UPC CFI 363/2023 – Seoul Viosys Co, Ltd v expert e-Commerce GmbH and expert klein GmbH

Expert Commentary

Full Decision Text

1 Local Chamber Düsseldorf UPC CFI 363/2023 Decision of the Court of First Instance of the Unified Patent Court pronounced on 10 October 2024 concerning EP 3 926 698 B1 LEADERSHIPS: 1. If the plaintiff wishes to make a claim against several defendants, he has the choice of suing each defendant individually or bringing an action against several defendants. If the plaintiff decides in favour of the latter, the actions must nevertheless each be dealt with independently. Each defendant conducts its own lawsuit formally and substantively independently of the others, without the respective actions of one defendant causing advantages or disadvantages for the other defendant. 2. If R. 25.1 VerfO requires the filing of a counterclaim for a declaration of invalidity of the patent, if the statement of defence includes the assertion that the allegedly infringed patent is invalid, this applies separately to each defendant. This does not exclude the joint filing of a revocation counterclaim by several defendants. However, if individual defendants decide against filing a nullity counterclaim and the counterclaim is therefore expressly only filed by individual defendants, the validity argument is formally excluded for the defendants not involved in the nullity counterclaim. They can therefore not successfully invoke the lack of legal standing in their proceedings. However, as long as the court refrains from separating the proceedings against several defendants, this has no de facto effect. 3. The answer to the question of whether an Order or decision should be made dependent on a security to be determined by the court (R. 118.8 RoP) always requires a case-by-case examination in which the plaintiff's interest in the effective enforcement of its property right must be weighed against the interest in the effective enforcement of possible claims for damages in the event that the judgement is subsequently set aside. The factors to be taken into account when deciding whether to order the provision of security include the financial situation of the plaintiff, which may give rise to the justified and real concern that a possible claim for damages cannot be enforced and/or enforced or can only be enforced with disproportionate effort. Whether and to what extent such factors exist must be determined on the basis of the facts and arguments presented by the parties. KEYWORDS: Isolated nullity counterclaim by individual defendants; direct patent infringement; no security2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 2 Plaintiff: Seoul Viosys Co, Ltd, legally represented by its authorised representatives Chung- Hoon Lee and Young Ju Lee, 65-16, Sandan-ro 163 beon-gil, Danwon-gu, Ansan-si, Gyeonggi-do, 15429, Republic of Korea, represented by: Attorney Dr Bolko Ehlgen, Attorney Dr Julia Schön- bohm, Linklaters LLP, Taunusanlage 8, 60329 Frankfurt am Main, Germany, supported by: Patent attorney Dr Dipl.-Phys. Olaf Isfort, law firm Schneiders & Beh- rendt, Huestraße 23, 44787 Bochum, Germany, electronic Zustelladresse:bolko.ehlgen@linklate rs.com intervener: Seoul Semiconductor Co, Ltd, legally represented by its authorised representatives and CEOs Chung-Hoon Lee and Myeong-gi Hong, Building 0: 97-11, Sandan-ro 163 beon-gil, Dan- won-gu, Ansan-si, Gyeonggi-do, 15429, Republic of Korea, represented by: Attorney Dr Bolko Ehlgen, Attorney Dr Julia Schön- bohm, Linklaters LLP, Taunusanlage 8, 60329 Frankfurt am Main, Germany, electronic Zustelladresse:bolko.ehlgen @linklaters.com Defendant: 1. expert e-Commerce GmbH, legally represented by its managing directors Dr Stefan Müller and Michael Grandin, Bayernstraße 4, 30855 Langenhagen, represented by: Dr Dirk Jestaedt, lawyer, law firm Krieger Mes & Graf von der Groeben Part mbB, Bennigsen-Platz 1, 40474 Düsseldorf, electronic Zustelladresse:info@krieger-mes.de with the participation of: Patent attorney Bernhard Ganahl, HGF Europe LLP, Neumarkter Straße 18, 81673 Munich, 2. expert klein GmbH, legally represented by its managing directors Jens Oerter and Thomas Jacob, Jägerstraße 32, 57299 Burbach, represented by: Dr Dirk Jestaedt, lawyer, law firm Krieger Mes & Graf von der Groeben Part mbB, Bennigsen-Platz 1, 40474 Düsseldorf,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 3 electronic Zustelladresse:info@krieger-mes.de with the participation of: Patent attorney Bernhard Ganahl, HGF Europe LLP, Neumarkter Straße 18, 81673 Munich,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 4 STREITPATENT: European Patent No. 3 926 698 B1 ADJUDICATING BODY/CHAMBER: Judges of the Düsseldorf local division: The decision was pronounced with the participation of presiding judge Thomas as the judge, legally qualified judge Dr Thom, legally qualified judge Mlakar and technically qualified judge Sani. LANGUAGE OF THE PROCEEDINGS: German SUBJECT MATTER: Action for infringement and action for annulment ORAL NEGOTIATION: 5 September 2024 BRIEF DESCRIPTION OF THE FACTS: The plaintiff is suing the defendants for infringement of EP 3 926 698 B1 (hereinafter: patent in suit). The patent in suit is an (indirect) divisional application of the European patent EP 2 757 598 B1, which was derived directly from EP 2 223 320 B1. It claims the priority of KR20110093396 of 16 September 2011, KR20210015758 of 16 February 2012 and KR20120052722 of 17 May 2012. The European Patent Office published the mention of the grant of the patent in suit with effect (inter alia) for Germany, Austria, Belgium, France, Italy, Luxembourg, the Netherlands and Sweden on 4 January 2023, the plaintiff being the registered proprietor of the patent in suit. The patent in suit is in force in the aforementioned contracting states. The patent in suit, filed in the English language of the proceedings, is entitled "Light emitting diode". Its claim 1 is in the English language of the proceedings: "A light emitting diode comprising: a light emitting structure formed on a substrate (100) and comprising a first conductivity type semiconductor layer (110), an active layer (120) and a second conductivity type semiconductor layer (130); mesa-etched areas (150) formed from the surface of the second conductivity type semiconductor layer (130) to the first conductivity type semiconductor layer (110); a reflective electrode (140) formed on the second conductivity type semiconductor layer (130) and including a reflective metal layer (142), a barrier metal layer (144) and a stress relieving layer (143) formed between the reflective metal layer (142) and the barrier metal layer (144), wherein the stress relieving layer (143) has a coefficient of thermal expansion between the coefficient of thermal expansion of the reflective metal layer (142) and the coefficient of thermal expansion of the barrier metal layer2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 5 (144); a lower insulation layer (200) covering an overall surface of the structure formed by the first conductivity type semiconductor layer (110), the active layer (120), the second conductivity type semiconductor layer (130), the mesa-etched areas (150) and the re- flective electrode (140), with the lower insulation layer (200) allowing an upper surface of the reflective electrode (140) to be partially exposed therethrough and further hav- ing openings disposed near an edge of the substrate which allow the surface of the first conductivity type semiconductor layer (110) to be exposed therethrough in the mesa- etched areas (150); a current spreading layer (210) formed on the lower insulation layer (200) covering the first conductivity type semiconductor layer (110) and being electrically connected to the first conductivity type semiconductor layer (110); an upper insulation layer (220) formed on the current spreading layer (210), with both the current spreading layer (210) and the reflective electrode (140) being partially ex- posed through the upper insulation layer (220); a first pad (230) electrically connected to the current spreading layer (210) exposed through the upper insulation layer (220); and a second pad (240) electrically connected to the reflective electrode (140) exposed through the upper insulation layer (220)." In the registered German translation, claim 1 is worded as follows: "Light emitting diode, showing: a light-emitting structure formed on a substrate (100) and comprising a semiconductive layer (110) of a first conductivity type, an active layer (120) and a semiconductive layer (130) of a second conductivity type; mesa-etched regions (150) formed from the surface of the semiconductor layer (130) of the second conductivity type to the semiconductor layer (110) of the first conductivity type; a reflective electrode (140) formed on the semiconductor layer (130) of the second conductivity type and comprising a reflective metal layer (142), a metal barrier layer (144) and a relaxation layer (143) formed between the reflective metal layer (142) and the metal barrier layer (144), wherein the relaxation layer (143) has a coefficient of thermal expansion between the coefficient of thermal expansion of the reflective metal layer (142) and the coefficient of thermal expansion of the metal barrier layer (144), wherein the stress relief layer (143) has a coefficient of thermal expansion between the coefficient of thermal expansion of the reflective metal layer (142) and the coefficient of thermal expansion of the metal barrier layer (144); a bottom insulating layer (200) covering a total surface of the structure formed by the first conductivity type semiconductor layer (110), the active layer (120), the second conductivity type semiconductor layer (130), the mesa etched regions, and the bottom insulating layer (200) (150) and the reflective electrode (140) is formed, wherein the lower insulating layer (200) allows an upper surface of the reflective electrode (140) to be partially exposed2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 6 therethrough, and further comprises openings formed in the vicinity of the lower insulating layer (200).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 7 of an edge of the substrate, which allow the semiconductor layer (110) of the first conductivity type to be exposed through them in the mesa- etched areas (150); a current expansion layer (210) formed on the lower insulating layer (200) covering the semiconductor layer (110) of the first conductivity type and electrically connected to the semiconductor layer (110) of the first conductivity type; an upper insulating layer (220) formed on the current-expanding layer (210), wherein both the current-expanding layer (210) and the reflective electrode (220) are formed on the current-expanding layer (210). (140) are partially exposed through the upper insulating layer (220); a first pad (230) electrically connected to the current expansion layer (210) exposed through the upper insulating layer (220); and a second pad (240) electrically connected to the reflective electrode (140) which is exposed through the upper insulating layer (220)." With regard to the wording of sub-claims 4 to 6 and 9, which are only asserted in the context of "in particular if" applications, reference is made to the patent in suit. Figure 10, shown below and coloured by the applicant, explains the invention by means of a preferred embodiment: A substrate (21) can be seen on which a first conductive semiconductor layer (23) is formed. A plurality of mesas M is formed on the first semiconductor layer, which are separated from one another. Each of the mesas M contains an active layer (25) and a second conductive semiconductor layer (27). The active layer (25) is arranged between the first conductive semiconductor layer (23) and the second conductive semiconductor layer (27). In addition, there are reflective electrodes (30) on each of the plurality of mesas M. Each of the reflective electrodes (30) has a reflective layer (28) and a barrier layer (29). The lower insulating layer (31) covers the plurality of mesas M and the first semiconductor layer (23) and has lower openings (31a, 31b), which in certain areas form an electrical connection with the first conductive layer (23).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 8 semiconductor layer (23) and the second conductive semiconductor layer (27). A current distribution layer (33) is formed on the lower insulating layer (31), which covers the plurality of mesas M and the first semiconductor layer (23). An upper insulating layer (35) is formed on the current distribution layer (33), on which in turn a first pad (37a) and a second pad (37b) are located (see patent in suit, paragraphs [0069] - [0085]). Defendant 1) is part of the expert retail group for consumer electronics, information technology, telecommunications, entertainment and household appliances. Within this structure, it is responsible in particular for the online presence and the e-commerce activities of the expert group of companies in Germany. Defendant 2) is not affiliated under company law with defendant 1) and its group of companies, but operates 25 specialist stores independently as part of the "Expert Fachhandels-Kooperation". Online sales are carried out jointly by both defendants. When accessing the website www.expert.de, the user is asked to select a suitable speciality store in the expert network based on their location. A corresponding selection leads to an Internet page that can be assigned to defendant 2). According to the legal notice on this website and the information in its imprint, defendant 1) is responsible for sales via the website as a "service processor". The defendants are also closely involved in the further process of processing orders via the website. For example, the order confirmation, the invoice and the delivery notes each state defendant 1) in conjunction with defendant 2). Defendant 1) acts as the contractual partner. However, shipping is carried out by defendant 1). The products marketed by the defendants include the smartphone "SMART.5 32 GB" from the manufacturer Emporia. An LED lamp is installed on the back of each of these devices in connection with the camera module: This LED lamp contains an LED chip, as shown in the following figure, which is mounted on a circuit board (hereinafter: attacked embodiment):2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 9 The microscopic images of the contested embodiment produced by the plaintiff show the contested embodiment in detail: The plaintiff bases its infringement action on a direct infringement of patent claim 1 of the patent in suit. In response to a revocation counterclaim expressly filed only by defendant 2) and based on an inadmissible extension and the lack of inventive step, the plaintiff filed a revocation counterclaim on On 23 March 2024, the company filed an application to amend the patent (App 14781/2024), with which it introduced a total of 11 auxiliary requests into the proceedings. In a document dated 27 June 2024, the applicant also filed an application pursuant to R. 30.2 RoP to supplement the previous auxiliary requests with four further auxiliary requests. In a procedural order dated 1 July 2024, the