UPC_CFI_251/2025; UPC_CFI_769/2025 – Maxell v Samsung

Court
Local Division The Hague
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

Case management / extension Facts 1. This concerns an infringement case, counterclaim for revocation. 2. On 10 November 2025, the claimant files a conditional application to amend the patent. 3. On the same day, the JR asked the claimant to file each auxiliary request as a separate exhibit (instead of one 566-pages document), and to explain why 44 (conditional) auxiliary requests is a reasonable number. 4. The claimant explains on 14 November 2025 why also in view of the numerous invalidity attacks the number of auxiliary requests (which in essence were 8 requests) were reasonable. 5. On 21 November 2025, Samsung stated that the number was unreasonable and asked an extension of time for its rejoinder/reply. The JR 1. An extension can only be granted in exceptional circumstances. There are no such circumstances. No extension granted. 2. The unconditional auxiliary requests are reasonable in the circumstances of the case. The JR cites that de facto the number is lower and claimant has produced a table which makes the requests easy to understand. Furthermore, Samsung launched numerous invalidity attacks. The reasonableness will be discussed during the interim conference. Comment This seems to me a good decision. If you file more than (as I counted them) 40 invalidity attacks, you can expect such auxiliary requests. After direction by the JR, it seems manageable. I have said before: in general, if you need so many attacks, this is often a sign that the patent is probably valid! The most difficult task for a representative is concentrating on his best arguments. As the representative is German, he should know “In der Beschränkung zeigt sich erst der Meister“ (the master is identified by his restriction”), dixit Goethe in the poem “Natur und Kunst”.

