UPC_CFI_251/2025; UPC_CFI_769/2025 – Maxell v Samsung

Expert Commentary

Aggregation of features Facts 1. Maxell sued Samsung for infringement of EP 2 061 230 covering “a portable terminal, information processing apparatus and content display system”. 2. Samsung counterclaimed for revocation. 3. Maxell filed 44 auxiliary requests. 4. Samsung relied on 25 prior art documents. 5. After the interim conference, the counterclaim was narrowed down to 5 attacks and the auxiliary requests to 10. 6. The panel informed the parties before the oral hearing that it wanted to discuss inventive step of the auxiliary requests on the basis of D1 alone or D1 in combination with D3. The Court 1. The Court finds ex officio (in lack of a timely preliminary objection) that it has international jurisdiction already on the basis of Art. 26 Brussels I bis Regulation and Maxell has standing to sue. 2. The Court subsequently announces the outcome (invalid patent) and a table of contents of the decision. 3. The Court discusses the patent (“the content viewed on a first device can be passed to a second device” – “hand over”), recalls the principles of claim construction and defines the skilled person. 4. The Court discusses the interpretation of some claim features relevant for the decision, on which the parties disagreed. 5. The Court does not accept Samsung’s “over limiting” claim construction which would only cover the third embodiment described in the patent. It does not agree either with the limiting interpretation Maxell gave to other claim elements. 6. Claim 1 is not novel over D3. 7. The Court recites the principles for the inventive step test set out by the Court of Appeal. 8. As the auxiliary requests limit the scope of the patent progressively, the Court (as discussed during the oral hearing) considers the last two first: since they limit the patent the furthest, if these ones are found not to be inventive, none of the previous auxiliary requests can be. 9. The Court finds that the combination of D1 and D3 renders the last auxiliary requests invalid. The addition of some other distinguishing features are routine modifications. 10. The Court states the following: “79. As follows from the UPC approach to inventive step as discussed above at 65., it has to be established what the purported invention adds to the state of the art not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the description and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the skilled person on the basis of the application understands is (are) achieved with the claimed invention. 80. However, in case of a mere aggregation of features, where the application of each individual distinguishing feature is obvious and the distinguishing features do not interact functionally to produce an effect that goes beyond a mere juxtaposition, the combination of such features cannot be held inventive (see LD Munich, UPC CFI 846/2024, Decision of 7 July 2026). 81. This applies here. Samsung correctly pointed out that the different groups (i) to (iv) of the asserted distinguishing features discussed above (in 70) provide unrelated technical functionalities and do not give rise to a synergistic effect that would amount to more than the sum of their individual technical contributions. 82. Maxell argues that the distinguishing features together all contribute to a smoother and more user-friendly provision of content relay between the portable terminal and the external device. However, in doing so it merely provides the standard functionalities that the skilled person would usually associate with these distinguishing features and for which the skilled person would routinely employ them in a technical implementation. Maxell has not been able to point to any technical benefit or effect that a combination of two or more [sic] these distinguishing features would add beyond a mere aggregation/juxtaposition. 83. Thus, Maxell has not argued convincingly that any two of the distinguishing feature (group)s ii-iv (see 70. above, i.e. second history information/ authentication, remote control and internet/internet site/URL,), establish a synergistic effect when combined with one another or with the handback functionality of feature group F1.10. In the absence of any functional interdependencies that establish a synergistic effect, a plurality of routine modifications that the skilled person would each take as a next step and as a matter of routine amount to a mere aggregation of features that is obvious. This is further elaborated below.” 11. As the patent is invalid, there is no infringement. 12. The parties had agreed on the total amount of recoverable costs (€400,000), to be divided by the Court. The Court awards the entire sum to Samsung who won both in the infringement action and the counterclaim. 13. The Court issues a R. 262.2 order with respect to the greyed-out confidential information in the submissions. Comment 1. An example of Dutch/Swedish efficiency! First, at the interim conference, by narrowing down of the (unreasonable) number of auxiliary requests and invalidity arguments and by announcing before the oral hearing that for the remaining auxiliary requests the focus should be on the combination of D1 and D3; then, in the judgment, by immediately considering the most limiting auxiliary requests (and of course having the parties agree on costs). 2. I have cited verbatim hereabove the most interesting part of the decision. It shows that adding multiple obvious features to a non-inventive combination does not make a claim inventive, unless such aggregation of features would lead to a certain synergetic effect. In this case, there was simply A + B + common general knowledge (i.e. the added obvious features), with no synergetic effect making the hand-over operation smoother. Therefore, it is no more than a mere aggregation. If the added feature would have had a positive effect on the already present features, there would have been a synergetic effect and possibly inventive step. 3. A further word on costs: until the Court of Appeal adopts as a general rule the principle of “winner-takes-all” when it comes to costs and German Divisions renounce their national habit of apportioning e.g. 88% of the costs to the claimant and 12% to the defendant when the Court finds infringement, it is possible for parties (as in this case) to agree on a lump sum for the costs related to the infringement claim and one for the costs of the counterclaim, and to let the Court determine which part is awarded to which party. Parties could also (possibly even better!) agree that the winner takes all (so the Court does not have to spend time on the percentage game). 4. As I previously noted: make sure that all the costs are counted in, including travel expenses and the pizza for the evening before the hearing. 5. On a related note, it has started to become a (good and efficient) habit to make the counterclaim for revocation conditional where it is only raised as a non-infringement defence. However, as I have already argued, it seems inappropriate to me, if the defendant prevails with its non-infringement arguments, to have him pay the claimant’s costs in the conditional counterclaim. Therefore, in case of a conditional counterclaim, you should also consider making the costs agreement reflect that if the defendant (already) wins on non-infringement, it is also entitled to the costs of the conditional counterclaim. It should then be made clear in Court that the conditional counterclaim is only raised as a defence against the infringement claim and that if you win on infringement you should be entitled also to the costs for the conditional counterclaim. 6. In my opinion, it would be wise that when the Rules of Procedure are revised, they reflect that such a conditional counterclaim is indeed possible (as has already been decided[LBO1.1]) and that, when it comes to costs, it should be considered as a (further) defence in the infringement case, even where the condition to rule on it is not fulfilled because the Court does not find infringement.

Full Decision Text

The Hague - Local Division UPC_CFI_315/2024 Decision 12 February 2024 EP 2 546 459 B1 **FACTS** 26. Claim 1 of the patent in suit reads as follows: "1. A method for detecting a parameter of a bodily fluid of a subject, the method comprising: i. applying a composition to a skin surface of the subject, ii. illuminating the skin surface of the subject with excitation light that causes at least one component of the composition to fluoresce, and iii. detecting fluorescence emitted by the at least one component to determine the parameter of the bodily fluid of the subject." **KEYWORDS** Blood Glucose Wearable sensor Fluorescence Quantum dots Claim interpretation **CLAIMANT** Company A Address: [Claimant's Address] Represented by: [Law firm Name 1], [Attorney Names 1] [Law firm Name 2], [Attorney Names 2] **DEFENDANTS** Defendant 1 Address: [Defendant 1 Address] Represented by: [Law firm Name 3], [Attorney Names 3] Defendant 2 Address: [Defendant 2 Address] Represented by: [Law firm Name 4], [Attorney Names 4] **SHORT SUMMARY OF FACTS** **ORDER** Decision of the Court of First Instance of the Unified Patent Court delivered on 10/08/2026 **HEADNOTES:** 1. In the absence of any functional interdependencies that establish a synergistic effect, a plurality of routine modifications that the skilled person would each take as an next step and as a matter of routine, amount to a mere aggregation of features that is obvious. 2. In case auxiliary requests limit the scope of protection of the patent progressively, and the auxiliary request that limits the scope furthest is not considered inventive, the previous auxiliary requests are also obvious as these contain less distinguishing features. **CLAIMANT/DEFENDANT IN THE COUNTERCLAIM** 1) Maxell, Ltd. Koizumi - 618-8525 - Oyamazaki, Oyamazaki-cho, Oto-kuni-gun, Kyoto – JP **DEFENDANTS/ CLAIMANTS IN THE COUNTERCLAIM** 1) Samsung Electronics Co., Ltd. 129 Samsung-Ro, Maetan-3dong, Yeong-tong gu - 16677 - Suwon-si, Gyeonggi-do - KR 2) Samsung Electronics GmbH Frankfurter Straße 2 - 65760 - Eschborn – DE Represented by Benjamin Beck, Alexander Balan, Christoph Crützen, Svenja Schenk of Mayer Brown LLP and Thomas Hell of BoschJehle 3) Samsung Electronics France, S.A.S. 6 rue Fructidor - 93484 - Saint-Ouen – FR 4) Samsung Electronics Benelux B.V. Evert van de Beekstraat 310 - 1118 CX - Schiphol – NL Defendants are represented by Christian Lederer of Pentarc **PATENT AT ISSUE** Patent no. Proprietor/s EP2061230 Maxell, Ltd. The panel/deciding judges The composition of the panel is as follows: Edger Brinkman presiding judge Stefan Johansson legally qualified judge Dennis Kretschmann technically qualified judge Margot Kokke judge-rapporteur This decision is issued by the panel. **LANGUAGE OF PROCEEDINGS:** English **I. SUMMARY OF FACTS AND PROCEDURE** 1. The claimant, hereafter: Maxell, is a Japanese based consumer electronics company. 2. Defendants, collectively Samsung, are all members of the Samsung corporate group, controlled by Korea-based defendant 1. Samsung sells inter alia smartphones and tablets branded as Galaxy. 