judge-rapporteur stated that there was currently no reason to admit the further request for amendment (emphasis added). With regard to this procedural order, the plaintiff filed an application for a review of this order by the panel pursuant to R. 333.1 RoP in a document dated 15 July 2024, whereupon the judge-rapporteur's order was upheld by the panel on 5 August 2024. APPLICATIONS BY THE PARTIES: Lawsuit: The applicant claims that the Court should, I. order the defendants to pay the costs,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 10 1. to refrain from doing so, Light emitting diodes on the territory of the Republic of Austria, the Kingdom of Belgium, the Federal Republic of Germany, the French Republic, the Italian Republic, the Grand Duchy of Luxembourg, the Kingdom of the Netherlands and the Kingdom of Sweden to offer, place on the market, use and/or import and/or possess for the aforementioned purposes, if these are present: a light-emitting structure formed on a substrate (100) and comprising a semiconductor layer (110) of a first conductivity type, an active layer (120) and a semiconductor layer (130) of a second conductivity type; mesa-etched regions (150) formed from the surface of the semiconductor layer (130) of the second conductivity type to the semiconductor layer (110) of the first conductivity type; a reflective electrode (140) formed on the semiconductor layer (130) of the second conductivity type and comprising a reflective metal layer (142), a metal barrier layer (144) and a relaxation layer (143) formed between the reflective metal layer (142) and the metal barrier layer (144), wherein the relaxation layer (143) has a coefficient of thermal expansion between the coefficient of thermal expansion of the reflective metal layer (142) and the coefficient of thermal expansion of the metal barrier layer (144); a bottom insulating layer (200) covering an overall surface of the structure formed by the first conductivity type semiconductor layer (110), the active layer (120), the second conductivity type semiconductor layer (130), the metal etched regions (150) and the reflective electrode (140), wherein the bottom insulating layer (200) enables that an upper surface of the reflective electrode (140) is partially exposed therethrough, and further comprising openings disposed near an edge of the substrate which allow the semiconductor layer (110) of the first conductivity type to be exposed therethrough in the mesa-etched regions (150); a current expansion layer (210) formed on the lower insulating layer (200) covering the semiconductor layer (110) of the first conductivity type and electrically connected to the semiconductor layer (110) of the first conductivity type;2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 11 an upper insulating layer (220) formed on the current-expanding layer (210), wherein both the current-expanding layer (210) and the reflective electrode (140) are partially exposed through the upper insulating layer (220); a first pad (230) electrically connected to the current-expanding layer (210) exposed through the top insulating layer (220); and a second pad (240) electrically connected to the reflective electrode (140) exposed through the top insulating layer (220); 2. to pay the court a penalty payment of up to EUR 250,000.00 for each case of non-compliance with the Order under Section I. 1; 3. within a period of 30 days after service of the notification within the meaning of R. 118.8 sentence 1 RoP and, if applicable, the certified translation, the products delivered since 4 January 2023 in accordance with point I. 1 at the defendant's expense a. from the distribution channels by informing the third parties from whom the infringing products are to be recalled that this court has found that the products infringe European Patent EP 3 926 698 B1, whereby the defendants must give the third parties a binding undertaking to reimburse the costs incurred, to bear the packaging and transport costs incurred, to reimburse the customs and storage costs associated with the return of the products and to take back the products, and b. permanently remove the products from the distribution channels by ordering the defendants, with reference to the fact that this court has found that the products infringe the European patent EP 3 926 698 B1, to order third parties who are commercial customers but not end customers, with regard to the products referred to in point I.1, to cancel all orders relating to the products referred to in point I.1 and to notify the court and the plaintiff within the aforementioned period of 30 days after service of the notice within the meaning of and to provide the court and the plaintiff with written proof of the action taken within the aforementioned period of 30 days after service of the notification within the meaning of R. 118.8 sentence 1 RoP and, if applicable, the certified translation; 4. to provide the applicant with information on a. Origin and distribution channels of products delivered, received or ordered since 4 January 2023 according to item I. 1, b. the quantities delivered, received or ordered since 4 January 2023 and the prices paid for the products under I. 1,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 12 and c. the identity of all third parties involved in the manufacture or distribution of products in accordance with Section I.1 since 4 January 2023; 5. within a period of 30 days after delivery of the notification within the meaning of R. 118.8 sentence 1 RoP and, if applicable, the certified translation, to destroy the products in its direct or indirect possession or in its ownership in accordance with section A.I.1 at the defendant's expense. II. order the defendants to compensate the plaintiff for all damage which it has suffered and will suffer as a result of the acts referred to in point I.1 during the term of EP 3 926 698 B1; III. to declare the conviction under I. and II. immediately effective and enforceable; IV. order the defendants to pay the costs. With regard to the wording of the "in particular if" applications, reference is made to the statement of claim. The defendants claim, 1. dismiss the plaintiff's action; 2. order the applicant to pay the costs. Counterclaim and amendments: The defendant under 2) applies, 1. declare EP 3 926 698 invalid with effect in the territory of the Republic of Austria, the Kingdom of Belgium, the Federal Republic of Germany, France, Italy, Luxembourg, the Netherlands and Sweden to the extent of claims 1, 4, 5, 6 and 9. 2. order the applicant to pay the costs. The applicant claims that the Court should dismiss the counterclaim for annulment. With regard to the wording of the amendments, please refer to the document dated 25 March 2024 and the annexes. With regard to the wording of the further auxiliary requests submitted in accordance with R. 30.2. RoP but not yet admitted, reference is made to the document dated 27 June 2024 (App 37320/2024).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 13 FACTUAL AND LEGAL ISSUES: Injury: According to the plaintiff, the structure of the contested embodiment is as follows: The following figure shows a schematic representation of the layer structure of the contested design from the plaintiff's point of view:2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 14 Having said this, the defendants deny the existence of a stress-relief layer in the attacked embodiment. According to the patent in suit, a metal barrier layer can be formed from a plurality of layers which can fulfil the function of a metal barrier layer. This is to be distinguished from the stress-relief layer, which may not have the function of a metal barrier layer. In addition, with regard to the stress-relief layer, only the respective layer that is directly adjacent to the reflective layer is of significance. Arbitrary combinations of several layers could not be regarded as a stress- relief layer because the technical issue was which specific layer with which specific coefficient of thermal expansion was in contact with the reflective metal layer and thus caused the problem or the risk of stresses. On the basis of such an understanding, the contested embodiment does not have a stress-relief layer within the meaning of the patent in suit. A reflective layer of silver is followed by a metal barrier layer formed from the layer sequence Ti-Ni-Ti-Ni-Ti. Silver has a coefficient of thermal expansion of 18.9 μm/(m-K), whereas the coefficient of thermal expansion of titanium is 8.6 μm/(m-K). The coefficient of thermal expansion of nickel is 13.0 μm/(m-K) and thus between these values. In the attacked embodiment, therefore, there is only a reflective layer and a metal barrier layer formed from the layer sequence Ti, Ni, Ti, Ni, Ti. A stress relief layer is not present. On the basis of the understanding represented by the plaintiff in the context of the action for annulment, there is still no current expansion layer. If, as the plaintiff had stated in connection with citation D 3, a "complete layer" was required in this respect, such a layer was not present in the contested embodiment. There are individual narrow webs, which are then connected to a larger surface. The lateral narrow webs would lead to a considerable inhomogeneity of the current distribution and thus cause an asymmetrical current flow. Furthermore, according to the invention, the lower insulating layer should cover the entire surface of the structure. This is also not the case with the contested embodiment. It is true that there are certain opening areas in the outer area (right and left). However, if one agrees with the applicant that a complete covering is required with the exception of the openings at the edge of the substrate, such an embodiment is not realised in the attacked embodiment. Moreover, the plaintiff argued in the invalidity proceedings that the current expansion layer was located spatially below the insulating layer. This is indisputably not the case with the contested embodiment. There, the insulating layer moves spatially diagonally upwards and is therefore in any case not spatially completely below the insulating layer. Finally, in its defence to the action for annulment, the applicant pointed out that an "upper insulating layer" is only present if it only has individual holes, but not large open areas. This was not the case with the contested embodiment. There, the openings in the upper insulating layer are significantly larger than is the case with the D 3 retention. Either one assumes with the plaintiff in the context of the action for annulment that the feature is not realised in this case. Then there would be no infringement. Or one takes the view that none of these are relevant requirements. In that case, the feature would be considered to be prejudicial to novelty. The plaintiff has countered this argument.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 15 It considers that the materials of the reflective electrode used in the contested embodiment correspond exactly to the materials which the patent in suit mentions for the metal barrier layer and the stress-relief layer in an example embodiment. In paragraph [0033], the patent in suit describes a metal barrier layer made of titanium (Ti), a stress-relief layer made of nickel (Ni) and titanium (Ti) and a titanium layer (Ti) directly below the layer of silicon dioxide (SiO2), which is the metal barrier layer. The allocation to the individual layers should be functional and based on the description of the patent in dispute. The function of the metal barrier layer is to prevent the diffusion of elements from the reflective metal layer and the exposure of the reflective metal barrier layer. This depends on the combination of materials. According to the patent, the stress-relief layer can consist of several layers and be designed as a composite layer. In addition, the coefficient of thermal expansion of the stress-relief layer must lie between that of the reflective layer and the metal barrier layer. In a finished layer structure, the neighbouring, connected layers must also be taken into account, as well as the entirety of the layers and their mutual influences in the case of a composite layer. In the opinion of the plaintiff, the defendants are distorting their submissions in the nullity proceedings with their objections to the stream widening layer. If the defence to the nullity counterclaim states that the stream widening layer must be a flat structure, this must be read in the context of the delimitation of D 3. This discloses a flat structure consisting of webs and narrow areas, which does not constitute a layer within the meaning of the patent in suit (left: Figure 5 of D 3: right: attacked embodiment): Insofar as the defendants deny the existence of an insulating layer, the fact that the lower insulating layer in the contested embodiment has further openings in the inner area, via which the semiconductor layer is also contacted, does not prevent the technical teaching of the patent in suit from being realised:2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 16 In the contested embodiment, the lower insulating layer covered the entire surface of the structure. Openings that were not used for contacting did not exist. Counterclaim: In the opinion of the defendant (2), the patent in suit does not effectively c l a i m the priority of the KR 201100093396 and the KR 20120015758. While the KR '396 lacks the disclosure of a relaxation layer, the design disclosed in the KR '758 has a transparent electrode layer. There was therefore no disclosure of a reflective electrode within the meaning of the patent in suit. Furthermore, the subject matter of claim 1 of the patent in suit goes beyond the content of the original application. Firstly, at least in the opinion of the plaintiff, claim 1 in the granted version covers not only embodiments with several mesas, but also those which have only one mesa. Such embodiments with only one mesa were not disclosed in the original patent application. Only embodiments with a plurality of mesas were shown there. Apart from that, claim 1 only requires that the reflective metal layer, the metal barrier layer and the stress relief layer are formed and that the reflective electrode has these layers. This was also not disclosed in the original patent application. There, the lateral enclosure of the reflective metal layer and the stress-relief layer was technically decisive for preventing the diffusion of ions from these layers into the second semiconductor layer. For this purpose, the side areas of the layers must be covered. Moreover, the inventive step was also lacking. In US 2005/0067624 A1 (D 3), all the features of claim 1 are disclosed with the exception of the stress relief layer and its coefficient of thermal expansion. Based on claim D 3, the objective task for the person skilled in the art is to reduce stresses between a reflective metal layer and a metal barrier layer. The skilled person learns from EP 1 806 790 A2 (D 5) that this makes sense and that such stresses should be avoided, in that this explains that a stress-relief layer with an adapted coefficient of thermal expansion should be provided between the reflective metal layer and the metal barrier layer. There are no further difficulties with the combination. In this respect, it should be noted that the technical problem of stresses between the layers has no effect on other layers or the structure of the LED. Against this background, a combination would not have to overcome any further technical difficulties. Based on US 2009/283787 A1 (D 2), inventive step is also to be denied. The light-emitting diode shown there in Figure 3 anticipates all features. It only lacked a reflective electrode and openings in the lower insulating layer, which were arranged near one edge of the substrate. However, a reflective electrode is shown in Figure 2 of the disclosure. The combination of the reflective electrode with the other layers disclosed in the embodiment example according to Figure 2 with the embodiment disclosed in Figure 3 is already obvious because both embodiment examples are disclosed in D 2. Against this background, certain embodiment variants of the individual designs of the LED could obviously be combined with each other for the person skilled in the art. Openings near the edge of the substrate are disclosed in Figures 2, 3, 5 and 6 as well as in the embodiment example according to Figures 14 and 15 of D 1 (US 2010/0 117 111 A1). In this respect, the aim is to reduce the series resistance of the device. This is possible by changing the current distribution.