Full Decision Text

The Hague - Local Division UPC_CFI_251/2025 UPC_CFI_769/2025 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 10/12/2025 regarding: case management and extension request CLAIMANT/S 1) Maxell, Ltd. Represented by Benjamin Beck (the “Claimant”) - 1 Koizumi - 618-8525 - Oyamazaki, Oyamazaki-cho, Oto-kuni-gun, Kyoto - JP DEFENDANT/S 1) Samsung Electronics Co., Ltd. Represented by Christian Lederer (Defendant) - 129 Samsung-Ro, Maetan- 3dong, Yeong-tong-gu - 16677 - Suwon-si, Gyeonggi-do - KR 2) Samsung Electronics GmbH Represented by Christian Lederer (Defendant) - Frankfurter Straße 2 - 65760 - Eschborn - DE 3) Samsung Electronics France, S.A.S. Represented by Christian Lederer (Defendant) - 6 rue Fructidor - 93484 - Saint- Ouen - FR 4) Samsung Electronics Benelux B.V. Represented by Christian Lederer (Defendant) - Evert van de Beekstraat 310 - 1118 CX - Schiphol - NL 1 PATENT AT ISSUE Patent no. Proprietor/s EP2061230 Maxell, Ltd. PANEL/DIVISION : Panel of the Local Division The Hague DECIDING JUDGE The judge-rapporteur LANGUAGE OF THE PROCEEDINGS: English SUMMARY OF PROCEDURE, REQUESTS AND PARTY POSITIONS 1. The Claimant initiated infringement proceedings against the four defendants (collectively “Samsung”) by uploading a statement of claim (“SoC”) on 29 March 2026. 2. After service and alignment of the dates, the statement of defence (“SoD”) was filed on 9 September 2025. Samsung submitted a separate counterclaim for revocation (“CC”) on the same day, requesting the Court to revoke the patent at issue (“EP 230”) in its entirety. 3. On 10 November 2025, in response to the CC, Claimant filed a conditional application to amend EP 230 (the "Application to Amend") together with its reply to the SoD and its defence to the CC. 4. By communication of the same day, the Court asked the Claimant (i) to submit each Auxiliary Requests (“AR”) as a separate exhibit (all ARs were originally uploaded as one 566-page document) and (ii) to clarify why 44 (conditional) ARs constitutes a reasonable number in the circumstances of the case (R.30.1.(c) RoP). 5. In its response of 14 November 2025, the Claimant explained inter alia that the number is reasonable in the circumstances of this case especially considering: - the number of invalidity attacks asserted by Defendants makes that the number of Auxiliary Requests filed by Claimant cannot be considered excessive, considering the principles of procedural fairness and equality of arms, - the fact that the 44 ARs concern only ten core amendment families or distinct textual concepts: eight recurring families 1-8 plus two distinct, stand-alone requests. Four recurring variants "a"-"d" are uniformly repeated across ARs 1-8. Therein: • The "a" version (e.g., AR 1a, 2a) adds the Remote Control feature • The "b" version (e.g., AR 1b, 2b) adds the UTF-8 character encoding feature (i.e., Remote Control + UTF-8). 2 • The "c" version (e.g., AR 1c, 2c) adds the Touch Panel feature (i.e., Remote Control + Touch Panel), without UTF-8. • The "d" version (e.g., AR 1d, 2d) combines the features of the "b" and "c" versions (i.e., Remote Control + UTF-8 + Touch Panel) and adds the Streaming feature. - the comprehensive manner in which the ARs are presented in the Overview Structure of Auxiliary Requests, submitted as exhibit AMEND 2. As an illustration the first and last page of this overview is reproduced here: (…) 6. In its response of 21 November 2025, Samsung argued that the number of 44 ARs is not reasonable, requesting that the Court order the Claimant to restrict its requests to a reasonable number, whereby the specific number is left to the Court. It relies on the following arguments: - the upload of the newly, separately submitted auxiliary requests appears to be flawed. The Defendants are not able to access and download all of the newly, separately filed auxiliary requests. - the number of invalidity attacks does not justify such a large number of auxiliary requests, even if the Claimant’s statement that the ARs “effectively correspond to no more than 16 sets of requests” are taken into account. This is still not reasonable. - the ARs are not based on the dependent claims of the patent. Instead, all auxiliary requests introduce new features derived from the description. Only in some of the auxiliary requests, single features from dependent claim 5 are additionally included. 7. Samsung’s response also contained a request to extend the deadline for the filing of its rejoinder/reply to the CC/defence to the Application to Amend pursuant to R.9.(a) RoP (the “R.9-Application”). Samsung argues that it needs more time to address the ARs and requests an extension of six weeks. 3 8. The Claimant, given the opportunity to do so, responded to the R.9-Aplication. It asks the Court to reject the extension request. If granted, the term of extension should be strictly limited. GROUNDS 9. Samsung’s R.9-Application is admissible. 10. Based on Rule 9.3(a) RoP, the Court has – on a reasoned request by a party – the discretionary power to extend a time period referred to in the RoP. The RoP contain a balanced time frame for submissions in the written procedure. They are intended to ensure that the proceedings can be concluded swiftly and fairly, and that sufficient time is allowed for preparation of the interim conference and the oral hearing. Accordingly, it is settled jurisprudence that the Court should use its discretionary power to deviate from the time periods provided for in the RoP with caution and only in justified exceptional cases. 