3. Maxell is the registered proprietor of European bundle patent EP 2 061 230 for a Portable terminal, information processing apparatus and content display system (hereafter: the patent or EP230), granted on 20 April 2011. The application for EP230 was filed with the European Patent Office (EPO) on 9 July 2008, claiming priority of 26 September 2007 from Japanese patent application JP 2007 248 353. EP230 is valid in three UPCA Contracting Member States, namely France, Germany and the Netherlands. No opposition was filed against the grant of the patent. Previous proceedings regarding the patent in German national courts were settled before a decision was issued. The patent will be discussed in detail below. Procedure 4. Reference is made to the file for the parties’ submissions and applications. An interim conference (IC) was held to prepare the case for the oral hearing. Reference is made to the R.105.5 order of 10 April 2026 for the decisions taken there. **II. REMEDIES SOUGHT AND SUBMISSIONS** 5. Asserting that Samsung infringe device claims 1, 2, 5 and 6 of the patent, in any case with several Galaxy smartphones and tablets, Maxell requests that the Court, in summary, where possible with immediate effect, prohibit Samsung from directly infringing the patent in the contracting member states where the patent is in effect, together with additional remedies (removal from channels of commerce and destruction of infringing products, recall, provision of information, publication of the decisions on Samsung’s website, penalties, interim award of damages and legal costs). 6. Samsung request that the Court dismiss the infringement action and order Maxell to pay the legal costs and other expenses of the proceedings. Thereto they submit that Samsung do not infringe the patent inter alia because the accused devices do not exhibit all features of the claim, and because the patent is not valid. 7. In the alternative, in case the Court should order an injunction, information, destruction and/or recall and removal, Samsung request that: III. Samsung be granted a grace period of 18 months after the announcement of the decision, before an injunction, destruction and/or recall and removal are enforced. IV. The enforcement of any injunction, destruction or recall and removal be conditional upon a financial security provided by Maxell in the amount of EUR [XXX]1 or another amount the Court deems appropriate. V. An order against Samsung to provide information under motion II of the Complaint is made conditional upon a confidentiality order against Maxell to the effect that (a) the access to the information is restricted to Maxell’s outside counsels and two representatives of Maxell who are named to Samsung in advance and (b) the information may be used only for the purposes of calculating potential damage and compensation claims against Samsung and for identifying other parties involved in the supply or distribution of the accused products for the purpose of asserting claims for alleged patent infringement against them. VI. Samsung be granted to avert enforcement of the decision, in particular in relation to injunctive relief, recall and destruction, by providing security of the amount of EUR 1,650,000, or any other amount that the Court deems appropriate, which may also be in the form of a bank guarantee, without regard to any security provided by Maxell (R. 9.1 RoP). 1 The amount is confidential. As it is not relevant to the decision, it is not included. During the IC, Samsung clarified that requests III and IV above are meant to apply in addition to each other. Request VI should be understood as an alternative for request IV, so the phrase ‘‘without regard to any security provided by claimant” can be ignored. 8. In the counterclaim action, Samsung request that the Court revoke the patent entirely inter alia because the claimed subject matter is neither novel nor inventive over the prior art and/or because the patent contains unpermitted added matter. Samsung also request the Court to order Maxell to bear costs and other expenses of the counterclaim proceedings. 9. Maxell in turn requests the Court to dismiss the counterclaim action, ordering Samsung to reimburse Maxell’s legal costs. In addition, Maxell requests that, in the infringement action: IX. Samsung’s requests no. III.-VI. in the Statement of Defence dated 5 September 2025 be dismissed; X. in the alternative to full dismissal of Samsung’s request no. IV., Maxell be permitted to provisionally enforce injunctive relief, destruction, recall, and removal, each separately, upon providing security—such as by bank guarantee or insurance—in amounts to be determined by the Court; And in the Counterclaim for Revocation: XI. the Counterclaim for Revocation dated 5 September 2025 (CC_35075/2025) be dismissed; XII. alternatively, EP 2 061 230 B1 be maintained with effect for France, Germany and the Netherlands according to one of auxiliary requests 1-10 (in ascending order, auxiliary requests 1-8 with variations a-d and auxiliary requests 3 and 5 additionally with variations 3.1 and 5.1, respectively); and the Counterclaim for Revocation dated 5 September 2025 (CC_35075/2025) be dismissed to the extent that EP 2 061 230 B1 is so maintained; and that Request No. A.I. in the Statement of Claim dated 29 March 2025 (cease-and-desist) be amended to conform to the wording of claims 1, 2, 5 and 6 of EP 2 061 230 B1 as maintained; XIII. Samsung be ordered to jointly and severally bear the legal costs of the Counterclaim for Revocation. 10. Maxell provided the following tabular overview of its auxiliary requests (also: ARs): 11. In their counterclaim action, Samsung rely on the following prior art documents: 12. With respect to the Auxiliary Requests, Samsung additionally cite prior art documents: D1a: Samsung_SGH-Z105 User Guide (“manual_SGH-Z105”), Samsung Electronics, published in June 2004 D3a: EP 1 505 825 A1 D13: UPnP AV Architecture (“UPnP AV Architecture”), Version 1.0, published June 25, 2002 D14: Universal Plug and Play Device Architecture (“UPnP Device Architecture”), Version 1.0, published June 8, 2000 D15: US 2002/0097433 A1 D16: US 2006/0075250 A1 D17: CEA Standard, ANSI “Web-based Protocol and Framework for Remote User Interfaces on UPnPTM Networks and the Internet (Web4CE)”, published in July 2007 D17a: “Web4CE: Accessing Web-based Applications on Consumer Devices” (“Web4CE overview”) – poster paper, published at the 16th International World Wide Web Conference in Banff, Canada (May 8-12, 2007) on May 9, 2007 D18: RFC 3629 – titled “UTF-8, a transformation format of ISO 10646”, Internet (IETF) Standard, published in November 2003 D19a: ETSI TS 126.233 V4.1.0 (release 4) – 3GPP Standard, published in December 2001 D19b: ETSI TS 126 233 V7.0.0 (release 7) - 3GPP Standard, published in June 2007 D19c: ETSI TS 126 234 V7.3.0 (release 7) - 3GPP Standard, published in June 2007 13. On 15 April 2026, pursuant to the IC, Samsung, as requested, limited its invalidity attacks as follows: 14. As agreed, Maxell subsequently, by submission dated 21 April 2026, set out the ten auxiliary requests (‘ARs’, of the 44 originally submitted) on which it intends to rely at the oral hearing in response to the focussed invalidity attacks. The ARs retained are: 3a, 3d, 5a, 5d, 6, 6a, 7, 7a, 8 and 8a. 15. Samsung then submitted the following validity attacks it intends to rely on vis-à-vis these ARs (which is a considerable limitation compared to what was originally submitted): 16. In a Communication dated 23 June 2026, the Panel informed the parties that it also wished to discuss prior art D1, alone or in combination with D3, in relation to the Auxiliary Requests relied on by Maxell, as previously suggested during the Interim Conference. **III. GROUNDS FOR THE DECISION** **III.A – JURISDICTION, COMPETENCE AND SUMMARY** 17. Samsung did not file a preliminary objection within the timeframe of R.19.1 RoP. Pursuant to R.19.7 RoP, Samsung is therefore considered to submit to the jurisdiction of the UPC and to the competence of the LD The Hague. Ex officio, the court notes that international jurisdiction can in any case be based on art. 26 BR2 for all defendants. 18. It is not in dispute that Maxell is the owner of the patent and has standing to sue. In the counterclaim action, the Court concludes that the patent is not valid, also not in the form of any of the maintained Auxiliary Requests. Consequently, the counterclaim action is successful, and the infringement action will be dismissed. The reasons for this are explained below, whereby the teaching of the patent and claim construction will be addressed first (in Sections III.B and III.C). The validity of the claims as granted is subsequently dealt with in Section III.D, whereas Section III.E discusses the validity of the auxiliary requests. Section III.F deals with infringement and in III.G the outcome of the proceedings and costs are discussed. **III.B – TEACHING OF THE PATENT AND SKILLED PERSON** 19. The patent relates to cast technology, in which content viewed on a first device (such as a mobile phone) can be passed on (“cast”) to a second device (such as a TV set). Such casting is hereafter also referred to as “handover”. In a typical scenario, a user that plays a video from the internet on his mobile phone, on a small screen, would like to continue playing the video on the larger screen of his home TV set (cf. patent specification, par. 2/8). 20. The patent discusses some prior art solutions in par. 3-15. In par. 12 of the patent, the technical problem is worded as follows: “to achieve a smoother cooperative operation when the viewing of a content just being conducted on the portable terminal is to be relayed or passed to the video playback device”. Based on the above, the Court considers the teaching of/objective problem solved by the patent to be: “how to pass viewing content from a portable terminal to an information processing apparatus more smoothly.” This is largely in line with what the parties submit. 21. In general, there are multiple different ways in which content can be transferred from the first device to the second device. The first device could continue processing the content, transfer the entire content to be displayed to the second device, and simply employ the second device as an external screen. But the patent is related to a different technology, in which the first device merely transfers “identification information” that identifies the content to the second device, and the second device, based on the identification information, then itself directly retrieves the content to be displayed, such as from an external server via the internet. In some embodiments, the first device may then still be used as a remote control to control the display of the content on the second device. The content may also be handed back from the second device to the first device, such as when the user leaves his home and would like to continue watching the video on his mobile phone (“handback”). 2 Regulation (EU) no 1215/2012 of the European parliament and of the council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) 22. An example configuration is illustrated in Figures 1 and 4 of the patent (reproduced below). Fig. 1 shows the basic configuration. Both a portable terminal = cellular phone 101 and an external information device = TV set 100 are connected to the internet 104 (cf. par. 23 to 27 of the patent specification). Connection of the cellular phone 101 may be via a base station 103 of a wireless network. 