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 17 by also providing a current contact at the edge. This has nothing directly to do with the further structure of the LED. It could therefore be added independently by the skilled person without causing any further disadvantages. The plaintiff has opposed this. The inadmissible extension had already played no role in the granting procedure. In Figures 24 to 26, the original application shows a further embodiment in which only one mesa is present on the LED chip. Thus, a single mesa is also part of the disclosure of the original application. Furthermore, the original application does not only disclose embodiments in which the metal barrier layer laterally surrounds the reflective diode. Insofar as the defendant 2) refers to D 3 in the context of the discussion of the inventive step, it describes two different examples of embodiments in Figures 5 to 7 and 14 and 15, which must be treated separately when discussing the inventive step. The overall disclosure of D 3 focuses on the realisation of the current distribution through the grid of thin connecting lines (15a, 15b). Nothing is apparent which could lead the skilled person to provide instead a current expansion layer covering the mesa areas with an upper insulating layer through which the current expansion layer is exposed. With regard to the avoidance of thermally induced stresses, the D 5 combined by the defendant with the D 3 is limited to the selection of two materials for two neighbouring layers (the reflective silver layer and the palladium layer) of the reflective electrode with an almost identical coefficient of expansion. Consequently, the teaching of D 5 does not include a stress-relief layer provided specifically for the stress build-up as an additional layer between the two outer layers with an average coefficient of thermal expansion to avoid delamination in the three-layer structure as a whole. Based on D 3, the skilled person would select materials with the most similar coefficients of thermal expansion possible for the reflective metal layer there and for the metal barrier layer. However, there is no indication that an intermediate stress-relief layer with a heat exchange coefficient between that of the reflective metal layer and that of the metal barrier layer should be provided. D 2 had already been taken into account in the grant procedure and had not been assessed as preventing patentability. Apart from that, the citation was also not suitable for calling the inventive step into question when viewed together with D 3. Enforceability: With regard to the legal consequences, immediate enforceability cannot be considered in the present case from the defendant's point of view. The defendants are pure trading companies that deal in mobile phones. Whether and which components are installed there is not recognisable for the defendants. Furthermore, the LEDs at issue are standard components that are purchased at a price in the range of 70 cents to 80 cents each. In this respect, there is a blatant disproportion to the respective mobile phone. This illustrates that the LED at issue is a very small component that has no relevance for the economic success of the products, i.e. mobile phones. The value ratios would make it clear that provisional enforceability would cause unreasonable damage compared to the plaintiff's claims, which could be justified by a patent infringement. If the plaintiff decides in favour, not against the manufacturer,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 18 but against a party not involved in production and distribution, it would have to accept that it would have to provide security. The plaintiff has opposed this. With regard to the further submissions of the parties, reference is made to the entire contents of the file. REASONS FOR THE DECISION: The admissible action is successful on the merits. The action for annulment is admissible, but unfounded. A. Admissibility of the action and the action for annulment Both the action and the action for annulment are admissible. I. Since the defendants did not file an opposition within the opposition period, both the jurisdiction of the Unified Patent Court and the jurisdiction of the Düsseldorf Local Court are deemed to be recognised, R. 19.7 RoP. II. There are no concerns regarding the admissibility of the counterclaim. 1. In particular, the Unified Patent Court (UPC) also has international jurisdiction. Pursuant to Art. 32(1)(e) UPCA, the UPC has exclusive jurisdiction for counterclaims for revocation of (European) patents. As there is currently no opt-out (Art. 83 (3) UPCA) from the exclusive jurisdiction of the court in relation to the patent in dispute in force, the UPC - as a court common to the member states of the UPCA - has international jurisdiction for the present counterclaim pursuant to Art. 24 (4), 71a (2) (a), 71b (1) of Regulation (EU) No. 1215/2012. 2. The fact that the action for annulment was expressly brought by defendant 2) alone, but not by defendant 1), does not preclude its admissibility. In principle, if there are several defendants, the plaintiff has the choice of suing each defendant individually or bringing an action against several defendants. If the plaintiff chooses the latter, the court may order a separation of proceedings in accordance with R. 303.3 RoP. If a separate action is brought, the court may join the proceedings in accordance with R. 340 RoP (see Bopp/Kircher, Handbuch Europäischer Patentprozess, 2nd ed., § 12 para. 211). It follows that the actions against the individual defendants must each be treated independently (see Tilmann/Plassmann/Dorn, Einheitspatent, Unified Patent Court, EPGVerfO § 303 para. 15). Each defendant conducts its own lawsuit formally and substantively independently of the others, without the respective actions of one defendant causing advantages or disadvantages for the other defendant (see Luginbühl/Hüttermann, Unitary Patent System, Rule 303 para. 26). Therefore, R. 25.1 RoP requires the filing of a counterclaim for a declaration of invalidity of the patent if the statement of defence includes the assertion that the allegedly infringed patent is invalid,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 19 this applies to each defendant separately. This does not exclude the joint filing of an action for annulment by several defendants. In the present case, it follows that the defendant 2) has fulfilled its obligation to file a counterclaim for annulment. The fact that defendant 1) waived its right to file a counterclaim for annulment has no influence on the admissibility of defendant 2)'s counterclaim for annulment. Conversely, it also follows from the above that the defendant 1) has not filed an action for revocation. Therefore, the validity argument is formally ruled out for them (see: Luginbühl/Hüttermann, Unitary Patent System, R. 25 para. 4). If the court decides to separate the proceedings against both defendants - as is not the case here - the defendant 1) could therefore not successfully invoke the lack of legal existence in its proceedings. In contrast, without such a separation, the independence of the procedural relationships has no de facto effect on defendant 1), at least as long as the Board refrains from separating the proceedings. If the patent in suit is declared invalid on the basis of an action for invalidity brought by a defendant, the infringement action as a whole already lacks a basis. B. Scope of protection of the patent in suit With regard to the scope of protection of the patent in suit, the following applies: I. The patent in suit relates to a light-emitting diode and in particular to a light-emitting diode of the flip-chip type with improved luminous efficacy. 1. As the patent in suit explains in the introduction, light-emitting diodes based on gallium nitride are formed by growing epitaxial layers on a substrate. They comprise an n-type semiconductor layer, a p-type semiconductor layer and an intermediate active layer. An n-type electrode pad is formed on the n-type semiconductor layer and a p-type electrode pad is formed on the p-type semiconductor layer. For operation, the light-emitting diode is electrically connected to an external current source via the electrode pads. At this point, current flows from the p-electrode pad to the n-electrode pad through the semiconductor layer (para. [0003]). In order to improve heat conduction and at the same time prevent light loss through the p- electrode pad, a light-emitting diode with a flip-chip structure is used in the prior art. In the prior art (see US 6 486 499 B1 = citation D 6 in the nullity action), various electrode structures were proposed to improve the current distribution in large-area light-emitting diodes with this structure. For example, a reflective electrode is formed on the p-type semiconductor layer. In addition, extensions for current propagation are formed on an area of the n-type semiconductor layer, exposed by etching the p-type semiconductor layer and the active layer (Ref. [0004]). Linear extensions are used, which limit the current distribution due to their high resistance (Ref. [0006]). In solutions known from the prior art, the reflective electrode formed on the p-type semiconductor layer reflects the light generated in the active layer to increase the light extraction efficiency and supports the current distribution in the p-type semiconductor layer.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 20 type (para. [0005]). Since a reflective electrode is only placed on the p-type semiconductor layer, there is considerable loss of light through the pads and the extensions (para. [0006]). LEDs with a flip-chip structure are characterised by the fact that light is emitted through a substrate. Accordingly, after the formation of semiconductor layers on the substrate, a metallic reflection layer is formed over the semiconductor layers or a current distribution layer so that light can be reflected by the reflection layer (Ref. [0007]). Figure 1, shown below in reduced form, taken from the patent in suit and coloured by the court, is a partial sectional view of a light-emitting diode with a reflective layer from the prior art (para. [0008]): In particular, a mesa layer (10), an ohmic layer (12) formed from a conductive metal or a conductive oxide and a reflective layer (13) consisting of silver (Ag) or aluminium (Al) can be seen. In the barrier layer (14), first barrier layers (14b) containing nickel (Ni) and second barrier layers (14b) containing tungsten (W) or tungsten-titanium (TiW) are alternately stacked on top of each other. The barrier layer (14) prevents the diffusion of metal elements that form the reflective layer (13). The reflective layer (13) has a higher coefficient of thermal expansion than the barrier layer (14). This leads to stresses in the reflective layer (13). Accordingly, the reflective layer (13) is separated from the resistive layer (12) or the mesa layer (10) under the resistive layer (12) due to the stress generated in the reflective layer (13) at the same temperature (Ref. [0012]). In addition, various methods have been developed in the prior art to improve the performance of the light-emitting diode. For example, the solution disclosed in US 2009/0283787 A1 (= citation D 2 in the cancellation counterclaim) comprises a light-emitting diode comprising a diode region having first and second opposing surfaces and containing an n-type layer and a p-type layer. An anode contact ohmically contacts the p-type layer and extends on the first surface. In addition, a transparent insulating layer extends on the first surface outside the anode contact. The n-type layer is electrically contacted by a reflective cathode contact, which extends through a transparent insulating layer and onto the transparent insulating layer located outside the anode contact to cover substantially the entire first surface located outside the anode contact with the reflective cathode contact (par. [0013]). Based on this, the patent in suit, according to the description of the patent in suit, is based on the task (the technical problem) of developing a light-emitting diode with improved current distribution performance and improved light extraction efficiency by improving the reflectance of the light-emitting diode.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 21 xionising diode capable of reducing the voltage caused by a reflective layer. Furthermore, to provide a method for manufacturing a light-emitting diode which can improve the current distribution performance while avoiding a complicated manufacturing process. Finally, a technique for improving the light extraction efficiency by surface patterning with a cost-effective and simple process is to be provided (para. [0014] - [0018]). To solve this problem, patent claim 1 of the patent in suit protects a light-emitting diode which is characterised by a combination of the following features: 1. Light emitting diode, comprising 1.1. a light-emitting structure; 1.2. mesa etched areas (150); 1.3. a reflective electrode (140); 1.4. a bottom insulating layer (200); 1.5. a flow expansion layer (210); 1.6. an upper insulating layer (220); 1.7. a first pad (230); 1.8. a second pad (240). 2. The light-emitting structure 2.1. is formed on a substrate (100); 2.2. points out: 2.1.1. a semiconductor layer (110) of a first conductivity type, 2.1.2. an active layer (120) and 2.1.3. a semiconductor layer (130) of a second conductivity type. 3. The mesa-etched areas (150) are formed from the surface of the semiconductor layer (130) of the second conductivity type to the semiconductor layer (110) of the first conductivity type. 4. The reflective electrode (140) 4.1. is formed on the semiconductor layer (130) of the second conductivity type; 4.2. points out: 4.2.1. a reflective metal layer (142); 4.2.2. a metal barrier layer (144); 4.2.3. a stress-relief layer (143); 4.2.3.1. The relaxation layer (143) 4.2.3.1.1. is between the reflective metal layer (142) and the metal barrier layer (144); 4.2.3.1.2. has a coefficient of thermal expansion between the coefficient of thermal expansion of the reflective metal layer2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 22 (142) and the coefficient of thermal expansion of the metal barrier layer (144). 