Nera Innovations v Xiaomi Communications (CFI, 28 April 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By procedural order of 28 April 2025 (UPC_CFI_173/2024 and UPC_CFI_424/2024, ORD_17804/2025), Judge Schilling, judge-rapporteur of the Hamburg Local Division, rejected an application by the four Xiaomi defendants to disregard Nera Innovations’ submissions on the patentability of auxiliary requests 19/19A and 22/22A, set out in section 15 of its reply of 10 March 2025, in the infringement action and counterclaim for revocation concerning EP 2 642 632. The order draws the line between permissible elaboration of an argument already made and a new, late submission.

Question

Where a proprietor has justified auxiliary requests combining features of earlier requests by referring to the explanations given for those requests, may it develop further technical arguments in its reply without their being disregarded as late?

Decision

Yes. Rules 29(a) and 30.1(b) require the proprietor to explain, in its defence to the counterclaim, why the amendments satisfy Articles 84 and 123(2) and (3) EPC. Since requests 19/19A and 22/22A combine features of earlier requests that had already been justified, a reference to those explanations was sufficient. The further arguments in the reply, on the technical problem and the interaction of features, build on a problem already set out and respond to the other side’s case, as Rule 32.3 permits, the judge relied on a Court of Appeal decision of 18 September 2024. There was therefore no breach of Rules 30 or 32.2. Whether the requests comply with Rule 30.1(b), and whether they matter at all, is left to the panel at the oral hearing.

Key points for practice

• Practical point: a proprietor may justify combined auxiliary requests by reference to the explanations given for the requests whose features they take up, and then elaborate on that reasoning in its reply.

Provisions applied

Rules of Procedure

Rules 9.1, 9.2, 29(a), 30.1(b), 30.2, 32.2 and 32.3

European Patent Convention

Art. 84 and Art. 123(2) and (3)

Case law cited

Court of Appeal, 18 September 2024, UPC_CoA_265/2024 (APL_30169/2024)

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.