Motorola Mobility v ASUSTek Computer (UPC_CFI_303/2024 and UPC_CFI_688/2024)
Decision date:
10 October 2025
Osborne Clarke summary
- This decision concerned an infringement claim brought by Motorola against ASUSTek in the Munich LD. Motorola alleged infringement of claims 1 and 11 of its patent concerning a method for reconfiguring radio bearers in a manner impacting the security keys. Motorola argued that the 5G standard implements the teaching of the patent, and therefore all of ASUSTek's 5G-compatible devices infringed.
- ASUSTek contested infringement and counterclaimed for revocation of the claims in issue.
- It alleged that the subject-matter of the claims was not novel and added matter.
- The Munich LD applied the Court of Appeal's decision in respect of added matter in Abbott v Sibio and expert e-commerce v Seoul Viosys. It noted that the court must first ascertain what information the skilled person, with their common general knowledge, would directly and unambiguously derive from the application as a whole. The disclosure includes implicitly disclosed subject matter, that is that which is clearly and unambiguously evident from what is expressly stated. The patent in suit was a divisional application, so the subject matter must not extend beyond either the application as filed or the original parent application.
- ASUSTek's arguments included that the patent in suit described two different messages, a "first connection reconfiguration message" and a "second connection reconfiguration message", for the first time and that a feature relating to the bearer identification field had been deleted.
- The court found that the parent application neither explicitly nor implicitly disclosed the cumulative features of a first and second reconfiguration message, as found in claims 1 and 11. The parent application referred only to a reconfiguration message, with no disclosure of a further (second) reconfiguration message.
- The parent application also consistently indicated that the bearer identification feature was essential and Motorola failed to convince the court that its deletion was permissible. First, the reference to the general principle to consider the entirety of the original documents does not explain why it should be dispensable. Second, the fact that the EPO did not object did not constitute a substantive justification.
- The counterclaim for revocation therefore succeeded, on the grounds that claims 1 and 11 of the patent contained added matter.
- The court ordered the revocation of claims 1 and 11 and dismissed the infringement action.
Issue
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