5. The bottom insulating layer (200) 5.1. covers the one total surface of the structure, which is formed by: 5.1.1. the semiconductor layer (110) of the first conductivity type, 5.1.2. the active layer (120), 5.1.3. the semiconductor layer (130) of the second conductivity type; 5.1.4. the mesa-etched areas (150) and 5.1.5. the reflective electrode (140). 5.2. has openings that are located near the edge of the substrate; 5.3. enables that 5.3.1. an upper surface of the reflective electrode (140) is partially exposed through it; 5.3.2. the semiconductor layer (110) of the first conductivity type is exposed through it in the mesa etched areas (150); 6. The current expansion layer (210) 6.1. is formed on the lower insulating layer (200); 6.2. covers the semiconductor layer (110) of the first conductivity type; 6.3. is electrically connected to the semiconductor layer (110) of the first conductivity type. 7. The upper insulating layer (220) 7.1. is formed on the flow expansion layer (210). 7.2. Both the current expansion layer (210) and the reflective electrode (140) are partially exposed through the upper insulating layer (220). 8. The first pad (230) is electrically connected to the current expansion layer (210), which is exposed through the upper insulating layer (220). 9. The second pad (240) is electrically connected to the reflective electrode (140), which is exposed through the upper insulating layer (220). 2. Some features require interpretation. a) According to Art. 69 EPC in conjunction with the Protocol on its interpretation, the patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. The interpretation of a patent claim is not solely dependent on2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 23 its exact wording in the linguistic sense. 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 that which, after examination of the description and drawings, appears to be the patentee's request for protection (UPC CoA 335/2023, Order of 26 February 2023 in conjunction with Order of 11 March 2023). Order of 11 March 2024, GRUR-RS 2024, 2829, second headnote and para. 73 - 77 - 10x Genomics v. NanoString; UPC COA 182/2024, Order of 25 September 2024, para. 82 - Mammut Sports v. Ortovox Sportartikel; see also UPC CFI 7/2024 (LD Düsseldorf), decision of 3 July 2024, ORD 598324/2023 - Franz Kaldewei v. Bette). b) In the opinion of the local division, the relevant person skilled in the art is a graduate engineer or master of electrical engineering or semiconductor physics with a degree from a university of applied sciences and several years of professional experience in the development of light- emitting diodes and processes for their manufacture. c) Having said this, the following applies: aa) According to the invention, the light-emitting diode has mesa-etched areas (150). (1) The person skilled in the art, who turns to the question of the technical design of such areas, will infer from patent claim 1 that the mesa-etched areas are formed from the surface of the semiconductor layer (130) of the second conductivity type to the semiconductor layer of the first conductivity type (feature 3.). From this, the skilled person concludes two things: There must be mesa-etched areas (plural) and thus at least two. The existence of a single such area is not sufficient for the realisation of the technical teaching protected by the patent in suit. In addition, the mesa-etched areas must in any case extend from the surface of the semiconductor layer of the second conductivity type to the semiconductor layer of the first conductivity type. In addition, the mesa-etched areas are only mentioned in claim 1 to the effect that they are part of the structure covered by the lower insulating layer (see notes 5.1. and 5.1.4.) and that the semiconductor layer (110) of the first conductivity type is exposed through the lower insulating layer in the mesa-etched areas. The skilled person will search in vain in claim 1 for further specifications, for example on the shape or on the question of the overlapping of mesa-etched areas. (2) Turning from this to the patent description, the skilled person's attention is first drawn to paragraph [0125], which states: "Referring to Figure 14 , part of the active layer 120 and part of the second semiconductor layer 130 are removed by typical etching. As a result, the first semiconductor layer 110 is partially exposed. Through the etching process, an upper surface of the first semiconductor layer 110 is exposed, and side surfaces of the active layer 120 and the second semiconductor layer 130 are exposed. As a result, the active layer 120 and the second semiconductor layer 130 are partially removed to form trenches and holes through the etching process. In other words, the mesa-etched areas 150 formed from the surface of the second semiconductor layer 130 [...] to the surface of the first semiconductor layer 1102024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 24 may be a trench-shaped stripe type or a hole type." And based on the translation provided as Annex LL 6a: "Referring to Figure 14, a portion of the active layer 120 and a portion of the second semiconductor layer 130 are removed by typical etching. As a result, the first semiconductor layer 110 is exposed. As a result of the etching process, a top surface of the first semiconductor layer 110 is exposed, and side surfaces of the active layer 120 and the second semiconductor layer 130 are exposed. As a result, the active layer 120 and the second semiconductor layer 130 are partially removed to form trenches and holes by the etching process. In other words, the mesa-etched regions 150 formed from the surface of the second semiconductor layer 130 [...] to the surface of the first semiconductor layer 110 may be trench-shaped, strip-shaped or hole-shaped." (emphasis added) Even if Figure 14, together with the associated description, is an embodiment example to which the invention must not be reduced, the excerpt from the patent-in-suit description reproduced above demonstrates to the skilled person why mesa- etched areas are required according to the invention: If parts of the active layer and the second semiconductor layer are removed during the etching process, the first semiconductor layer is exposed in the mesa- etched areas (see also paragraphs [0147], [0165], [0167], [0195] and [0004] loc. cit., [0019] and [0071], the latter r e f e r r i n g to "structuring of the second conductive semiconductor layer and the active layer"). Correspondingly, the patent in suit understands a "Mesa etching" means a process of partially etching the second conductive semiconductor layer to expose the first conductive semiconductor layer (Ref. [0230]). Furthermore, since the first semiconductor layer is not covered by the lower insulating layer in the mesa- etched areas, this enables an electrical connection from the first pad (230) (feature 8.) via the current expansion layer (210) (feature 6.3.) to the first semiconductor layer. The first semiconductor layer (110) is therefore electrically connected to the first pad (130) (see paragraphs [0085] and [0160]). (3) As the skilled person will further understand from the description of the patent in suit, the mesa- etched regions can be shaped in the form of trenches, strips or holes (see paragraphs [0125] loc. cit., [0126], [0141], [0144], [0164], [0168]). However, since patent claim 1 does not mention the shape of the mesa-etched areas and it is also not apparent that the mesa-etched areas can only fulfil the function of exposing the first semiconductor layer assigned to them according to the invention with a specific shape, the design of the shape of the mesa-etched areas is left to the discretion of the skilled person as long as these areas are formed, as required by feature 3, from the first semiconductor layer of the second conductivity type to the semiconductor layer of the first conductivity type. This also includes the possibility of partially overlapping mesa- etched areas as long as at least two such areas remain identifiable. (4) No mention is made in patent claim 1 of the mesa(s) created as a result of the presence of corresponding mesa-etched areas (150). The number of these is left open in patent claim 1. Insofar as a plurality of mesas is repeatedly mentioned in the description of the patent in suit (see, for example, paragraphs [0020] - [0023], [0027], [0037], [0039], [0041], [0044], [0070] - [0073], [0076] et seq, [0080], [0091], [0093] f.), such a design was not reflected in the claim. The scope of protection therefore covers not only designs in which several, i.e. at least two, mesas can be identified. Rather, light-emitting diodes with only one mesa are also protected.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 25 Mesa, as long as the light-emitting diode has mesa-etched and thus at least two such areas. If patent claim 1 is based solely on the presence of mesa-etched areas and thus not on the mesa itself, the shape of one or more mesa(s) is also not decisive. These may, for example, have an elongated shape and extend parallel to each other in the direction of one side of the substrate (cf. para. [0022], [0072]), without the invention being limited to such a shape. bb) According to the invention, the electrode (140) formed on the semiconductor layer of the second conductivity type has a reflective metal layer (142), a metal barrier layer (144) and a stress-relief layer (143) (features 4., 4.1., 4.2.1. - 4.2.3.). (1) The skilled person will search in vain for specifications on the chemical composition of the aforementioned layers in patent claim 1. Rather, these are merely defined and differentiated from one another in relation to the function assigned to them and their properties. (a) Thus, the reflective metal layer (feature 4.2.1.) serves to reflect the light generated in the active layer (feature 2.1.2.) (see para. [0010], para. [0112]). Even if patent claim 1 does not refer to the substances contained in the layer, it is thus clear that the reflective metal layer must be formed from a material with a high conductivity and a high reflectivity with respect to light. By way of example, the patent specification cites silver (Ag) or silver alloys or aluminium (Al) or aluminium alloys as possible constituents of the reflective metal layer (cf. sub-claim 4 and paragraphs [0010] loc. cit., [0075], [0098], [0112], [0115] f., [0129], [0140]). (b) However, the metal elements or ions contained in the reflective metal layer can diffuse into the neighbouring layers. In order to prevent this (and thus ultimately a deterioration of the reflective properties) of the reflective metal layer (par. [0011] and [0115]), the reflective electrode according to the invention also has a metal barrier layer (feature 4.2.2.). To improve the barrier effect, the metal barrier layer, which may also be multi-layered, can (also) cover the side surfaces of the reflective layer in addition to a top surface (subclaim 7 and paragraphs [0011], [0024], [0075], [0137] f.). However, this is not a condition for realising the technical teaching protected by patent claim 1. As possible materials for the metal barrier layer, the patent in suit mentions, inter alia, tungsten (W), tungsten-titanium (TiW), titanium (Ti), nickel (Ni), molybdenum (Mo) or palladium (Pd) (see sub-claim 6 and paragraphs [0011], [0033] - [0036], [0075] a.E., [0115] f., [0136], [0140]), without the scope of protection being limited to these materials. (c) Since the reflective metal layer and the metal barrier layer have different thermal expansion coefficients, stresses can occur in the reflective metal layer, which can cause the reflective metal layer to separate from the mesas and thus ultimately from the second semiconductor layer (para. [0099]). In order to relieve these stresses, according to the invention, between the reflective metal layer2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 26 (142) and the metal barrier layer (144), a stress relief layer whose coefficient of thermal expansion is between that of the reflective layer and that of the metal barrier layer is provided (features 4.2.3., 4.2.3.1. and 4.2.3.1.1.). Accordingly, the stress caused by the difference in thermal expansion coefficients between the reflective metal layer (142) and the metal barrier layer (144) is absorbed by the stress relief layer (143) (par. [0142]), whereby separation of the reflective metal layer from the semiconductor layer can be prevented (par. [0045] loc. cit., [0113]). As far as the materials of the stress-relieving layer are concerned, this can be, for example, either a single layer formed from silver (Ag), copper (Cu), nickel (Ni), titanium (Ti) or palladium (Pd) or a composite layer formed from copper (Cu), nickel (Ni), titanium (Ti), palladium (Pd) or gold (Au) (see sub-claim 9 and paragraphs [0033] - [0035] and paragraphs [0112] - [0114]). However, since the coefficient of thermal expansion of the stress relief layer should lie between that of the reflective metal layer and the metal barrier layer and both the reflective metal layer and the metal barrier layer can be composed of a variety of materials, the material of the stress relief layer is inevitably dependent on the material of the other layers (par. [0113], [0132] and [0140]). This must be selected in such a way that the coefficient of thermal expansion of the layer in question lies between that of the reflective metal layer and the metal barrier layer. (d) As far as the delimitation of the layers from each other is concerned, this cannot be carried out on the basis of the above considerations alone on the basis of the materials contained in the respective layer, because the patent in suit description already permits the same materials in different layers in some cases. For example, silver is mentioned as a component of both the reflective metal layer and the stress relief layer (see sub-claims 4 and 9 and para. [0033]). The same applies to titanium and nickel, which are mentioned both as a component of the stress- relief layer and of the metal barrier layer (see sub-claims 6 and 9; paragraphs [0033] - [0036] and [0115] f.). According to the patent-in-suit description, certain materials cannot only alternatively belong to certain layers. Rather, the description of the patent in suit also allows certain materials to be found in one embodiment both in the metal barrier layer and in the stress-relief layer. For example, the following embodiment is mentioned in paragraph [0033] of the patent in suit description: "[...] and the barrier metal layer may include one of W, TiW, Mo, Ti, Cr, Pt, Rh, Pd, and Ni. Further, the stress relieving layer may be formed as a single layer of Ag, Cu, Ni, Pt, Ti, Rh, Pd or Cr, or as a composite layer of a plurality of metals selected from Cu, Ni, Pt, Ti, Rh, Pd or Au." And in the translation submitted as Annex LL 6a: "[...] and the barrier metal layer may include one of W, TiW, Mo, Ti, Cr, Pt, Rh, Pd and Ni. In addition, the stress relief layer may be formed as a single layer of Ag, Cu, Ni, Pt, Ti, Rh, Pd or Cr or as a composite layer of a plurality of metals selected from Cu, Ni, Pt, Ti, Rh, Pd or Au." (emphasis added) These statements, which can be found in the general part of the description of the patent in suit, therefore make it clear to the person skilled in the art that nickel and titanium can be components of both the metal barrier layer and the stress relief layer, and, in the absence of any restriction, also in one and the same embodiment and irrespective of whether the stress relief layer is designed as a single layer or as a composite layer.