23. Fig. 4 shows the transition from a state A (top) to a state B (bottom). In the initial state A, the user browses the internet on the cellular phone 101, where the screen display 401 shows an internet site displayed on the display unit 305 of the cellular phone 101 (upper left-hand side), while the screen display 403 of the TV set 100 initially displays some TV content received from a TV network (upper right-hand side), cf. par. 49 of the patent specification. Upon pressing a button “view on TV” 402 on the display unit 305 of the cellular phone 101, the user may cast the screen display 401 from the cellular phone 101 to the TV set 100, thereby passing to the state B in which the screen display 406 of the TV set shows the internet site previously displayed on the cellular phone 101 in the same display state (lower right-hand side), cf. par. 50 of the patent specification. The cellular phone 101 ceases to display the internet site (cf. par. 51 of the patent specification). Instead, in state B the display unit 305 of the cellular phone 101 may display remote control buttons on the screen display 404 for operating the display of the TV set 100 from the cellular phone 101 (lower left-hand side), cf. par. 50 of the patent specification. 24. In the patent specifications, three embodiments are described. The last paragraph of the description of the first embodiment, reads as follows: The present invention is not limited to the above-described internet site, and can be applied to other systems such as display of a TV program. The same text is repeated in par. 127 of the patent, as the last paragraph of the description of the second embodiment. 25. Independent claim 1 is directed to a portable terminal that casts the content, such as the cellular phone 101. Independent claim 11 is directed to an information processing apparatus receiving the content cast, such as the TV set 100. Independent claim 17 is directed to a system comprising both the portable terminal and the information processing apparatus. 26. Claim 1 of the patent can be subdivided into features as follows: F1 A portable terminal (101), comprising: F1.1 a receiver unit (300) which receives content information; F1.2 an external device communication unit (306) which conducts communication with an external information device (100); F1.3 a display unit (305) which displays the content information received by the receiving unit; F1.4 an identification information acquiring unit (303) which acquires identification information identifying the content information displayed by the display unit; F1.5 an operation unit (102) which receives an operation indication from a user; characterized in that the terminal further comprises: F1.6 a history information acquiring unit (303) which acquires history information indicating a history of operations conducted by the user via the operation unit while the content information is being displayed by the display unit; F1.7 a control unit (301) which conducts control F1.8.0 such that, if a transmission indication of the identification information is received by the operation unit while the content information is being displayed, F1.8.1 the identification information acquired by the identification information acquiring unit and the history information acquired by the history information acquiring unit is transmitted to the external information device, and F1.8.2 the display of the content information by the display unit is terminated. 27. Fig 3 of EP230 depicts a block diagram showing a configuration of a first embodiment of the portable terminal of claim 1. The different units referenced to with numbers in claim 1, are shown. 28. The features of independent claim 11 generally correspond to those of claim 1, but from the perspective of the information processing apparatus that receives the identification information and the history information transmitted from the portable terminal, receives content information corresponding to the identification information and displays the received content information in a state indicated by the history information. Independent claim 17 collects the features of independent claims 1 and 11. **III.C– CLAIM CONSTRUCTION** 29. The Court of Appeal of the UPC (“CoA”) has set out the following principles regarding interpretation of a patent claim according to Art. 69 EPC.3 The patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline and that its subject-matter also extends to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection. The CoA also clarified (i) that the principles for interpreting a patent claim apply equally to the assessment of the infringement and to the validity of a European patent and (ii) that a patent must be interpreted from the point of view of the person skilled in the art (the “skilled person”). 3 Order CoA UPC, NanoString Technologies -v- 10x Genomics, UPC_CoA_335/2023, App_576355/2023 of 26 February 2024, as rectified by the order of 11 March 2024. See also G1/24, Enlarged Board of Appeal EPO. 30. In this case, the skilled person is understood to have a university degree in electrical engineering and/or computer science and has experience in building internet-connected electronics, such as mobile phones, PDAs, internet-enabled TVs and set-top boxes. To the extent that Maxell disputes the skilled person’s familiarity with certain telecommunications, networking and home entertainment standards, this dispute is not decisive for the outcome of the case. 31. The parties disagree on the interpretation of certain features of claim 1 of the patent. These are, where relevant for the decision, discussed here, applying the principles set out above. (a) Features F1.1/F1.3: “Content Information” 1.1 a receiver unit (300) which receives content information; 1.3 a display unit (305) which displays the content information received by the receiving unit; 32. Samsung argue that “content information” is to be understood as internet-site-based content only. Samsung’s argument is based on the (correct) observation that the third embodiment in par. 128 et seqq. of the patent specification merely discusses the display of an internet site (cf. par. 129, 134, 136, 144). Samsung further argue (again correctly) that the third embodiment is the only embodiment in the patent specification that discusses history information. As history information/a history information unit is part of the claimed portable terminal of claim 1 (features 1.6 and 1.8.1), Samsung assert that the construction of claim 1 should effectively be limited to the third embodiment. 33. However, Samsung’s narrow claim construction would effectively restrict the claim scope to the third embodiment and is hence overly limiting. Maxell is correct that “content information” may refer to any content that the portable terminal may receive in a network setting, including video, audio, images, and text. 34. Even though the description of the third embodiment lacks broadening language akin to par. 99 and 127 of EP230 regarding the first and second embodiment respectively, see 24 above, which explicitly negates a restriction to internet-based content and points to further applications such as the display of a TV program, the skilled person will understand the third embodiment not to be an island separated from the first and second embodiments. 35. The skilled person rather takes a uniform view and understands the description of the third embodiment as a continuation of the first and second embodiments. Par. 131 explicitly states that the constituent components are similar across the various embodiments, and Maxell rightly points out that the flow diagram of Fig. 12 (depicted below) as described in the context of the third embodiment is largely identical to the flow diagram of Fig. 5 that pertains to the first embodiment, including the same identifying numbers, with 1201-1204 in Fig 12, pertaining to history information, as the only additions. The skilled person will also readily understand that a display state may depend on a history of user operations not only when internet content is displayed, but also when other content is being displayed, such as a TV program whose display state may likewise depend on a (history of) user operation(s) (e.g., a volume setting). The skilled person hence realizes that the transmission of history information from the portable terminal 101 to the external information device 100 is advantageous to secure a seamless transfer of the display state not only for internet-based content, but also for other types of information. The skilled person will thus see no compelling technical reason why the claimed transmission of history information should be limited in scope to internet-site content, and will understand the techniques described in the context of the third embodiment in a more general sense. (b) Feature F1.6: “History Information” a history information acquiring unit (303) which acquires history information indicating a history of operations conducted by the user via the operation unit while the content information is being displayed by the display unit; 36. Maxell argues that “history information” is any information that indicates display state changes attributable to user influence, as opposed to changes occurring automatically, for example due to system-side content progression. According to Maxell, the only restriction is that the information needs to permit the inference of past user operations, including resultant status produced by those operations. 37. Samsung generally concur that history information relates to user operations that can influence the display state. But they construe the term more narrowly, arguing that history information only refers to the display state of an internet-site based content, as described in the third embodiment in par. 128 et seqq. of the patent specification. Samsung also draw a distinction between the history of user operations, such as scrolling the internet site to a certain part of the site to generate changes which the user sees, and other examples mentioned in par. 130 of the patent specification, comprising an information indicating a character encoding item or a cookie. During the oral hearing Samsung clarified that they consider the “position of a scrollbar” or “position of a pointer” further mentioned as examples in par. 130 embodiments of history information, yet only as history information in case these pertain to an internet site. 38. Samsung’s claim construction again effectively restricts the claim’s scope of protection to the third embodiment, which is overly limiting. As discussed in Section (A) above with respect to features F1.1 and F1.3, the skilled person understands that the techniques described in the context of the third embodiment in par. 128 et seqq. can also be applied to scenarios beyond internet content. 39. Samsung’s distinction between history of user operations proper and the remaining examples mentioned in par. 130 is also unconvincing. In the context of Fig. 9 in par. 132/133, the patent discusses “user operation history” in conjunction with an internet site requiring authentication, including character strings input to a text box. With reference to Fig. 10, par. 134 discusses “information indicating a position of coordinates clicked by the user” as an example of operation history. Hence, the patent appears to use the term “history of user operations” in a rather broad sense and applies it to various technical concepts. 40. In addition, the examples discussed in par. 131-137, where the “operation history” is discussed in the context of an internet site requiring authentication, makes it evident for the skilled person that a history of user operations may also comprise, in some embodiments, information representing user operations conducted by a user for accessing an internet site for which authentication is required. 