Short Summary
This is an appeal decision concerning European Patent EP 3 926 698, owned by Seoul Viosys Co., Ltd. The appellants, expert e-Commerce GmbH and expert klein GmbH (part of the expert retail group), appealed a decision of the Local Division Düsseldorf of October 10, 2024, which had addressed both an infringement action and a counterclaim for revocation. The Court of Appeal addressed the legal standard for assessing unallowable extension of subject matter (added matter), particularly in the context of a patent derived from a divisional application.
Detailed Summary
This appeal concerns European Patent EP 3 926 698, owned by Seoul Viosys Co., Ltd., a Korean company based in Gyeonggi-do. The patent proprietor had brought an infringement action before the Local Division Düsseldorf against expert e-Commerce GmbH (Langenhagen, Germany) and expert klein GmbH (Burbach, Germany), both part of the expert Handelsgruppe, a retail group operating in 22 countries in consumer electronics, information technology, telecommunications, and entertainment. The defendants filed a counterclaim for revocation of the patent. The Local Division Düsseldorf issued its decision on October 10, 2024 (file references ORD_598458/2023 in the infringement main proceedings ACT_579244/2023 / UPC_CFI_363/2023, and ORD_50675/2024 in the revocation counterclaim main proceedings CC_3580/2024 / UPC_CFI_363/2023).
The defendants (now appellants) appealed that decision to the Court of Appeal under case numbers UPC_CoA_764/2024 and UPC_CoA_774/2024. Seoul Semiconductor Co., Ltd., also based in Gyeonggi-do, Korea, intervened in support of Seoul Viosys. The proceedings were conducted in German, with the oral hearing held in hybrid format on July 11, 2025, allowing both German and English. The panel (Spruchkörper 2) consisted of Presiding Judge and Rapporteur Rian Kalden, legally qualified judges Patricia Rombach and Ingeborg Simonsson, and technically qualified judges Torsten Duhme and Max Tilmann.
The central legal issue addressed in the headnotes concerns the doctrine of unallowable extension of subject matter (added matter / unzulässige Erweiterung). The appellants challenged the validity of the patent, arguing that the granted claims extended beyond the content of the application as originally filed. Because the patent in suit was derived from a divisional application, the question arose as to which prior applications must be considered when assessing added matter.
& Analysis
The Court of Appeal articulated the legal standard for assessing unallowable extension of subject matter. It held that such an extension exists when the subject matter of the granted claim goes beyond the content of the application as originally filed. To determine this, the court must first ascertain what information a person skilled in the art would, on an objective basis and with reference to the filing date, directly and unambiguously derive from the application as filed using their general technical knowledge. Implicitly disclosed subject matter — that which is clearly and unambiguously derivable from what is expressly stated — must also be considered part of the content.
Crucially, the Court of Appeal clarified that for a patent derived from a divisional application, this requirement applies to each earlier application. Therefore, the subject matter of granted claim 1 must not extend beyond (1) the disclosure of the originally filed application of the patent in suit, and (2) the disclosure of the original PCT application that entered the regional phase and constitutes the parent application of the divisional application.
Final Order & Ruling
The decision was issued on October 2, 2025, by the Court of Appeal. The full operative order and detailed reasoning beyond the headnotes are not contained in the provided text excerpt, which ends at the beginning of the factual background section.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in expert klein GmbH and expert e-Commerce GmbH vs Seoul Viosys Co., Ltd. is valuable context for structuring arguments or assessing risk in similar proceedings.
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