UPC_CFI_198/2024: CD Paris confirms that the UPC can, if requested, limit the scope of a revocation action of a European patent to national parts of that patent

UPC Case Law | 18.08.2025

Court docket: CD Paris, decision of 28.05.2025 - CFI 198/2024 [EP 3 822 805]
Parties: AYLO PREMIUM Ltd. V. DISH Technologies L.L.C

Contributor: Maximilian Keck

Headnote

The Court can, if requested, limit the scope of revocation of a European (bundle) patent to national parts of a European Patent validated in individual UPC Member States.

Relevance of the decision

In AYLO PREMIUM Ltd. V. DISH Technologies L.L.C, the claimant requested the UPC to revoke the patent in suit for the territory of Germany. The patent, which stems from a divisional application, was subject of a parallel infringement proceedings before the German Regional Court. Parallel to this EPO opposition proceedings were pending, for which oral proceedings were scheduled after the date of the UPC’s oral hearing. At the end of the oral hearing before the CD Paris, the defendant requested to stay the proceedings until the first instance opposition proceedings are concluded. 

The CD Paris thus had to decide whether the request for revocation of a single national part of the patent in suit is appropriate, whether the revocation proceedings should be stayed, and whether the revocation action is justified in its merit.

The CD Paris found the request for revocation of only the German part of the patent in suit – and not the territory of all UPC member states – well-founded, see item 4.1 of the decision.The UPCA, the RoP and Art. 5 (2) Regulation (EU) No. 1257/2012 were considered to support this finding. The view expressed in the literature (Tilmann/Plassmannn/von Falck/Dorn, Unified Patent Protection in Europe (2018) Art. 34 UPCA, paragraph 62)  that such a limited revocation would only be possible if the claim has legally compelling reasons was not followed. The public interest regarding the valditiy of the patent does not allow to ignore the fact that revocation proceedings are adversarial proceedings in which the interest of the parties are at stake, see item 4.7 of the decision. Further, the parties' interests do not conflict with a limited declaration of invaldity, see item 4.8 of the decision. It is thus confirmed that a UPC revocation action is a valid alternative to attack the validity of a patent asserted in national infringement proceedings, for example instead of national nullity proceedings.

The CD Paris further decided not to stay the proceedings, see item 5.1. The decision whether or not to stay the proceedings has to take into considerations the UPC’s aim to provide expeditious and high quality decisions, has to balance the interests of the parties, as well as the need for proportionality and flexibility, see item 5.4 of the decision. In the present case, these considerations led to the CD Paris not staying the proceedings as the claimant's interest in obtaining a timely judgment and the interest in conducting swiftly terminated proceedings outbalanced the defendant's interests, see item 5.7 of the decision.

Finally, after interpreting the patent as a whole and key features of the independent claims, the CD Paris found the independent claims not to be supported by the (parent) application as filed, see item 9.27 to 9.29 of the decision. None of the auxiliary requests remedied this, see item 11 of the deicision. Consequently, the patent was revoked without discussing any of the other reasons for revocation.
In more detail, the patent in suit relates to adaptive-rate content streaming and aims at improving reliability, efficiency and latency of pre-existing streaming techniques. This is achieved by assessing a “performance factor” during streaming and to upshift or downshift a playback quality of streamlets in accordance therewith. In this manner, a playback quality in accordance with a network quality can be provided while ensuring that playback continues. The decisive feature of claim 1, feature 1.7, defines that during streaming streamlets of “highest quality [...] sustainable at that time” are requested. The CD Paris found this feature not to be directly and unambigously derivable from the (parent) application as filed since the description only discusses requesting streamlets of sustainable higher quality and thus teaches to upshift through all levels of quality until the highest sustainable level is reached. The claimed feature, however, also encompasses a “jump” directly to the highest quality and hence introduces an inadmissible generalization, see item 9.27.
As none of the auxiliary request provided a remedy for this deficiency, the patent was revoked.

The EPO revoked, in the parallel opposition proceedings, the patent for the same reasons. In fact, the decision appears to be in line with EPO practice.

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