41. Samsung further argue that information relating to a mere result of a history of user operations does not amount to “history information” as specified in feature F1.6. 42. This construction likewise appears too narrow. If a user operation leads to a certain display state on the portable terminal and that display state is transmitted to the external information device, such display state reflects history information in the sense of features F1.6/F1.8.1. The patent is not limited to a sequence of logs (as described in par. 132/133 with reference to Fig. 9 for the internet site requiring authentication). Par. 130 also mentions the “position of a scroll bar” and the “position of a pointer or the like” as further examples, which represent a result of user operations rather than a complete log. In addition, par. 140 explains that “it is not required to store all operation histories”, implying that only a selection that is relevant for the resulting display state needs to be stored. The skilled person would see no technical reason to assume that this selection necessarily needs to be a complete log of user operations. 43. Maxell argued at the oral hearing that the history of user operations requires a plurality of operations. It bases its position on the plural form that appears in feature F1.6: “a history of operations.” 44. However, Samsung are correct that this understanding is too narrow and would exclude embodiments described in the patent specification. Par. 136 refers to an operation history that is described as involving only a single operation: “... the terminal 100 accesses the internet site of the URL, conducts an operation substantially equal to the user operation indicated by the operation history 900 for the resultantly displayed internet site, and displays the internet site for which the operation has been carried out” (emphasis added). Par. 140 is again relevant here, because the skilled person derives from that paragraph that only a selection of user operations that is relevant for the resulting display state needs to be stored. The skilled person would see no technical reason why this selection would necessarily need to be a plurality of operations. The example in par. 136 confirms the skilled person’s understanding that it may sometimes be a single operation only. 45. The skilled person therefore understands the “history of operations” in feature F1.6 as a generic plural form that may refer to a plurality of operations but also covers embodiments in which the history contains only a single operation. 46. Both parties read into the term “history information” that it relates to changes of the display state. This construction is generally consistent with the description in par. 130 of the patent specification: “The information representing the display state includes, for example, information indicating a history of user operations which have influenced upon the display on the display unit 305. ” 47. But Maxell appears to equate display with “visual display”, arguing in their discussion of prior art D7 that audio tracks do not constitute a visual display. Maxwell does not tie its argumentation to the patent specification. 48. The Court concurs with Samsung that “display” not only comprises visual display, but applies more generally to all human senses, including audio displays or haptic displays. The skilled person would see no technical reason, neither from the claim language nor when considering the patent specification, why the history information should be limited to visual display. Rather, the skilled person understands that user operations may equally have an influence on the representation of content more generally, including the audio content, and that the seamless transfer of the content from the portable terminal to the external information device may depend on history information that relates to all types of display, including visual and audio display. 49. Maxell argues that the video frame does not need to be continuously visible in the foreground. Rather, “while the content information is being displayed” refers to the time period during which the device renders content to its display unit, including when the content is displayed in the background and may be partially occluded by an overlay. Samsung do not dispute this construction, and this interpretation is correct. The claim language or patent specification do not elaborate further on the meaning of this feature. The skilled person would not see any technical reason why the content information would necessarily need to be displayed in the foreground while the history information is acquired. The same phrase is repeated in F1.8.0 and is to be interpreted in the same way there. (c) Feature F1.8.0 “Transmission indication of identification information” such that, if a transmission indication of the identification information is received by the operation unit while the content information is being displayed, 50. Samsung argue that the term “transmission indication of the identification information” requires that the user must explicitly issue a command to transmit the identification information to the external information device. 51. This construction appears too restrictive. As pointed out by Maxell, the embodiments merely require some handover command to the effect that the displayed content is to be passed on from the portable terminal to the external information device. In particular, in the flow diagram of Fig. 12 (reproduced above at 35) step 503 refers to the user pressing a button “to view internet on TV”, which triggers the transfer of the identification information and the history information from the cellular phone to the TV set (cf. par. 141). The pressing of the button corresponds to the transmission indication. The patent does not require anything more than that. **III.D – VALIDITY OF THE CLAIMS AS GRANTED** 52. The Court agrees with Samsung that claim 1 of the patent lacks novelty over D3. 53. According to Art. 54(1) EPC, a claimed invention is considered new if it does not form part of the state of the art. A claimed invention does not form part of the state of the art if it differs in at least one of its (technical) features from what is already known in the state of the art, as directly and unambiguously derived therefrom by the skilled person, using common general knowledge. 54. D3, US 2006/0263048 A1 published on 23 November 2006, discloses a content display-playback system in which an operation control apparatus 17 can control a separate display-playback apparatus 14 having a larger screen (cf. par. 65 and Fig. 2, reproduced below). Both the operation control apparatus 17 and the display-playback apparatus 14 may play audio-visual content received from a server, the content providing apparatus 12. Among the functions of the operation control apparatus 17 is a “throw operation” by which the user causes content to be handed over for display from the operation control apparatus 17 to the display-playback apparatus 14 (cf. par. 126). In the throw operation/handover, the operation control apparatus 17 also transmits meta information, which identifies the displayed content to the display-playback apparatus 14 (cf. par. 151, 67). In addition to the meta information, the operation control apparatus 17 acquires and transmits playback position (time) information (cf. par. 151). Information on the playback position is referred to as an instance of “history information” in par. 125 of D3. The playback position may indicate a playback stop time when the user operates the operation control apparatus 17 to stop playback of the content on the display-playback apparatus (cf. par. 25/66/68), such that the content can be resumed on the display-playback apparatus 14 from the same position (cf. par. 125). After the throw operation from the operation control apparatus 17 to the display-playback apparatus 14 has been performed, the content disappears from the display of the operation control apparatus 17 (cf. par. 126). 55. Maxell merely disputes that D3 discloses features F1.6 and F1.8.1. It argues that recording a playback position at the moment the playback is stopped does not amount to ‘history information’ in accordance with features F1.6 and F1.8.1. This position is however based on an overly narrow claim construction of feature F1.6., which is not in line with the correct claim construction discussed above. ‘History information’ in the sense of feature F1.6 (and 1.8.1) does not require a plurality of operations or a log of multiple different commands. Thus, the playback position at the moment when the user stops the playback (as described in par. 25 and 66/68 of D3) represents history information indicating a history of user operations, namely the user’s operation of stopping the playback. 56. The Court agrees with Samsung that the playback position (time) information described in par. 151 in the context of the handover (throw operation) likewise constitutes history information in the sense of par. 125 that reflects a history of user operations involving a user having previously stopped the playback of the content received from the content providing apparatus 12 on the operation control apparatus 17, as described in accordance with par. 25/66/68 of D3. As described in par. 151 of D3, the operation control apparatus 17 in this context issues a playback request comprising the meta-information of the playback content and the playback position (time) information to the display-playback apparatus 14. 57. Maxell further argues that par. 25/66/68 do not specifically address the throw operation but merely relate to a local control and resumption functionality in which a display of content on the operation control apparatus 17 is stopped, the playback position information is stored locally on the operation control apparatus 17, and the playback position information is read from the storage unit when playback is later resumed. Maxwell further argues that par. 125 reciting the “history information” does not specifically refer to the throw operation either. 58. These observations are correct. However, D3 does not describe the local control and resumption functionality of par. 66/68 and the throw operation of par. 126/151 as separate embodiments. Rather, D3 describes these as two functionalities of one and the same display-playback system. The discussion of the throw operation in par. 126 et seqq. directly follows the discussion of the playback position as history information in par. 125, and refers to the same operation control apparatus 17 and display-playback apparatus 14 previously described in the context of par. 66/68. The description in par. 135/136 also refers to the resumption of playback from a stop position after the user pauses the playback in the context of a throw operation following a catch operation. The skilled person thus understands that the playback position (time) information discussed in par. 151 in the context of the throw operation may indeed indicate a history of user operations. In particular, the skilled person understands that the playback position (time) information in par. 151 may correspond to a transmission that has previously been stopped (and possibly resumed), as described with reference to par. 66/68. 