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 27 In addition, paragraph [0115] f. states, among other things: "[...] when the reflective metal layer 142 includes Al or Al alloys and the barrier metal layer 144 in- cludes Cr, Pt, Rh, Pd or Ni, the stress relieving layer 143 may be formed as a single layer of Ag or Cu or as a composite layer of Ni, Au, Cu or Ag. [...] when the reflective metal layer 142 includes Ag or Ag alloys and the barrier metal layer 144 includes Cr or Ni, the stress relieving layer 143 may be formed as a single layer of Cu, Cr, Rh, Pd, TiW or Ti, or as a composite layer of Ni, Au or Cu". And in German translation (see Annex LL 6a): "[...] if the reflective metal layer 142 also contains Al or Al alloys and the barrier metal layer 144 contains Cr, Pt, Rh, Pd or Ni, the stress-relief layer 143 can be formed as a single layer of Ag or Cu or as a composite layer of Ni, Au, Cu or Ag. [...] If the reflective metal layer 142 contains Ag or Ag alloys and the barrier metal layer 144 contains Cr and Ni, the stress-relief layer 143 can be formed as a single layer of Cu, Cr, Rh, Pd, TiW or Ti or as a composite layer of Ni, Au or Cu." (emphasis added) In the first case, nickel is therefore contained in the metal barrier layer. At the same time, nickel can also be found in the stress relief layer if this is designed as a composite layer. In the second design, nickel is contained in the metal barrier layer, but can also be a component of the stress relief layer if this is designed as a composite layer. Based on this, the determination and categorisation of certain layers cannot be based solely on specific materials. Rather, the function of the layer in question (reflection, relaxation, blocking) is decisive. Since the same substances can be a component of different layers, each of which has certain properties, it is also clear that certain functions of the layers may also overlap. If the stress-relief layer partially prevents the passage of metal elements and ions from the reflective metal layer due to the substances contained therein, for example, this does not lead out of the protective area if (1) another metal barrier layer is present and (2) the coefficient of thermal expansion of the stress-relief layer is between that of the reflective metal layer and the metal barrier layer, so that the stress-relief layer can develop its stress-reducing effect. cc) As the skilled person can see from feature group 5. of the feature structure shown above, the entire surface of the structure formed by the semiconductor layer of the first conductivity type, the active layer, the semiconductor layer of the second conductivity type, the mesa-etched areas and the reflective electrode is to be covered by the lower insulating layer (features 5. and 5.1.). (1) So that both semiconductor layers arranged below the lower insulating layer can be supplied with current from the pads arranged above (see feature groups2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 28 8. and 9.), the semiconductor layers must not be completely insulated from the pads. The need for an electrical connection is taken into account by feature group 5.3, according to which both the upper surface of the reflective electrode and the semiconductor layer of the first conductivity type should be partially exposed through it in the mesa- etched areas. Paragraphs [0077] - [0079] of the patent-in-suit description explain one possible implementation. According to this, the lower insulating layer has openings (31a, 31b) which are arranged in an area between the mesas M and in the vicinity of an edge of the substrate. However, since such openings arranged between the mesas M and in the vicinity of an edge of the substrate are not mentioned in patent claim 1, this is merely a preferred embodiment which does not limit the scope of protection. Patent claim 1 only describes the lower insulating layer in functional terms in that it must allow a corresponding (partial) exposure of the reflective electrode and the semiconductor layer of the first type. The specific technical realisation is left to the skilled person. (2) However, this does not apply without restriction. Rather, the lower insulating layer must be 5.2. have openings disposed near an edge of the substrate ("openings disposed near an edge of the substrate"). As long as such openings are present, a design can fall within the scope of protection of patent claim 1. The mere requirement for an order of openings near the edge does not mean that they may not also be present in other areas. Ordering the openings exclusively at the edge is not required by patent claim 1. If the person skilled in the art tries to understand the scope of feature 5.2, he will recognise that the openings should be arranged near the edge of the substrate (feature 5.2, underscore added). It is therefore not necessary to order the corresponding openings at the edge. It is therefore sufficient if they are located near the edge. The patent in dispute is silent on the technical background of such an order of the openings. A corresponding Order of the openings of the lower insulating layer is only mentioned in paragraph [0078] ("The openings 31a are disposed in a region between the mesas M and near an edge of the substrate 21 [...]; in German translation: "Die Öffnungen 31a und 31b sind in einem Bereich zwischen den Mesas M und in der Nähe einer Kante des Substrats 21 ange- ordnet [...]."). However, the background of such an Order becomes clear with a view to the overall arrangement of the light-emitting diode protected by patent application 1. If the lower insulating layer also has openings in its edge areas, the current expansion layer can be in contact with the semiconductor layer of the first type in these areas close to the edge (cf. feature 5.2. in conjunction with feature 6.3.). This means that the actual contacting of the first semiconductor layer by the current expansion layer also takes place in the edge areas of the semiconductor layer. According to the plaintiff's uncontradicted statements, this shortens the necessary current path in the semiconductor layer of the first conductivity type. According to Ohm's law, this reduces the electrical resistance and increases the efficiency of the LED (statement of claim, p. 21 below, para. 35 and p. 37, para. 65). ee) In order to achieve the objective of improved power distribution performance (cf. para.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 29 [0014] and [0044]), the light emitting diode protected by patent claim 1 has a current expansion layer (feature group 6.). This is characterised in more detail in claim 1 in that it is formed on the lower insulating layer (feature 6.1.), covers the semiconductor layer of the first conductivity type (feature 6.2.) and is electrically connected to the semiconductor layer of the first conductivity type (feature 6.3.). Further specifications for the technical design of the current expansion layer are not found in paragraph claim 1. Insofar as the current expansion layer (current distribution layer) is characterised in paragraph [0080] in connection with the explanation of the design shown in Figure 8 to the effect that it covers the plurality of mesas M (see also paragraphs [0021] and [0093] f.) and has openings in the upper area through which the reflective diodes are exposed, this is not reflected in the patent claim. This is a preferred embodiment example which does not limit the scope of protection. The same applies insofar as the current expansion layer according to paragraph [0097] is intended to cover substantially a total area of the first conductive layer between the mesas M. Patent claim 1 allows coverage of the first semiconductor layer to be sufficient. In contrast, it does not require the entire surface of the first semiconductor layer to be covered, nor does it require the current expansion layer to be formed throughout. The fact that the patent in suit also recognises such a continuous formation of layers is demonstrated by paragraph [0091], according to which the first semiconductor layer should be continuous. Patent claim 1 does not require this with regard to the current expansion layer. ff) According to the invention, an upper insulating layer is to b e formed on the current expansion layer (feature group 7.). As long as the layer in question has an insulating effect and is arranged on the current expansion layer, its more detailed technical design is at the discretion of the person skilled in the art. Furthermore, it only needs to be designed in such a way that the current expansion layer and the reflective diode are partially exposed through it (feature 7.2.). This ensures that the first and second pads, as required by features 8. and 9., can be electrically connected either to the current expansion layer (first pad) or to the reflective electrode (second pad). The technical realisation of this disclosure is left to the skilled person. For example, openings as shown in Figure 9 and described in paragraphs [0083] f. and [0095] may be considered for this purpose. However, the invention is not limited to such a design. C. Merits of the counterclaim The counterclaim is not successful on the merits. I. The subject matter of claim 1 does not go beyond the content of the original application. and is therefore not based on an unauthorised extension. 1. Article 138(1)(c) EPC provides that a European patent may be declared invalid with effect in a Contracting State if the subject-matter of the European patent exceeds the content of the application as originally filed or, if the patent was granted on the basis of a divisional application, the content of the earlier application as originally filed.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 30 version filed (Art. 123(2) EPC). 2. This is not the case here. a) Insofar as the defendant (2) attempts to justify an inadmissible extension by arguing that the original patent application only discloses configurations with several mesas, but not those with one mesa, the mesas themselves are not mentioned in patent claim 1, as already explained. Rather, the presence of mesa-etched regions formed from the surface of the semiconductor layer of the second conductivity type to the semiconductor layer of the first conductivity type is sufficient, but also necessary (feature 3.). Such mesa-etched areas are shown, inter alia, in Figure 24 of the disclosure, which is shown below in the coloured version submitted by the applicant for the file: As illustrated in the figure above, the mesa-etched regions (150) are hole-shaped, with the first semiconductor layer exposed in the mesa-etched regions (150) (see Appendix B5a, paragraphs [0163] and [0167]). Based on the understanding already worked out in detail above, the mesa-etched areas formed as holes are arranged not only in the centre but also in the vicinity of an edge. If the first semiconductor layer is exposed in the mesa-etched areas, it inevitably follows that the lower insulating layer must also have corresponding openings in these areas (feature 5.2.). The defendant 2) rightly points out that an Order of the mesa-etched areas near the edge cannot be justified solely by the areas marked in blue on the left and right in the above figure. The cut D- D ends in a hole in each case, so that a non-metal-etched area is connected from there to the outside. But2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 31 regardless of this, the outer rows of holes are located near the edge. Feature 5.2. does not require more. In particular, there is no need for an Order at the edge. The defendant (2) does not claim that the objective of better current distribution, which is the aim of the edge-side arrangement of the mesa-etched areas, would not be achievable with an order as shown in Figure 24. This is also not apparent. Rather, the current expansion layer can also contact the first semiconductor layer in the edge areas in the design shown, as a result of which the current distribution on the first semiconductor layer can be improved. b) Insofar as the defendant 2) further seeks to justify an inadmissible extension by arguing that feature group 4.2. requires only the formation of a reflective metal layer (142), a metal barrier layer (144) and a stress-relief layer (143) and that the reflective electrode (140) has these layers, whereas according to the original disclosure (Annexes B 5/B 5a) the side areas of the layers (in particular) must also be covered, the local division is not able to follow this, taking into account the overall disclosure content of the disclosure. Even if the metal barrier layer is described there in the context of the explanation of the preferred embodiment example to the effect that it is arranged on the stress-relief layer and comprises the side surface of the reflective metal layer and the stress-relief layer (see Order B 5a, paragraph [0113], see also sub-claim 3), this does not exhaust the disclosure content of the disclosure. Rather, it is stated at the bottom of page 3 to the top of page 4 (cf. Annex B 5): "Each of the reflective electrodes may include a reflective metal layer and a barrier metal layer. Fur- ther, the barrier metal layer may cover an upper surface and a side surface of the reflective metal layer." And based on the translation submitted as Annex B 5a (para. [0023]): "Each of the reflective electrodes may include a reflective metal layer and a barrier metal layer. In addition, the barrier metal layer may cover a top surface and a side surface of the reflective metal layer." (emphasis added) Even if the optional metal barrier layer is present, covering the side surface of the reflective metal layer is therefore a possibility, but not a necessity. II. There is no dispute between the parties that the technical teaching protected by patent claim 1 is new (Art. 54 EPC). There is therefore no need to comment on this question. Furthermore, inventive step must also be affirmed. 1. According to Article 56 EPC, an invention is considered to involve an inventive step if it is not obvious to a person skilled in the art in the light of the prior art. In the opinion of the Munich Central Division (UPC CFI 1/2023 (CD Munich), decision of 16 July 2024 - Sanofi v. Amgen), which is endorsed by the local division2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 32 The examination of inventive step always requires an assessment on a case-by-case basis, taking into account all relevant facts and circumstances. An objective approach must be taken. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. The inventive step is to be assessed from the point of view of the person skilled in the art on the basis of the entire state of the art, including general technical knowledge. It must be assumed that the person skilled in the art had access to the entire generally accessible state of the art at the relevant time. The decisive factor is whether the claimed subject-matter is derived from the prior art in such a way that the skilled person would have found it on the basis of his knowledge and skills, e.g. by obvious modifications of what is already known. In order to assess whether or not a claimed invention was obvious to a person skilled in the art, it is first necessary to determine a starting point in the prior art. Reasons must be given as to why the skilled person would regard a particular part of the prior art as a realistic starting point. A starting point is realistic if its teaching would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop an invention or process similar to that disclosed in the prior art, i.e. having a similar basic problem to the claimed invention (cf. UPC CoA 335/2024, order of 26 February 2024, p. 34 - Nanostring v. 10x Genomics, under "cc" in the original German version, "For a person skilled in the art who was faced with the task at the priority date of the patent in suit, [...] D 6 was of interest"). There may be several realistic starting points, and it is not necessary to determine the "most promising" starting point. If the claimed subject-matter is compared with the prior art after interpretation, the question arises whether it would have been obvious for the skilled person to arrive at the claimed solution on the basis of a realistic disclosure of the prior art in view of the underlying problem. If it was not obvious to arrive at this solution, the claimed subject-matter fulfils the requirements of Article 56 EPC. In general, a claimed solution is obvious if, based on the prior art, the skilled person would be motivated (i.e. would have an incentive, see the CoA in NanoString/10x Ge- nomics, p. 34) to consider the claimed solution and implement it as the next step ("next step", see UPC CoA 335/2024, Order of 26 February 2024, p. 35, second paragraph - Nanostring v. 10x Genomics) in developing the prior art. On the other hand, it may be relevant whether the skilled person would have anticipated particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to combine prior art disclosures. A technical effect or advantage achieved by the claimed subject-matter compared to the prior art may be an indication of inventive step. A feature arbitrarily selected from several possibilities cannot generally contribute to inventive step. One-sidedness must be avoided. The question of inventive step should not be answered by searching retrospectively for (combined) prior art disclosures from which this solution could be derived when the patented subject-matter or the patented solution is known.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 33 2. The plaintiff rightly did not oppose the defendant's objection (2) that the patent in suit does not effectively claim the priority of KR 20110009396 (Annex B 6) and KR20120015758 (Annex B 7). Neither in the LR '396 (Annex B 6) nor in the LR '758 (Annex B 7) is the subject matter of the patent in dispute disclosed. While KR '396 (Annex B 6) lacks the disclosure of a stress-relief layer and its coefficient of thermal expansion (feature group 4.3.), KR '758 (Annex B 7) discloses neither an upper insulation layer nor a stress-relief layer of the reflective diode. The priority date is therefore 17 May 2012. 3. The patent in suit in the registered version is in conflict with a combination of the D 3 (US 2005/0067624 A1) with the D 5 (EP 1 806 790 A2). a) There is rightly no dispute between the parties that D 3 (US 2005/0067624 A1) is a realistic starting point for the assessment of inventive step. b) Citation D 3 protects a light-emitting device with a layer of a first conductivity type, a layer of a second conductivity type and a light-emitting layer (patent claim 1). Consequently, feature group 2 is disclosed. Based on this, Figures 5 to 7 of the citation, which are shown in reduced form below, show an embodiment of the invention with a large-area light-emitting III-nitride flip-chip device. Figure 5 is a top view of a light-emitting component with vias and solder connections: Figures 6 and 7, shown in a version coloured by the chamber, are cross-sectional views of the device shown in Figure 5 along the axis AA (Figure 6) and BB (Figure 7).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 34 As can be seen from the figures above, one or more n-type layers (11) is formed over a substrate (10). An active area (12) and one or more p-type layers (13) are located above this. Several through-holes (14) are formed in the component up to the n-type layers (11) by etching away the p-type layers (13) and the active area (para. [0027]). Feature group 3 (mesa-etched areas) is thus also disclosed. In the figure 6 superimposed above, the n- type metal (21) is introduced into the through holes (14). One or more p-type metal layers (20), which form the electrode or the contact to the p-type layers (13), are applied to the p-type layers, wherein the p-type metal can be a reflective material, for example silver (para. [0029]). The p-type metal layer (20) therefore fulfils the requirements for a reflective metal layer within the meaning of the patent in suit (feature 4.1.1.). As the skilled person can see from paragraph [0030], an optional protective metal layer (50), not shown in Figures 6 and 7 for reasons of clarity (see paragraph [0038]), can be arranged over the p-metal layer. This prevents the silver p-metal from migrating into other parts of the component. It is therefore a metal barrier layer within the meaning of feature 4.2.2. A dielectric layer (22) insulates the p-type metal (20) and the protective metal (50) from an n- type metal, the dielectric layer being removed at the bottom of the via (14). The dielectric layer (22) is therefore a lower insulating layer covering the entire surface of the structure, through which the semiconductor layer of the first conductivity type is exposed in the mesa- etched areas (features 5., 5.1. and 5.3.2.). Since the substructure connection (16) is connected to parts of the p-metal of the component (para. [0036]), the surface of the reflective electrode must also be partially exposed through it (feature 5.3.1.).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 35 As Figure 5 illustrates, based on the above understanding, the lower insulating layer also has openings that are arranged near one edge of the substrate (feature 5.2.). An exact and complete order of the openings at the edge is not required for this. c) In the present case, it is not necessary to make a final decision as to whether the through- connections (14), which are connected horizontally and vertically (15a, 15b), fulfils the requirements for a stromal expansion layer within the meaning of the patent in suit. It is equally irrelevant whether the dielectric layer (23) identified by the defendant 2) as the upper insulating layer is actually arranged on the current expansion layer as required by feature 7.1. In any event, it is undisputed that D 3 does not disclose an expansion layer including the coefficients of thermal expansion within the meaning of feature group 4.2.3. d) As the skilled person understands from paragraph [0031] of D 3, the barrier layer (50) is a layer which prevents the migration of silver into other parts of the device. However, materials that can be used in such a layer are not mentioned in D 3. The skilled person will therefore look for materials for this layer in the prior art and will find what he is looking for in D 5. This also describes a light-emitting diode, which is why the person skilled in the art will consider this document to be suitable prior art. There, a design is disclosed to the skilled person in which a metal layer (7) of paladium (Pd) or platinum (Pt) is applied to a first reflective metal layer (6) (para. [0016]), which prevents the migration of the silver from the reflective metal layer (cf. para. [0071] a.E). If the skilled person takes a closer look at the explanations in paragraph [0016] of D 5, he will find the following, among other things: "[...] The second metal film may have any composition basically as long as it is composed mainly of palladium and/or platinum. [...]"; And in German translation: "[...] The second metal layer can basically have any composition as long as it consists mainly of palladium or platinum. [...]" (emphasis added) In addition to this, the person skilled in the art, as explained, takes from paragraph [0071] of the citation that such a layer formed from palladium or platinum prevents the migration of the silver contained in the first metal layer. If the second metal layer is to consist of palladium and/or platinum and if it also has the required barrier effect, the person skilled in the art draws the conclusion that he can design the metal barrier layer disclosed in D 3 at least from palladium or platinum. In principle, he therefore has suitable materials at his disposal for the design of such a metal barrier layer. Before the skilled person answers the question of whether, against this background, he actually uses palladium and platinum in the design of the metal barrier layer disclosed in D 3, he will first deal with the other properties of such a layer. In this respect, too, he will find what he is looking for in D 5 and more precisely in paragraph [0069], where it says:2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 36 "[...] The linear expansion coefficients of Ag and Pd are almost equal to each other: 19 x 10-6 /K and 11x 10-6 /K, respectively. Therefore, even when the temperature changes, distortion due to a thermal stress hardly occurs between the first and second metal films 6 and 7 [...]." In German: " [...] The linear expansion coefficients of Ag and Pd are almost the same: 19 x 10-6 /K and 11 x 10-6 /K respectively. Therefore, there is hardly any deformation between the first and second metal layers 6 and 7 due to thermal stresses, even with temperature changes. [...]" (emphasis added) If D 5 teaches the skilled person that a metal barrier layer made of palladium or platinum provides the necessary barrier effect in relation to the underlying silver layer and at the same time it is disclosed to him that there is virtually no tension between the silver and palladium layers, at least in the case of a metal barrier layer made of palladium, the skilled person has no reason to look for a solution to reduce possible tension between the two layers and possibly to provide a further (stress-relieving) layer for this purpose. For the design of the metal barrier layer with palladium, he already has a material at his disposal in which such tensions do not occur in the first place. He will therefore design the metal barrier layer starting from the D 3 using the D 5 made of palladium and is therefore finished with his considerations. Based on D 3, he therefore has no reason, even in conjunction with D 5, to provide a three-layer sequence (reflective metal layer, stress-relief layer, metal barrier layer), but will instead leave it at a two-layer structure of reflective metal layer and metal barrier layer. This also applies taking into account the further embodiment example disclosed in paragraphs [0074] - [0081] of D 5. Insofar as further metal layers (10, 11), for example consisting of titanium (Ti) or tungsten-titanium (TiW), are applied to the metal layer (7), these serve to prevent the diffusion of gold (Au) or Sn (tin) (cf. para. [0077]). However, none of these substances is disclosed in D 3 as a component of the reflective metal layer. According to the description there, this consists of a highly reflective material such as silver (para. [0029]). However, its diffusion is also (already) prevented by the metal layer (7) and thus the palladium or platinum layer in the design disclosed in the third embodiment example of D 5. The skilled person who, starting from D 3, goes in search of a material for the metal barrier layer disclosed there, therefore has no reason to provide the design shown in D 3 with further layers and in particular with an additional metal barrier layer formed, for example, from titanium or tungsten-titanium, even taking into account the third embodiment example of D 5. This applies all the more since the application of further metal layers supplementing the metal layer (7) is recommended in D 5 if a further layer of a slightly diffusing material such as tin (Sn) or gold (Au) is arranged over this (second) metal layer (cf. para. [0016], "[...] If a layer (e.g. a pad electrode or soled layer) containing a metal that easily diffuses such as tin (Sn) or gold (Au) is formed above the second metal film, it is preferable that a third metal film composed of e.g. at least one metal selected from the group consisting tungsten, molybdenum, and titanium is provided on the second metal film, in order to prevent tin and gold from reacting with the second metal film."). The person skilled in the art therefore understands the other metal layers more as barrier layers for the pads, but not for the reflective metal layer. 4. D 2 (US 2009/0283787 A1, translation of Annex D 2a) also does not allow the inventive step to be omitted, either on its own or in combination with D 1 (US 2010/0117111 A1).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 37 a) The fact that Figure 3 of D 2, shown below in a coloured version, is a realistic starting point for the assessment of inventive step is rightly not in dispute between the parties: Shown are a substrate (120), an n-type layer (112) and a p-type layer (114) (cf. para. [0040]). In the region (116) arranged between the latter, further layers and thus in particular also the active layer necessary for the function of the LED can be arranged. Thus disclosed is a light-emitting structure of a light-emitting diode within the meaning of feature group 2. A reflective cathode contact (150, "n-contact") contacts the n-type layer (112) and extends through the transparent insulating layer (140) and onto the transparent insulating layer located outside the anode contact (130) (para. [0041]). In the regions in which the cathode contact (150) contacts the p-type layer (112), there are therefore mesa-etched regions (150) within the meaning of feature group 3, which are formed from the surface of the p-type layer and thus the surface of the second semiconductor type to the semiconductor layer of the first type (feature group 3). Since the insulating layer (140) covers both semiconductor layers and the mesa-etched areas, it is basically a lower insulating layer within the meaning of feature group 5. However, in the design shown in Figure 3, the electrode (130'') is trans- parent (cf. para. [0065]), so that the lower insulating layer does not cover a reflective electrode, as required by feature 5.1.5. Furthermore, the lower insulating layer does not have any openings arranged near the edge of the substrate within the meaning of feature 5.2. even on the basis of the broad understanding. The reflective cathode contact (150) covers the semiconductor layer (116) and is electrically connected to it. It is therefore a current-expanding layer (210) within the meaning of the patent in suit. The insulating layer (340) prevents the anode and cathode contact surfaces (160, 170) from short-circuiting each other. It is arranged on the current expansion layer (210), whereby both the current expansion layer (210) and the reflective electrode (140) are partially exposed through this layer. The insulating layer (340) thus discloses an upper insulating layer having all the features of feature group 7.