11. In this case the extension request is dismissed as the circumstances relied on by Samsung are not considered exceptional. The R.9-Application was apparently prompted by the Court’s request for a clarification of the number of ARs. The main pilar of Samsung’s R.9-Application is that it needs more time because of the unreasonably large number (44) of ARs. 12. In view of the parties’ submissions regarding thereto, the Court is satisfied that in this case the number of 44 ARs is reasonable in the circumstances of the case. Firstly, the number in fact responds to a much smaller number of features introduced with these conditional amendments. The total set of auxiliary requests thus effectively revolves around a smaller subset of features that are recombined across requests. As explained by Claimant (see 5. Above), the same four features a-d are repeated in eight main ARs and materially only need to be addressed once. Feature “d” is also part of the two ‘stand-alone’ ARs 9 and 10. This makes the quantity manageable for the Court and for the opposing party. The Claimant also facilitated the assessment by providing a tabular overview of the ARs as exhibit AMEND 2. As follows from this overview, the actual number of new features to be addressed (in various combinations) thus seems to be limited to twelve. 13. The Court furthermore finds the number of ARs reasonable in view of the large number of invalidity attacks asserted in the CC. Against claim 1 alone, Samsung relies on added matter attacks on features 1.6 and 1.8.1, on inventive step attacks and on nine separate novelty attacks (with D1-D9 as respective prior art). Another nine novelty attacks are formulated against dependant claims 2, 5 and 6, in addition to some inventive step attacks. Whether such a large number of attacks is reasonable and effective, will be discussed at the interim conference. In any case, it is understandable that the exceptionally large number of novelty attacks is met with a considerable number of conditional ARs. Samsung has also not pointed to any specific AR of group of ARs that is not reasonable or relevant in this case; it only opposes the number of ARs with general arguments. 14. Thus, in the circumstances of this case, the JR considers the number of ARs submitted reasonable and manageable. The Defendants’ request to order the number of ARs is rejected. 15. The number of ARs introduced in the Application to Amend are also not considered an exceptional circumstance that justifies an extension in the context of this case, given the much 4 lower number of new features introduced and the number of invalidity attacks. The case, though complex, is not exceptional in that respect compared to other cases before the UPC. The Claimant was able to address all invalidity attacks asserted in the CC within the scheduled time frame of two months. It is in addition considered relevant that, as the Claimant pointed out, some of the ARs proposed in this case, are identical or very similar to amendments proposed in a parallel case concerning a divisional of EP 230 pending before the LD Munich between the same parties with the same representatives (counterclaim-case number: UPC_CFI_665/2025). Samsung’s next submission in those proceedings, including the defence to the application to amend the patent, is due on 22 December 2025 which is three weeks before the same pleading is due in the present proceedings and that submission can thus be relied on for the preparation of the pleadings in this case. 16. It is, contrary to what Samsung argues, common practice that the ARs introduce features derived from the description rather than from dependent claims (which are granted claims that may generally be relied on even without the need for an AR). The Claimant’s reliance on features from the description does not constitute an exceptional circumstance that justifies an extension. 17. Samsung apparently argues that some of the ARs, re-uploaded as separate exhibits on 10 November at the request of the Court, appear to be flawed, justifying an extension. This argument is dismissed. Samsung has unflawed access to all requests by way of the combined, unflawed, exhibit AMEND 1 containing all ARs. This document was and still is available in the CMS since 10 November 2025. That some of the ARs additionally uploaded are not perfect/downloadable, should be rectified. However, this does not prevent Samsung from accessing the AR concerned in the combined exhibit. In addition, unflawed versions of the ARs concerned have been provided by the Claimant to Samsung in the meantime. Samsung is thus not hindered in its defence in this respect, and this cannot justify any extension of the deadline to submit its next submission. 18. For the above reasons the request to extend the deadline for filing the next submission is dismissed. The deadline for filing the Rejoinder to the reply to the statement of defence, the Reply to the defence to the counterclaim for revocation and the Defence to the application to ament the patent to be submitted by Samsung, remains 12 January 2026. ORDER In view of the above, having heard the parties I. the R.9-Application to extend the deadline is dismissed; II. the 44 ARs are admitted into the proceedings. Margot Digitally signed by Margot Elsa KOKKE Elsa KOKKE Date: 2025.12.10 16:15:45 +01'00' REVIEW This order can be reviewed by the panel on a reasoned request by a party lodged within 15 days of the service of the order via the CMS (R.333 RoP). 5

Key Holdings

  • The court denied an extension of time for rejoinder/reply, stating that extensions are only granted in exceptional circumstances, which were not present.
  • The court found the claimant's conditional auxiliary requests reasonable, noting that the de facto number was lower than initially presented and a table made them easy to understand, especially given numerous invalidity attacks.
  • The reasonableness of the auxiliary requests will be further discussed during the interim conference.

Tags

  • Auxiliary Requests
  • Case Management
  • Extension of Time
  • Invalidity

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