59. The respective playback position (time) information transmitted in the throw operation thus depends on and reflects operations which have been conducted by the user while the content information is being displayed, and which have influenced on the display state at the time when the throw operation is later initiated. With the proper construction (cf. Section C above), nothing more is required to anticipate feature F1.6. D3 thereby also discloses features F1.6 and F1.8.1. Claim 1 is thus fully anticipated by D3. 60. Maxell correctly asserts that independent claims 11 and 17 contain corresponding distinguishing features. The same conclusions therefore apply to these claims. Consequently, the whole patent lacks novelty over D3. **III.E – VALIDITY OF THE AUXILIARY REQUESTS** 61. As set out above, Maxell relies on ten ARs (see 14 above). Samsung rightly assert that none of the ARs can save the patent because they do not involve an inventive step over the prior art. 62. An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (Art. 56 EPC). 63. The approach taken by the UPC when establishing inventive step as set out by the Court of Appeal of the UPC (”CoA”) 4, is summarised below. 4 UPC_CoA_528/2024 and UPC_CoA_529/2024 (25 November 2025, Amgen v Sanofi/Regeneron and UPC_CoA_646/2024, 25 November 2025, Meril v Edwards. See also CoA 29 December 2025, UPC_CoA_71/2025, VMR v Njoy and CoA 2 June 2026 (Fujifilm/Kodak) 64. The CoA first pointed out that the differences in approach to assessing obviousness (such as the problem solution approach), are merely guidelines to assist in the establishment of inventive step as required by Art. 56 EPC, that, when properly applied, should and generally do lead to the same conclusion. 65. According to the UPC approach, first, the object of the invention (the objective problem) must be established. This must be assessed from the perspective of the skilled person with its common general knowledge at the application or priority date of the patent. In this assessment, it should be established what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the description and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the skilled person on the basis of the application understands is (are) achieved with the claimed invention. The claimed solution is obvious when at the relevant date, the skilled person, starting from a realistic starting point in the state of the art in the relevant field of technology, wishing to solve the objective problem, would (and not only: could) have arrived at the claimed solution. 66. A starting point is realistic if the teaching thereof would have been of interest to a skilled person who, at the relevant date, wishes to solve the objective problem. This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention. There can be more than one realistic starting point and the claimed invention must be inventive starting from each of them. 67. The skilled person has no inventive skills and no imagination and requires a pointer or motivation that, starting from a realistic starting point, directs it to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be considered not inventive / obvious when the skilled person would take the next step either (i) prompted by the pointer or (ii) as a matter of routine. Application to the ARs 68. It was discussed at the oral hearing with the parties that the ARs limit the scope of the patent progressively, with AR7a and AR8a limiting the scope of the patent the furthest. Because AR7a and AR8a are not considered inventive, the previous ARs 3a, 5a, 6, 6a, 7 and 8 are also obvious as these contain less distinguishing features. Furthermore, Maxell clarified (and Samsung agree) that AR7a and AR8a are technically the same. The only difference between the two is a variation in the wording of the handback feature to address possible added matter issues. The Court may therefore first look at the inventiveness of AR 7a, since if it is held obvious logically the other ARs do not add inventive features either. **III.E.1 Validity of AR7a** 69. Claim 1 of AR7a is based on claim 1 as granted, and reads as follows, wherein amendments over claim 1 as granted are underlined: F.1 A portable terminal (101), comprising: F1.1’ a receiver unit (300) which receives content information from the internet; F1.2 an external device communication unit (306) which conducts communication with an external information device (100); F1.3’ a display unit (305) which displays the content information from the internet received by the receiving unit; F1.4 an identification information acquiring unit (303) which acquires identification information identifying the content information displayed by the display unit; F1.5 an operation unit (102) which receives an operation indication from a user; F1.5’ wherein the content information from the internet comprises an internet site for which authentication is required, and F1.5’’ the identification information acquired by the identification information acquiring unit is a Uniform Resource Locator, URL, information of the internet site, characterised in that the terminal further comprises: F1.6’ a history information acquiring unit (303) which acquires first history information indicating a history of operations conducted by the user via the operation unit while the content information from the internet is being displayed by the display unit, and F1.6’’ second history information includes information representing user operations which have been conducted by the user for accessing the internet site for which authentication is required; F1.7 a control unit (301) which conducts control F1.8.0 such that if a transmission indication of the identification information is received by the operation unit while the content information is being displayed, F1.8.1’ the identification information acquired by the identification information acquiring unit and the first and second history information acquired by the history information acquiring unit is transmitted to the external information device, and F1.8.2 the display of the content information by the display unit is terminated, F1.9 wherein the control unit conducts control such that after the transmission of the identification information to the external information device, the portable terminal is made to serve as a remote control device which operates the external information device, F1.10 wherein the control unit conducts control such that if the operation unit conducts an operation to indicate termination of the display of the content information by the external information device: F1.10.1 a signal indicating termination of the display of the content information by the external information device is transmitted to the external information device, F1.10.2 identification information identifying the content information being outputted to the external information device and display state information indicating a state in which the content information is being displayed by the external information device are received from the external information device, F1.10.3 wherein the display state information includes information indicating a history of user operations which have influenced upon the display by the external information device, F1.10.4 content information corresponding to the identification information identifying the content information being outputted to the external information device and the display state information is received, and F1.10.5 the display of the content information by the display unit is resumed. 70. According to the table submitted by Maxell (see 10 above), AR 7a adds three features or feature groups to claim 1 as granted, summarized below: i. ‘Display state info 2’, referred to here as the ‘handback functionality’. This is incorporated in feature group 1.10 (F1.10-F1.10.5). ii. ‘Authentication info 2’, incorporated in F1.5’, which authentication information is also added as ‘second history information’ in F1.6’’ and F1.8.1’. This effectively limits the claim to an internet site requiring authentication (cf. [0131] of EP230). iii. ‘Remote control’ – feature F.1.9 In addition, in AR7a, content information is furthermore explicitly restricted to information from an internet site identified by an URL, see features F1.1’, F1.3’, F1.5’, F1.5’’ and F1.6’. 71. Samsung assert inter alia that claim 1 of AR7a is not inventive over prior art patent application US2007/0136488 A1 published on 14 June 2007, which is referred to as D1. D1 addresses the seamless migration of content streamed from a media server between a first renderer such as a mobile phone and a second renderer such as a digital television. It thus addresses the same technical field as the patent. Moreover, D1 has the basic architecture in common with the patent, as evidenced by the anticipated features discussed below. The skilled person will thus consider D1 a realistic starting point when trying to solve the objective problem. The disclosure of D1 72. As mentioned, prior art D1 discloses a method and a device for switching a media renderer to another media renderer while a client performs streaming playback of content of a server. Fig. 2 shows two media renderers 403, 404 as playback devices that are connected to a media server 401 adapted to play content 402. The first renderer (“renderer 1”) is a mobile phone 403. The second renderer (“renderer 2”) includes a digital television 404 for playing videos (cf. par. 38). When the user arrives at home during streaming playback of content 402 of the media server 401 using the mobile phone 403, the user transmits playback environment information of the content 402 to the digital television 404 by using a specific button of the mobile phone 403 (cf. par. 38). The playback environment information may include information about a uniform resource locator (URL) of the content, volume, caption setting and authentication information for access to the currently played content (cf. par. 48). The digital television 404 which receives the playback environment information performs streaming playback of the content 402 of the media server 401 by using the URL of the content 402 (cf. par. 38). As indicated in Fig. 2, D1 seeks to achieve a “seamless content migration” between the mobile phone 403 and the digital television 404. 73. Maxell does not dispute that D1 discloses features F1, F1.1, F1.2, F1.3, F1.5, F1.7, F1.8.0 and F1.8.2. As regards features F1.4/F1.8.1’ relating to the identification information, Maxell argues (in the context of the claims as granted) that the only URL which uniquely identifies the content and which is actually displayed in the first renderer 403/510 is the device-specific “realContentURL1”, which corresponds to the identification information. In contrast, the Migrate_Content message that the first renderer 403/510 sends to the second renderer 404/530 comprises the URL of the content (cf. par. 58), but not necessarily the device-specific “realContentURL1.” 74. This argument is unconvincing. It is evident from par. 48/58 of D1 that the first renderer 403/510 transmits the URL of the currently played content to the second renderer 404/530. The URL is “identification information identifying the content information displayed by the display unit” in accordance with feature F1.4. This identification information is transmitted to the second renderer 404/530 in accordance with feature F1.8.1. This does not rule out that there could be additional information specific to the first renderer 403/510 that is not transmitted to the second renderer 404/530. 75. Hence, D1 also anticipates features F1.4 and F1.8.1’. 