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 38 Finally, the anode pad (160) and the cathode pad (170) fulfil all the requirements of features 7 and 8; these are the first and second pads within the meaning of patent claim 1. b) It is undisputed that Figure 3, together with the associated description, lacks the disclosure of a reflective electrode within the meaning of feature group 4. and of openings in the insulating layer which are arranged in the vicinity of an edge of the substrate (feature 5.2.). It is irrelevant whether an Order of the openings in the vicinity of an edge, as claimed by the defendant 2), results from D 1 (US 2010/0117111 A1) and whether the skilled person in particular also combines both writings with each other. Even if this were the case, there is no obvious disclosure of a reflective electrode within the meaning of feature group 4. A reflective electrode is disclosed in Figure 2 of the citation, which describes a further embodiment example (see para. [0059], reflective anode contact (130')). Even though Figures 2 and 3 are part of the same document, they show different embodiments. What reason the skilled person should have to combine the two self-contained solutions with each other, without falling into an always inadmissible retrospective view, is not apparent and the defendant 2) has also not been able to explain. In the design shown in Figure 3, the transparent insulating layer (140) extends over the transparent anode contact (130''). The reflective cathode contact (150) extends on the transparent insulating layer (140). This in turn extends on the transparent anode contact (130''), which lies outside the section on which the current distribution layer (330) is provided. The reflective cathode contact (150) also extends to the transparent insulating layer (140), which is located on the transparent anode contact (130'') outside this section. In this way, an integrated n-contact hybrid mirror is provided that reflects light passing through the transparent anode contact (130'') back into the diode region (110) (see para [0066]). Accordingly, embodiments of Figure 3 may provide a reflective structure comprising a reflective surface of the cathode contact (150) comprising a reflective surface of the cathode contact (150) ohmically contacting the n-type layer (112) and a reflective surface of an extension (150a) of the cathode contact (150) extending onto the transparent anode contact (130'') in combination with the transparent insulating layer (140) (par. [0067]). Figure 3 thus reveals a self-contained structure consisting of a transparent insulating layer on a transparent anode contact, which is combined with a reflective cathode contact. With the cathode contact (150), the design shown in Figure 3 therefore already has a reflective component through which all of the light emitted from the diode contact is transmitted. (110) into the anode and cathode region is reflected back into the diode region, with the exception of the negligible light which is absorbed by the barrier layer (210) on the side walls of the anode contact (130) (para. [0064]). Based on this, the person skilled in the art has no reason to replace the transparent diode arranged under the reflective cathode contact (150) with a reflective diode as shown in Figure 2. D. Merits of the action The action is well-founded. Since the challenged embodiment makes use of the technical teaching of the patent in suit in accordance with the literal meaning, the defendants directly infringe the patent in suit in accordance with the literal meaning by offering and marketing the challenged embodiment (Art. 25 (a)2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 39 UPCA). I. Quite rightly, there is no dispute between the parties regarding the realisation of the characteristic groups 1. to 4.2.2., 5.3. and 7.2. to 9. so that no further explanation is required in this respect. II. In addition, the contested embodiment also makes use of the other features of the patent in suit. 1. The reflective electrode of the attacked embodiment not only has a metal barrier layer (feature 4.2.2.), but also a relaxation layer within the meaning of feature group 4.2.3.1. a) In the following illustration, taken from p. 10 of the Reply in the infringement proceedings, the layer sequence to be found in the attacked embodiment, including the respective layer thicknesses, can be recognised: The second GaN semiconductor layer is followed by a reflective metal layer made of silver, which is followed by the titanium-nickel-titanium-nickel-titanium layer sequence. This is followed by a silicon dioxide layer and an aluminium layer. b) In support of its allegation of infringement, the plaintiff argued that the upper titanium layer is the metal barrier layer within the meaning of the patent in dispute. The underlying titanium- nickel-titanium-nickel layer sequence is to be regarded as the stress-relieving layer. This is a composite layer with a coefficient of thermal expansion (CTE) of 11.79 μm/(m-K). This lies between the CTE of pure silver (18.9 μm/(m-K)) and that of pure titanium (8.6 μm/(m-K)), in each case at 20 °C (see Reply of 25 March 2024, p. 11). Based on this, the titanium-nickel-titanium- nickel composite layer in the attacked embodiment is to be regarded as a stress-relief layer whose coefficient of thermal expansion, as described by feature 4.2.3.1.2.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 40 The upper titanium layer, which acts as a metal barrier layer, is located between the reflective metal layer of silver and the upper titanium layer. As the plaintiff has further explained, the respective layers in the contested embodiment have a thickness of 50 to 65 nanometres. Such thin layers would influence each other. For example, a nickel layer expands more than a titanium layer and therefore exerts tension on this titanium layer. Within the LED structure, this manifests itself in the fact that the nickel layer expands slightly less. The composite of both layers thus expands to an extent that lies between the isolated expansions of nickel and titanium. In the attacked embodiment, the lowest titanium layer is adjacent to the relatively strongly expanding silver, which means that the titanium layer adjacent to the silver layer behaves differently than the one forming the metal barrier layer. The layers are all connected to each other. Therefore, the silver layer expands more than the titanium and exerts a tension on the titanium in addition to the nickel layer. This effect increases the tension exerted by the nickel layer on the other side. With a layer thickness in the two-digit nanometre range, as found in the attacked embodiment, this effect is also relevant for the layers as a whole. The metal barrier layer, on the other hand, lies between nickel and silicon dioxide, which has a lower thermal expansion than silver. The stress effect on this titanium layer is therefore lower and the metal barrier layer consequently expands less than the bottom layer of the stress-relief layer. Both titanium layers would therefore differ in their thermal expansion and thus also in their assignment to the patent-compliant layers. c) The defendants have not specifically disputed this submission. It is therefore to be regarded as undisputed in accordance with R. 171.2 RoP. aa) Insofar as the defendants, referring to the prior art shown in Figure 1, always want to assign nickel to the metal barrier layer, they are thus contradicting both sub-claims 6 and 9 and paragraphs [0033] - [0035] of the specification of the patent in suit. There, nickel is expressly mentioned as a possible component of both the metal barrier layer and the stress-relief layer. Nor can the defendants successfully argue that titanium is a component of the metal barrier layer according to the invention, which is why it is excluded to regard a combination of "composite layers" consisting of individual layers of titanium, nickel, titanium and nickel as a stress-relieving layer. Paragraph [0033] expressly provides for such a design as a possibility of a layer sequence in accordance with the patent by stating, inter alia: "[...] and the barrier metal layer may include one of [...] Ti [...]. Further, the stress relieving layer may be formed [...] as a composite layer of a plurality of metals selected from [...] Ni [...] Ti [...]." And in German translation: "... and the barrier metal layer may include one of [...] Ti [...]. In addition, the stress relief layer [...] may be formed as a composite layer of a plurality of metals selected from [...] Ni, [...], Ti." The patent in suit itself therefore considers the combination of a metal barrier layer of titanium with a stress-relief layer of titanium and nickel designed as a composite layer to be in accordance with the invention.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 41 bb) The defendants have not specifically countered the plaintiff's assertion that the titanium-nickel- titanium-nickel layers to be found in the attacked embodiment form a composite layer with a coefficient of thermal expansion of 11.79 μm/(m-K), nor the explanation of the mutual influence of the layers on each other, which has already been reproduced in detail above. The merely generalised assertion that the contested embodiment has five individual layers and no composite layer is just as insufficient for a specific denial against the background of the technical relationships described in detail by the plaintiff as the reference to the fact that the layer sequence to be found in the contested embodiment corresponds to the design explained in Figure 1 of the patent in suit. (1) The fact that the individual layers cannot be distinguished from each other solely on the basis of the composition of matter, taking into account the assignment of certain substances to several layers in the patent specification in suit, was explained in detail by the local division in the context of the interpretation. The mere reference to the materials contained in the metal barrier layer shown in Figure 1 therefore does not help the defendants to succeed. (2) With regard to the denial of the existence of a composite layer, the defendants explained their understanding of such a layer in more detail at the hearing when asked that it must be layers that merge into each other with the participation of atoms. The defendants were not able to counter the objection raised by the plaintiff that an alloy, but not a composite layer, is defined in this way. The patent in suit also recognises such alloys (cf. para. [0033] f.]), but distinguishes them from composite layers. Both terms are therefore not to be equated. For the existence of a composite layer it is sufficient, but also necessary, that the superimposed layers influence each other. The plaintiff has demonstrated in detail that this is the case with the contested embodiment, taking into account the layer thicknesses to be found in the contested embodiment. The defendants have not dealt with this argument of the plaintiff, which is linked to the mutual influence of the individual layers, in detail and have therefore not specifically disputed the corresponding factual allegations. In particular, it is therefore undisputed (R. 171 RoP) that, based on the layer thicknesses found in the attacked embodiment, the titanium layer adjacent to the silver behaves differently from the titanium layer adjacent to the silicon dioxide layer. The fact that both layers are titanium layers therefore does not preclude classifying the former as part of the composite layer forming the stress-relief layer and the latter as a metal barrier layer within the meaning of the patent in suit. Insofar as the defendants continue to object to the calculation method used by the plaintiff to determine the coefficient of thermal expansion of the composite layer (see Annex LL 13), this argument does not justify a different assessment because, according to the invention, it is not the exact values of the coefficients of thermal expansion that are important, but only the ratio of the coefficients of thermal expansion of the individual layers to each other. According to the plaintiff's submission, this is within the patentable range, without the defendants having specifically disputed this. In particular, there is no submission by the defendants regarding the coefficient of thermal expansion of the titanium-nickel-titanium-nickel composite layer. Since feature 4.2.3.1.2. refers to the coefficient of thermal expansion of the stress-relief layer as a whole and therefore, in the case of the embodiment as a composite layer, not to its individual layers, the defendants are assisted in their argumentation on the coefficient of thermal expansion of the titanium-nickel-titanium-nickel composite layer.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 42 coefficients of titanium and nickel, and thus the respective individual layers, do not help at this point. cc) On this basis, the defendant's further reference to the fact that the nickel and titanium layers in the contested embodiment are provided solely as a metal barrier layer (duplicate, p. 9 centre) does not lead to any other result. If the titanium-nickel-titanium-nickel composite layer has a coefficient of thermal expansion that is between that of the reflective metal layer and that of the metal barrier layer, it also acts at least as a stress relief layer. In this case, it relieves the stress exerted on the reflective metal layer and thereby prevents the reflective metal layer from being detached from the second semiconductor layer (see para. [0026]). The patent in suit does not aim at a complete prevention of stresses. Rather, the invention merely aims to reduce the voltage caused by the reflective layer (para. [0017]). The fact that the titanium-nickel-titanium-nickel composite layer acting as a stress- relieving layer also possibly already blocks metal elements and ions from the reflective metal layer does not lead out of the scope of protection. On the one hand, the patent in suit does not exclude the possibility that the stress-relief layer also functions as a metal barrier layer. Only a design in which there is no further layer acting as a metal barrier layer in addition to the stress- relief layer is excluded. However, such a case does not exist in the embodiment in question, where the titanium-nickel-titanium-nickel composite layer is followed by a further titanium layer to be classified as a metal barrier layer. Secondly, the assessment of the question of infringement does not depend on whether the metal barrier layer actually has a barrier effect when the attacked embodiment is used. It is sufficient, but also necessary, that it has a corresponding suitability. This is indisputably the case with a titanium layer. 