The infringement action is unfounded. The counterclaim for revocation is partially justified.
Rebuttable presumption of entitlement to European patent (Rule 8.5 RoP). The entry in the patent register has a significant indicative effect when assessing the question of who is the substantive owner of the patent. The Division must assume a rebuttable presumption. Insofar as the defendants criticise that the plaintiff has not become the proprietor of the patent in suit due to an inadmissible ‘dealing with oneself’ transaction, this objection is not able to shake the legal presumption. Formal requirements of Articles 71-74 EPC are met with regard to the transfer of rights.
Reply to revocation counterclaim filed in time within 2 months of service of the counterclaim, irrespective of the use of the official forms. Rule 4.1 sentence 2 RoP is only a directory provision (Rule 30 RoP, Rule 4 RoP) At least in the initial phase of the UPC - the present complaint was submitted on the first day of the UPC’s operation, 1 June 2023 - the Local Chamber considers it appropriate to apply a more generous standard.
Claim interpretation (article 69 EPC). The local division assumes a functional interpretation of the patent in suit. In view of the fact that claim 3 in particular is not limited to semiconductor chips, the person skilled in the art is to be defined as a graduate engineer specialising in electrical engineering with a university degree and several years of experience in the development of power control systems. In the case in dispute, it does not matter under what conditions and to what extent the grant history is relevant for the interpretation of the claim before the UPC. No divergent interpretation for infringement and validity.
Inventive step (article 56 EPC). An invention is deemed to exist if it does not result from the usual approach of the person skilled in the art, but requires an additional creative effort on their part. Contrary to the view of the defendant, the expert would have had no reason to look for allocation solutions in the style of D 4 after reading D 1. A problem-solution approach would not lead to a different result.
Partial revocation (Article 65(3) UPCA). The concept of partial revocation of the patent by means of limitation through amendment of the patent claims is familiar from the EPC and from the legal systems of the contracting member states. In the opinion of the local division, a patent can therefore also only be revoked in nullity proceedings before the UPC to the extent that the grounds for revocation are sufficient, so that a patent can also remain (partially) in force to the extent of individual independent patent claims within the scope of the complete set of claims filed as the main or auxiliary request, if this corresponds to the procedural concern of the patent proprietor.
IPPT20240826, UPC CFI, LD Hamburg, Avago v Tesla