76. Maxell’s argument with respect to feature F1.6 (which is identical to claim as granted), that D1 does not disclose that the playback environment information is acquired “while the content information is being displayed by the display unit.”, is based on an incorrect claim interpretation. This was discussed above in III.C.b at claim construction, where Maxell itself advocated interpretation of this feature F1.6 in a rather broad sense, as referring merely to the time period during which the device renders content to its display unit, including when the content is displayed in the background or partially occluded by an overlay. 77. When applying the correct interpretation, the skilled person unambiguously derives from D1 that the mobile phone 403/510 would routinely have the option of setting the playback position or caption setting ‘while the content information is being displayed’. Reference is made in particular to the ‘playback environment information’ discussed in par. 48 of D1, such as “information about the current playback position, volume, caption setting”. Also F1.6 is therefore disclosed in D1. Obviousness of AR7a 78. The Court agrees with Samsung that the remaining features of which disclosure in D1 is disputed, features/feature groups i–iv listed in 70 above (i.e. (i) the handback functionality, (ii) the authentication (2nd history) information, (iii) the remote control and (iv) the limitation to content derived from an internet site) are obvious from a combination of D1 with D3, taking into account the common general knowledge of the skilled person. While the asserted distinguishing features seem numerous, only the handback functionality (feature group F1.10) represents a substantive technical distinction. The handback functionality is obvious from D1 in view of D3 (cf. section (i) hereafter). The other distinguishing features are either implicitly disclosed in D1, routine modifications, and/or are likewise disclosed in D3 and follow automatically when D1 is combined with D3. Aggregation of features 79. As follows from the UPC approach to inventive step as discussed above at 65., it has to be established what the purported invention adds to the state of the art not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the description and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the skilled person on the basis of the application understands is (are) achieved with the claimed invention. 80. However, in case of a mere aggregation of features, where the application of each individual distinguishing feature is obvious and the distinguishing features do not interact functionally to produce an effect that goes beyond a mere juxtaposition, the combination of such features cannot be held inventive (see LD Munich, UPC CFI 846/2024, Decision of 7 July 2026). 81. This applies here. Samsung correctly pointed out that the different groups (i) to (iv) of the asserted distinguishing features discussed above (in 70) provide unrelated technical functionalities and do not give rise to a synergistic effect that would amount to more than the sum of their individual technical contributions. 82. Maxell argues that the distinguishing features together all contribute to a smoother and more user-friendly provision of content relay between the portable terminal and the external device. However, in doing so it merely provides the standard functionalities that the skilled person would usually associate with these distinguishing features and for which the skilled person would routinely employ them in a technical implementation. Maxell has not been able to point to any technical benefit or effect that a combination of two or more these distinguishing features would add beyond a mere aggregation/juxtaposition. 83. Thus, Maxell has not argued convincingly that any two of the distinguishing feature (group)s ii-iv (see 70. above, i.e. second history information/ authentication, remote control and internet/internet site/URL,), establish a synergistic effect when combined with one another or with the handback functionality of feature group F1.10. In the absence of any functional interdependencies that establish a synergistic effect, a plurality of routine modifications that the skilled person would each take as a next step and as a matter of routine amount to a mere aggregation of features that is obvious. This is further elaborated below. Ad (i) handback functionality 84. Samsung is correct that D1 discloses in par. 8/9 a handover of content both from a mobile phone to a digital television and from a digital television back to a mobile phone. Thus, D1 already discloses handover in both directions, in other words, handover and handback. The relevant paragraphs from D1 are: 8. In an example, when a user arrives at home while watching a motion picture 102 transmitted from a streaming server 101, using a mobile phone 103, the user may want to continue to watch the motion picture 102 through a DTV 104 in a living room. 9. In addition, an opposite operation may occur. That is, when the user has to go out because of a sudden appointment while watching a sports broadcast through the DTV 104 in the living room by a broadcast satellite service, the user may want to continue to watch the sports broadcast through the mobile phone 103. 85. Maxell does not dispute this, but argues that par. 8/9 forms part of the discussion of the background art. Moreover, Maxell argued at the oral hearing that par. 8/9 at best disclose what Maxell termed a “symmetrical” handback, i.e., a handback whereby the displaying device hands the display back to the mobile device, whereby a handover in both directions takes place employing the same teachings of D1. Maxell distinguishes this symmetrical handback from the “asymmetric handback” of AR7a, according to which (also) the handback is triggered by the control unit of the portable terminal (and not by the displaying device). 86. Maxell is correct that the specific handback in accordance with distinguishing feature group F1.10, is not disclosed in D1. However, Samsung rightly points out that D3 teaches an asymmetrical handback operation disclosing all these features in combination, which is discussed hereafter. In paragraph 96-99 below, the Court will address why the skilled person will combine D1 and D3, starting from D1. 87. As set out in Section III.D above, D3 discloses a portable terminal with all the features of claim 1 as granted. In D3, the operation control apparatus 17 corresponds to the portable terminal in accordance with feature F1 and the display-playback apparatus 14 corresponds to the external information device in accordance with feature F1.2. 88. D3 discloses a “catch operation” in which the user operates the operation control apparatus 17 to stop streaming playback on the display-playback apparatus 14 and hand back the display to the operation control apparatus 17 (cf. par. 138). In particular, par. 138 discloses that “when the user operates the operation control apparatus 17 to stop streaming playback on the display-playback apparatus 14, a catch operation is performed.” The skilled person learns from par. 138 that the handback is initiated by the user operating the operation control apparatus 17, corresponding to the control unit of the portable terminal in accordance with feature F1.10. 89. The stopping of the streaming playback corresponds to a termination of the display of the content information by the external information device. As rightly pointed out by Samsung, the skilled person further learns from par. 65 of D3 that the “display-playback apparatus 14 is controlled by the operation control apparatus 17”. The skilled person thus understands that the operation control apparatus 17 signals the display-playback apparatus 14 to terminate the display of the content information by the external information device, in accordance with feature F1.10.1. 90. As regards the “identification information identifying the content information” in feature F1.10.2, D3 discloses in par. 138/139 that meta-information including the title of the content and the location of the content is sent from the display-playback apparatus 14 to the operation control apparatus 17 in step S122 (cf. Fig. 18). 91. With reference to the features F1.10.2 and F1.10.3, the “display state information indicating a state in which the content information is being displayed by the external information device” for the handback from the external information device to the portable terminal functionally corresponds to and mirrors the history information for the cast operation from the portable terminal to the external information device in accordance with feature F1.6 of claim 1 as granted. The description in par. 143/144 of the patent in the context of Fig. 12 likewise characterizes the handback as “a method similar to that described above”, i.e., referring to the cast functionality in the opposite direction as described previously in the context of the third embodiment. The same principles apply to the construction of features F1.10.2/ F1.10.3 and F1.6 (cf. Section III.C.b). 92. Samsung are correct that D3 discloses in par. 139 that the display-playback apparatus 14 sends the playback position of the currently played back content to the operation control apparatus 17 (cf. step S124 in Fig. 18). With the proper construction, the playback position of the currently played back content represents display state information in accordance with feature F1.10.2. 93. As regards feature F1.10.3, D3 discloses in par. 136/143/144 with reference to the “catch” operation that the “operation control apparatus 17 resumes playback from the stop position even if the user pauses playing back the display-playback apparatus 14 during streaming playback of content distributed via streaming from the content providing apparatus 12. ” Hence, par. 136/143/144 refer to a scenario in which the user paused the playback on the display-playback apparatus 14 at a stop position, which represents a user operation that has influenced upon the display by the external information device. That playback position is transmitted from the display-playback apparatus 14 to the operation control apparatus 17 in step S113 (cf. par. 133 and Fig. 17) or in step S124 (cf. par. 139 and Fig. 18), respectively. 94. With regard to feature F1.10.4, par. 143 of D3 discloses that “the operation control apparatus 17 sends the content meta-information and playback position stored in the storage unit to the content providing apparatus 12, and receives streaming content transmitted from the image being played back at the playback stop time to play back the streaming content.” 95. As regards feature F1.10.5, par. 143 discloses that the display of the content may be resumed on the operation control apparatus 17: “The client (i.e., the display-playback apparatus 14 or the operation control apparatus 17) that is to resume streaming playback may be selected manually or may be selected automatically...” 96. Samsung convincingly argue that the skilled person would combine D1 with D3 as the next step when starting out from D1 in an attempt to solve the objective problem of EP230 identified above in 20. 