Emporia UK and Ireland Ltd. v Seoul Viosys Co., Ltd.
UPC_CFI_258/2025, decision of 30 March 2026 [1]
In a decision of 30 March 2026, the Paris Central Division held that revocation of an independent claim does not automatically affect the validity of unchallenged dependent claims.
The claimant (Emporia) filed a revocation action against the defendant (Seoul Viosys) in respect of claims 1 to 11 of EP 3 926 698 B1 (“EP‘698”). The patent at issue was already the subject of a parallel infringement action and counterclaim for revocation at the Court of Appeal. [2] The defendant contended in a preliminary objection to these revocation proceedings that the parallel Court of Appeal proceedings meant the Central Division lacked competence. This objection was rejected by the Central Division, however, as one of the parties to the other proceedings and the claimant in these proceedings could not be considered the same party for the purposes of applying Article 33(4) UPCA.
Before the hearing of this revocation action, the patent was revoked in respect of claims 1, 4, 5, 6 and 9 at the Court of Appeal. The counterclaim for revocation at the Court of Appeal was limited to those revoked claims – the other claims were outside the scope of the dispute – and the Court of Appeal’s ruling remained silent on any collateral invalidating effects on the unchallenged claims.
In light of the Court of Appeal decision, the defendant amended its requests to, firstly, uphold the patent to the extent of the remaining claims 2, 3, 7, 8 and 10-14 as granted, and otherwise to maintain the patent in accordance with its auxiliary requests, which were recast in view of the Court of Appeal’s decision.
As a starting point for its analysis, the Central Division considered the effects of the revocation of independent claim 1 on the dependent claims that were unchallenged in the Court of Appeal proceedings. The Central Division determined that invalidation of the sole independent claim does not automatically invalidate unchallenged dependent claims, as the Division held that the additional technical features of the dependent claims may provide the requisite novelty and inventive step that the independent claim lacked. The Division provided this comment despite the Court of Appeal revoking claim 1 for added matter, which would appear to be a harder ground for invalidity to overcome by incorporating features of the dependent claims. It was noted that in the present situation of a patent ostensibly lacking an independent claim, the proprietor must typically file an application to amend one of the remaining dependent claims into independent form.
As the remaining challenged dependent claims all depended on claim 1, and so incorporated the features of claim 1, the Central Division formed its own view as to the validity of claim 1. It held that the claim could not be maintained in the form as granted due to the presence of an unallowable intermediate generalisation of the subject matter originally filed. While both the Central Division and the Court of Appeal held claim 1 invalid for added matter, the specific grounds were different.
Because each of the other claims were dependent on claim 1, and claim 1 was ruled invalid due to added matter, the Division held that none of the remaining challenged claims of the patent could be maintained in the form as granted.
The Division then turned to an assessment of the amended claims filed as auxiliary requests. These were updated in view of the Court of Appeal’s decision by essentially recasting the features of claim 1 into dependent claim 2 and renumbering the remaining claims. The court noted that while substantive amendment requires the applicant to submit a complete set of amended claims, such a recasting did not constitute a substantive amendment of the claims already under judicial review, so the introduction of the updated claims did not require leave of the Court. Further, the Division noted that, even if leave was required, it should be granted, as the amendments were merely formal in nature (necessitated by the Court of Appeal’s decision) and did not cause an imbalance in the procedural dynamics or prejudice the interests of the claimant. The defendant also filed a further auxiliary request to amend the claims in response to the decision of the Court of Appeal. This request was rejected, however, as the Division held that the specific added matter objections in this case were not pleaded before the Court of Appeal, so there was no link between the outcome of the Court of Appeal proceedings and further auxiliary request. The Division also held that, as the outcome of the Court of Appeal was based on reasoning accepted in the statements of appeal, the eventual decision was foreseeable and so a suitable auxiliary request in the could have been timely filed in anticipation of the final Appeal decision.
Each of the auxiliary requests for amendment of the dependent claims encompassed the subject matter of revoked claim 1, so were ultimately unable to overcome the added matter objection to claim 1. The remaining challenged claims 2, 3, 7, 8, 10 and 11 of the patent were therefore held to be invalid, and so were revoked. No order was made regarding the remaining claims of the patent, as they were not challenged in the revocation action.
This decision shows that, if complete revocation of the patent at issue is desired, claimants should object to each of the claims, as revocation of an independent claim does not automatically affect the validity of unchallenged dependent claims.
[1] https://www.unifiedpatentcourt.org/en/node/182942
[2] https://www.unifiedpatentcourt.org/en/node/160898 and https://www.unifiedpatentcourt.org/en/node/160907