25 September 2024, Mammut v Ortovox, Düsseldorf Local Division, UPC_CFI_452/2023

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.