97. Even though the detailed description of D1 is limited to a handover from the mobile phone 403/first renderer 510 to the digital television 404/second renderer 530, par. 9 of D1 indicates that “in addition, an opposite operation may occur. That is, when the user has to go out because of a sudden appointment while watching a sports broadcast through the DTV 104 in the living room by a broadcast satellite service, the user may want to continue to watch the sports broadcast through the mobile phone 103. ” The skilled person will understand par. 9 as a pointer that in some user scenarios the user may want to hand back the content display from the TV set 104 to the mobile phone 103 (“in addition” to the converse handover from the mobile phone 103 to the TV set, as described in the preceding par. 8). This pointer leads the skilled person to consider prior art D3, which discloses such a handback/ catch operation in the context of a similar cast architecture (cf. section III.D above). 98. Maxell rightly points out that D3 differs from D1 in that it relates to a “home network” in which the operation control apparatus 17 is wirelessly connected to the content providing apparatus 12 through an IEEE 802.11 wireless connection (cf. par. 61), and that the operation control apparatus 17 is not a mobile phone, but could be some proprietary device that might not be taken outside of the home environment of D3 without losing the wireless connection. However, Maxell’s conclusion that these differences would prevent the skilled person from considering D3 for solving the objective problem, or from combining D3 with D1 is flawed. 99. The skilled person realizes that despite the differences in the networks as pointed out by Maxell, the system architecture of D3 is generally similar to D1, and that both documents relate to the casting of streaming content from a handheld device to a larger screen. In order to achieve a seamless handover of the content, both D1 and D3 teach not only the transfer of information identifying the content itself, but also information that reflects user inputs and relates to the current display state. In view of these technical similarities and guided by the pointer to the handback in par. 9, the skilled person would take D3 into account when trying to improve on D1, and as a next step would enhance mobile phone 403/510 of D1 with the improved capabilities of the operation control apparatus 17 of D3, thereby implementing the handback feature group disclosed in D3 in the system of D1. These features are thus obvious over D1 in view of D3. 100. The remaining features are either routine modifications for the skilled person, or follow automatically when D1 is combined with D3. Ad (ii) second history information/ authentication features 101. As regards the second history information and authentication of features F1.5’, F1.6’’ and F1.8.1’, D1 discloses in par. 48 that the playback environment information may include “authentication information for access to the currently played content.” Maxell disputes that D1 discloses “second history information including information representing user operations which have been conducted by the user for accessing the content information for which authentication is required.” In particular, Maxell argues that the “authentication information for access to the currently played content” in par. 48/57 of D1 is not necessarily information that has been input by the user, but could be information inherent to the system, automatically generated, or transmitted by the media source. 102. However, the wording of feature F1.6’’ (“user operations which have been conducted by the user for accessing the internet site for which authentication is required”) merely requires that the user has made some operations for accessing the internet site. Claim 1 does not specify when these operations have been made, or whether these operations have been made employing the portable terminal or some other device. The skilled person understands that, in the context of D1, “authentication information for access to the currently played content” necessarily involves at least some user operation at some point. This is all that feature F1.6’’ requires. Thus, features F1.5’, F1.6’’ and F1.8.1’ are implicitly disclosed in D1. 103. Alternatively, the skilled person understands that the mobile phone 403/510 of D1 routinely has the option of receiving text input. If the scenario described in the context of D1 requires some text input representing authentication information, that authentication information would then be transmitted as “playback environment information” from the mobile phone 403/510 to the digital television 404/530, as described in par. 48. It does not appear technically relevant for the scheme described in D1 where the “authentication information” comes from. Hence it would be a routine measure for the skilled person in the context of D1 to input that information using the mobile phone 403/510. Thus, employing the mobile phone 403/510 to perform the user operations for accessing the internet site for which authentication is required in accordance with feature F1.6’’ is in any case a routine modification for the skilled person in the context of D1. Ad (iii) remote control functionality 104. As regards the remote-control functionality of feature F1.9, D1 discloses in par. 63 that the first renderer may operate during the transition as a UPNP (Universal Plug and Play) Control Point (CP). Maxell rightly points out that D1 does not explicitly disclose that the first renderer continues to operate as a remote-control device after the transition. 105. However, the UPNP architecture generally provides that functionality, as acknowledged by Maxell during the oral hearing. Samsung is correct that D13 describes on p. 6, second paragraph, that the Control Point manages the operation of the media renderer “as directed by the user (e.g. play, stop, pause)”, and in particular refers to a Control Point that “might include a TV with a traditional remote control.” 106. The skilled person, when trying to improve on the cooperation of the devices after the handover in accordance with the objective problem identified above, would routinely extend the functionality of the first renderer to include a remote-control functionality envisioned in UPNP, based on his common general knowledge as documented by the handbook UPnP AV Architecture (“UPnP AV Architecture”), Version 1.0, published June 25, 2002, submitted as D13. 107. Maxell objects to this argumentation on the grounds that the UPNP scenario described in D1 refers to “home networks” (cf. par. 63), which do not foresee the authentication of an internet site of amended claim 1. They additionally point to page 3 of D13, arguing that the UPNP architecture does not enable access control, content protection, and digital rights management. 108. This argument is unconvincing. While authentication may not be required between two devices in a home network, and UPNP itself may provide no such functionality, in amended claim 1 the second history information relates to information representing user operations which have been conducted by the user for accessing the content information on the internet, i.e., authentication for accessing an external internet site. This makes perfect sense also in a scenario in which both the portable terminal and the external information device are located within a home network. 109. Samsung further points out correctly that D3 likewise teaches the continued use of the operation control apparatus 17 after the throw operation “for controlling the content currently played back on the display-playback apparatus 14” (cf. par. 149). Par. 65 of D3 teaches that the operation control apparatus 17 is “further provided with a function (control point (CP)) of controlling other apparatuses,” and in addition states that “the display-playback apparatus 14 is controlled by the operation control apparatus 17. ” Assuming for Maxell’s benefit that D1 alone does not render the control functionality obvious, the (obvious) combination of D1 and D3 yields a portable terminal = operation control apparatus 17 with that enhanced control functionality, in accordance with feature F1.9. Ad (iv) internet/ internet site/URL 110. Maxell argues that the requirement ‘from the internet’/’of the internet site’, which does not appear in claim 1 as granted, needs to be construed broadly. According to Maxell, the term is not limited to traditional internet sites, but refers to any internet-accessible service that delivers content from remote servers to end-users over standard internet protocols. 111. Samsung do not object to this construction, which appears correct. In particular, par. 139/140 of EP230 describe dynamic internet sites, comprising Active Server Pages (ASP) and (Adobe) Flash. The skilled person is aware that Flash routinely allows the display of video embedded in Internet sites, and was in fact a standard application for this purpose at the priority date. In view of this broad construction, the phrase ‘of the internet site” in feature F1.5’’ does not impose a further restriction over “from the internet” of features F1.1’, F1.3’, F1.5’ and F1.6’. 112. Maxell argues that the URL information of feature F1.5’’ limits the indication information already present in the granted claims. However, any additional feature provides a claim limitation. Maxell has not demonstrated how and why the URL would add more to the claim than a routine way of identifying the content. In addition, Samsung rightly point out that D1 refers to the “URL of the currently played content” in par. 48 and states that “the playback environment information includes the URL of the content” in par. 58, thereby anticipating the “URL” limitation in feature F1.5’’. 113. During the oral hearing, Maxell argued that an URL merely specifies the location of a resource on a server, which could be a local server in a home network, and that the reference to a URL in D1 in itself does not necessarily imply internet applications. 114. However, the description of D1 is based on a scenario in which the user “arrives at home while watching the motion picture 102 transmitted from the streaming server 101” (cf. par. 7), or in which “the user has to go out because of a sudden appointment while watching a sports broadcast” and “may want to continue to watch the sports broadcast through the mobile phone 103” (cf. par. 9). Par. 38 of the detailed description similarly refers to a set up “when a user arrives at home during streaming playback of content 402 of a media server 401 using a mobile phone 403...” The skilled person understands that these examples do not refer to local/ home networks. In a home network, the user could not go out without losing connection. The skilled person would rather understand that the content is received from the internet. 115. This understanding is further confirmed by par. 63 of D1, which refers to the example of switching media renderers using an http protocol in accordance with the flow diagram of Fig. 7. As explained in par. 71 with reference to operation 816 in Fig. 7, the second renderer, MediaRenderer2, requests the media server to perform streaming of the content by using the URL for the optimal content received from the first renderer, MediaRenderer1. The skilled person is aware that an http protocol is an application layer protocol developed for the internet. With the correct broad construction of the “internet site” as discussed above, the skilled person understands from par. 7/9/38 and par. 48/58/63/71 in combination that D1 retrieves content information from the internet in accordance with features F1.1’, F1.3’, F1.5’, and F1.5’’. 116. In the alternative, and giving Maxell the benefit of any remaining doubt, at least it would appear a routine modification for the skilled person to employ the techniques of D1 to retrieve content information from a media server 401 connected via the internet, using the URL of the content as described in par. 48/58/63/71 of D1. **III.E.2 Validity of AR8a** 117. As AR8a and AR7a are technically the same, the Court agrees with Samsung that claim 1 according to AR8a likewise lacks an inventive step over D1 in view of D3 and the common general knowledge. 118. Claim 1 according to AR8a is largely identical to AR7a discussed above, with the exception that feature F.1.10, the handback feature is worded differently (respectively referred to as ‘Display State Info 2’ and ‘Display State Info 2 Modified’ in the table reproduced in 10 above). F1.10.1 of AR7a: F1.10.1 a signal indicating termination of the display of the content information by the external information device is transmitted to the external information device, is replaced by feature F1.10.1’ of AR8a (with the addition underlined and the omission striked out) F1.10.1’ a signal indicating termination of the display of the content information by transmission of identification information identifying the content information being outputted to the external information device is transmitted to the external information device. During the oral hearing, when queried by the panel, Maxell clarified that handback feature group F1.10.1’ of AR8a is an alternative or reformulation of handback feature group F1.10 of AR 7a, and did not associate this reformulation with a further technical effect. 119. Features F1.10.1 and F1.10.1’ both relate to a signal with which the portable terminal initiates the handback. In feature F1.10.1, it is a signal that instructs the external information device to terminate the display. F1.10.1’ instead refers to a signal from the portable terminal to the external information device that requests the transmission of identification information identifying the content information outputted to the external information device. 120. Samsung is correct that D3 discloses in par. 132/138 in the context of the catch operation that the operation control apparatus 17 issues a request for meta-information of content to the display-playback apparatus 14 in a step S110 (cf. Fig. 17) or in a step S121 (cf. Fig. 18). The meta-information includes the title of the content and the location of the content, hence “identification information identifying the content information” in accordance with Feature F1.10.1’. Feature F1.10.1’ is thus anticipated by D3. 121. Thus, D3 likewise discloses feature group F1.10 of AR8a, and the obviousness reasoning pertaining to AR 7a applies in an analogous manner to AR 8a. **III.E.3 Validity of AR3d and AR5d** 122. In case this is not yet covered by Maxell’s agreement that all previous ARs fall in case AR7a and/or AR8a are considered obvious, the Court agrees with Samsung that claim 1 according to ARs 3d and 5d likewise lack an inventive step over D1 in view of D3. 123. ARs 3d and 5d contain similar and/or partly broader handback and authentication features than discussed above for AR7a and AR8a, as is apparent from the table shown in 10. above, these can make the patent non-obvious. As the more limited wordings are considered not the be inventive, the same applies to these features of ARs 3d and 5d. 124. In addition, ARs 3d and 5d, as also follows from the same table, add the additional limitations ‘UTF-8’, ‘Touch Panel Type’ and ‘Streaming’ to claim 1. These features are worded as follows (with amendments from claim 1 as granted underlined): “F1.touch panel” (inserted after F1.5) wherein the display unit (305) and the operation unit (102) are arranged as an input device of a touch panel type. “F1.streaming” (amended F1.6) a history information acquiring unit (303) which acquires first history information indicating a history of operations conducted by the user via the operation unit while the content information for which authentication is required is being received from the internet and being displayed by the display unit (....) F1.UTF (added after F1.8.2) wherein the first and second history information is indicated by a character encoding item designating Unicode Transformation Format, UTF-8, 125. Maxell constructs the wording of F1.streaming “being received from the internet and being displayed by the display unit” as referring to a streaming scenario in which the display content is streamed from the internet (instead of, e.g., played back from a local hard drive). This claim construction appears too narrow. This amendment of feature F1.6 of claim 1 as granted, does not include a time component, and does not exclude the intermediate storage of the content between the receipt and the display of the content. Hence, the claim wording does not contain a limitation to streaming. The patent specification likewise fails to provide a basis for Maxell’s “streaming” interpretation, and in fact appears to be completely silent regarding such a streaming. Par. 80/109 of EP230 generally refer to cast operations to a TV set “during the internet site browsing”, but do not refer to the streaming of content. With the proper claim construction, F1.streaming only clarifies that the content information is received from the internet, and hence does not provide a further limitation than the internet feature group discussed in the context of AR 7a. 126. The Court also agrees with Samsung that feature F1.UTF is an obvious routine modification. Samsung rightly points out that UTF-8 at the priority date is a widely used character encoding standard for electronic communication, as evidenced by prior art D14, Universal Plug and Play Device Architecture (“UPnP Device Architecture”), Version 1.0, published June 8, 2000, representing common general knowledge. The skilled person is aware that almost every webpage was transmitted as UTF-8 at the priority date. 127. The UPNP commands shown in Fig. 7 of D1 and described in brackets <...> in par. 64-69 are text commands. D14 points to a UTF-8 encoding as an example (cf. p. 34, second paragraph, “CONTENT-TYPE”). As evidenced by D14, it would be a routine implementation to choose UTF-8 as the format for the entire playback environment information of D1, including authentication information for access to the currently played content (cf. par. 48). This modification does not involve an inventive step. 128. The Court also follows Samsung’s argumentation that the touch panel feature is likewise a routine modification. In D1, the portable terminal is a “mobile phone 403” (cf. par. 38). At the priority date, touch panels were widely known for mobile phones (which was not disputed). Employing a touch panel as a convenient user interface would be a routine modification for the skilled person when implementing D1, without inventive activity. 129. The distinguishing features discussed above provide unrelated technical functionalities and do not give rise to a synergistic effect that would amount to more than the sum of their individual contributions. Maxell also did not argue this. 130. Given that the streaming feature does not introduce an additional limitation and that the features F1.touch panel and F1.UTF are obvious routine modifications without a synergistic effect, claim 1 of both ARs 3d and 5d is obvious over D1 in view of D3, taking into account the common general knowledge for the same reasons elaborated in above for ARs 7a and 8a. **III.F – INFRINGEMENT** 131. As the patent is considered invalid in its entirety, the infringement action fails. It is not necessary to address any arguments of the parties relating to (non)infringement nor to (non-) infringing acts. All Maxell’s requests in the infringement action shall be dismissed. **III.G – CONCLUSION AND COSTS** 132. As the patent is invalid, it will be revoked in its entirety, granting the primary requests in the counterclaim action. The infringement action is dismissed. 133. By submissions of 17 June 2026, the parties informed the Court that they reached an agreement on the costs. They agreed on a fixed amount of recoverable costs of EUR 400,000. This amount shall be apportioned between the parties in accordance with their respective degree of success, to be determined by the Court in its final decision. A final order on the costs shall be given in this decision, accordingly, as set out in the operative part. The amount shall be divided over the claim and the counterclaim 50/50. In view of the outcome of the case, Samsung is fully successful in both the infringement and the counterclaim actions and shall be allotted the full amount agreed on. Confidentiality 134. By application of 27 September 2025, Samsung filed a R.262.2 application to protect confidential information from third parties. The parties agree that the information asserted to be (R.262.2-) confidential in the submissions, and which are greyed-out in the redacted versions, are to be considered confidential. This is reflected in the order below. As this decision does not contain any confidential information, there is no need to issue a redacted version of this decision. **IV. DECISION** For all these reasons and after having heard the parties, the Court in the infringement action: A. Dismisses all requests; B. Orders Maxell to pay to Samsung the agreed reasonable and proportionate legal costs and other expenses of these proceedings in the total amount of EUR 200,000; C. Declares the cost order immediately enforceable; In the counterclaim for revocation: D. Revokes patent EP 2 061 230 in its entirety for all UPCA Contracting Member States in which EP 2 061 230 has effect; E. Orders Maxell to pay to Samsung the agreed reasonable and proportionate legal costs and other expenses of these proceedings in the total amount of EUR 200,000; F. Declares the cost order immediately enforceable. In the R.262.2 request G. Stipulates that the redacted versions of the submissions of the parties are confidential vis-à-vis third parties pursuant to R.262.2 RoP, subject to any application based on R. 262.3. Brinkman Johansson Kretschmann Kokke On behalf of the registrar Information about appeal An appeal against the present decision may be lodged at the Court of Appeal, by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of its notification (Art. 73(1) UPCA, R. 220.1(a), 224.1(a) RoP). Information about enforcement An authentic copy of the enforcement of the decision will be issued by the Deputy-Registrar upon request of the enforcing party, R. 69 RegR (Rules governing the Registry of the UPC). (Art. 82 UPCA, Art. 37(2) UPCS, R. 118.8, 158.2, 354, 355.4 RoP).

Key Holdings

• A mere aggregation of features, where individual distinguishing features are obvious and do not interact functionally to produce a synergistic effect, cannot be held inventive.
• Courts can streamline proceedings by narrowing down auxiliary requests and invalidity arguments, and by focusing discussions on key prior art combinations.
• Parties can agree on a lump sum for recoverable costs and on a 'winner-takes-all' principle, which the Court can then divide.
• Conditional counterclaims for revocation, when raised as a non-infringement defence, should be considered a further defence in the infringement case for costs purposes, even if the condition to rule on them is not fulfilled.
• The Court can find international jurisdiction ex officio based on Art. 26 Brussels I bis Regulation.

Tags

• Inventive Step
• Aggregation of Features
• Claim Construction
• Costs
• Jurisdiction
• Revocation
• Infringement
• Procedural Efficiency
• Novelty

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