2. The fact that the lower insulating layer of the contested embodiment covers the entire surface of the structure and at least also has openings near the edge of the substrate can be seen from the figure shown below, taken from p. 58 of the application: The corresponding openings are marked in the shape of an ellipse in the figure shown above on the right. Insofar as there are further circular openings in the centre of the structure, this does not lead out of the scope of protection of the patent in suit. Patent claim 1 does not exclude such further openings on the basis of the understanding of the scope of protection already worked out in detail.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 43 3. Based on this, the contested embodiment also has a current expansion layer within the meaning of feature group 6: The current expansion layer of the contested embodiment is coloured blue in the figure shown above, taken from p. 67 of the application. The area shown on the left-hand side of the figure does not prevent the realisation of the technical teaching protected by patent claim 1. Complete coverage of the first semiconductor layer by the current expansion layer is not a condition for realisation of the claimed technical teaching. 4. Finally, the contested embodiment also has an upper insulating layer within the meaning of the patent in suit (feature group 7). Its presence is illustrated by the following schematic diagram, taken from p. 70 of the statement of claim: It can be seen that the upper insulating layer is formed on the current expansion layer. It can also be seen that both the current expansion layer and the reflective electrode are partially exposed through the upper insulating layer. III. By offering and marketing the attacked embodiment, the defendants have indisputably also committed acts of infringement within the meaning of Art. 25 (a) UPCA. The offering and placing on the market also creates a rebuttable presumption that the defendants also use the accused embodiment or import or possess it for the purposes of offering, placing on the market or using it (UPC CFI 7/2024 (local division2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 44 Düsseldorf), decision of 03.07.2024 - Kaldewei v. Bette). E. Legal consequences The previous statements justify the legal consequences explained in detail below: I. Taking into account the circumstances of the case, the plaintiff has a right to prohibit the continuation of the infringement pursuant to Art. 25 (a) UPCA in conjunction with Art. 63 (1) UPCA. Art. 63 (1) UPCA. II. The plaintiff also has a right to information pursuant to Art. 25 (a) UPCA in conjunction with Art. 67 UPCA. Art. 67 UPCA. There are no objections with regard to the type and manner of information requested. III. The decision regarding the recall from the distribution channels in respect of the directly infringing products is justified under Art. 64 (2) (b), 4 UPCA. The most recent version of the application is also not objectionable from the point of view of certainty. IV. The same applies with regard to the requested permanent removal from the distribution channels. In this respect, the requested Order is based on Art. 64 (2) (d), 64 (4) UPCA. According to the wording of the UPCA, permanent removal from the distribution channels is a separate measure from recall. It accompanies the recall, whereby removal can only be considered if the infringer has the actual and legal possibilities to do so. The formulation of concrete and sufficiently specific measures must be based on this (see UPC CFI 7/2024 (Düsseldorf local division), decision of 3 July 2024 - Kaldewei v. Bette). The wording of the claim takes sufficient account of this. V. The Order of destruction finds its basis in Art. 64 para. 2 (e), 64 para. 4 UPCA. The court can order ex officio that the measures in question be carried out at the infringer's expense, unless special reasons are put forward to the contrary. However, this is not the case here, so that a corresponding Order could be issued by operation of law. As the defendants did not invoke any disproportionality in this respect, there was no need to further specify the application. VI. The award of damages on the merits is possible on the basis of Art. 68 (1) UPCA. With due care, the defendants should have recognised that their actions infringed the patent in suit. VII. The threat of a penalty payment for failure to do so (Art. 63 para. 2 UPCA) does not raise any objections. This also applies from the point of view of proportionality. The threat of a penalty payment of up to EUR 250,000 per case of infringement gives the local division the necessary flexibility to take into account the circumstances of the individual case, including the behaviour of the infringer, in the event of an infringement and, based on this, to impose a penalty payment in accordance with Art. 82 para. 4 sentence 2 UPCA.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 45 i.V.m. R. 354.4 RoP to be able to impose an appropriate penalty payment. F. Basic cost decision Pursuant to Art. 69 para. 2 UPCA in conjunction with R. 118.5 RP. R. 118.5 RoP, a basic decision on costs had to be made. Since the defendants have lost the action in its entirety, it is justified to order them to pay the costs in their entirety and to pay half of the costs. The action for annulment brought solely by defendant 2) is unfounded. The defendant 2) must therefore bear its costs. Pursuant to Art. 69 para. 1 RoP, the costs are to be borne up to an upper limit set in accordance with the Rules of Procedure. With an amount in dispute of EUR 500,000, the table adopted by the administrative exclusion on 24 April 2023 on the basis of R. 152.2 RoP provides for an upper limit for the recoverable costs of up to EUR 56,000, which in the present case was to be set for both the action and the action for annulment. Insofar as the parties mutually recognised a recoverable amount of EUR 100,000 as recoverable at the hearing, it must be assumed, in the absence of any indications to the contrary, that this amount is divided equally between the action and the action for annulment. Accordingly, it is below the fixed upper limit. There are therefore no objections to the eligibility for reimbursement. G. Enforceability Insofar as the defendants object to the immediate enforceability of an injunction on the grounds that the LEDs at issue are standard components that represent a minimal fraction of mobile phones, which is why there is a blatant disproportion to the respective mobile phone, the Chamber is unable to accept this objection. The fact that the defendants would suffer disproportionate damage as a result of enforcement is at best a generalised assertion, without specifically naming such possible damage. The defendants have not been able to sufficiently demonstrate that the ban on the sale of a particular mobile phone significantly restricts the defendants as electronics retailers. Against this background, the plaintiff's interest in the effective enforcement of her rights takes precedence. H. No security deposit Pursuant to Art. 82 para. 2 UPCA, R. 118.8 sentence 2 RoP, the court may make any Order or measure subject to the provision of security, which it must set. However, the local division sees neither a reason nor a need for such an Order in the present case. I. As the wording of the aforementioned standard already makes clear, the local division has discretionary power when ordering the provision of security, whereby the plaintiff's interest in the effective enforcement of its property right must be weighed against the interest in the effective enforcement of possible claims for damages in the event that the judgement is subsequently set aside. A case-by-case assessment is therefore always required. Factors to be considered when deciding whether to order security include the financial situation of the plaintiff, which may give rise to a justified and real concern that a possible claim for damages may not be realised or only realised with difficulty if the decision at first instance is reversed or amended.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 46 can be enforced and/or executed with disproportionate effort. Whether and to what extent such factors exist is to be determined on the basis of the facts and arguments presented by the parties, no differently than in the case of an application for the provision of security pursuant to R. 158 RoP. If the local division makes an Order or measure dependent on the provision of security, this serves to protect the position and potential rights of the defendant. This protection must be weighed against the burden placed on the plaintiff by the Order to provide security. Against this background, it is up to the defendant to present facts and arguments as to why it appears appropriate in the specific case to make the Order or measure dependent on a security deposit to be determined by the court in accordance with R. 118.8 RoP. If the defendant has complied with this, it is up to the plaintiff to substantiate these facts and reasons, especially as he usually has knowledge and evidence of his financial situation. It is also incumbent on the plaintiff to explain, if necessary, why, despite the reasons put forward by the defendant, his interest in enforcing his protective right without the provision of security prevails (see on the application for the provision of security pursuant to R. 158 RoP: UPC COA 328/2024, Order of 26 August 2024 - Ballinno v. Kinexon Sports; UPC CFI 373/2024 (LK Düsseldorf), Order of 5 August 2024 - Sodastream v. Aarke; UPC CFI 514/2023 (LK Munich), Order of 23 April 2024 - Volkswagen v. NST with further references). II. On this basis, the defendant's submission offers no reason to make enforcement dependent on the provision of security in the present case. The defendants are dealers who are prohibited from offering and selling a specific mobile phone. It cannot be inferred from their submission that this alone threatens them with damages that cannot be effectively enforced directly against the plaintiff. This applies all the more to the requested security in the amount of EUR 5,000,000, which corresponds to 10 times the amount in dispute. Ordering such security would have required a concrete demonstration of corresponding potential damages, which is lacking here.2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 47 DECISION: A. The defendants are prohibited from doing so, Light emitting diodes on the territory of the Republic of Austria, the Kingdom of Belgium, the Federal Republic of Germany, the French Republic, the Italian Republic, the Grand Duchy of Luxembourg, the Kingdom of the Netherlands and the Kingdom of Sweden to offer, place on the market, use and/or import and/or possess for the aforementioned purposes, if these are present: a light-emitting structure formed on a substrate (100) and comprising a semiconductor layer (110) of a first conductivity type, an active layer (120) and a semiconductor layer (130) of a second conductivity type; mesa-etched regions (150) formed from the surface of the semiconductor layer (130) of the second conductivity type to the semiconductor layer (110) of the first conductivity type; a reflective electrode (140) formed on the semiconductor layer (130) of the second conductivity type and comprising a reflective metal layer (142), a metal barrier layer (144) and a relaxation layer (143) formed between the reflective metal layer (142) and the metal barrier layer (144), wherein the relaxation layer (143) has a coefficient of thermal expansion between the coefficient of thermal expansion of the reflective metal layer (142) and the coefficient of thermal expansion of the metal barrier layer (144); a bottom insulating layer (200) covering an overall surface of the structure formed by the first conductivity type semiconductor layer (110), the active layer (120), the second conductivity type semiconductor layer (130), the metal etched regions (150) and the reflective electrode (140), wherein the bottom insulating layer (200) enables that an upper surface of the reflective electrode (140) is partially exposed therethrough, and further comprising openings disposed near an edge of the substrate which allow the semiconductor layer (110) of the first conductivity type to be exposed therethrough in the mesa- etched regions (150); a current expansion layer (210) formed on the lower insulating layer (200) covering the semiconductor layer (110) of the first conductivity type and electrically connected to the semiconductor layer (110) of the first conductivity type;2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 48 an upper insulating layer (220) formed on the current-expanding layer (210), wherein both the current-expanding layer (210) and the reflective electrode (140) are partially exposed through the upper insulating layer (220); a first pad (230) electrically connected to the current-expanding layer (210) exposed through the top insulating layer (220); and a second pad (240) electrically connected to the reflective electrode (140) exposed through the top insulating layer (220). B. The defendants are sentenced, I. to pay the court a penalty payment of up to EUR 250,000.00 for each case of non-compliance with the Order under Section A; II. within a period of 30 days after service of the notification within the meaning of R. 118.8 sentence 1 RoP and, if applicable, the certified translation, the products delivered since 4 January 2023 in accordance with point A. at the defendant's expense 1. from the distribution channels by informing the third parties from whom the infringing products are to be recalled that this court has found that the products infringe European Patent EP 3 926 698 B1, whereby the defendants must give the third parties a binding undertaking to reimburse the costs incurred, to bear the packaging and transport costs incurred, to reimburse the customs and storage costs associated with the return of the products and to take back the products, and 2. permanently remove the products from the distribution channels by ordering the defendants, with reference to the fact that this court has found that the products infringe the European patent EP 3 926 698 B1, to order third parties who are commercial purchasers but not end customers, with regard to the products referred to in point A., to cancel all orders relating to the products referred to in point A. and to notify the court and the plaintiff within the aforementioned period of 30 days after service of the notice within the meaning of R. 118.8 sentence 1 VerfO and R. 118.8 sentence 1 VerfO. and to provide the Court and the applicant with written proof of the action taken within the aforementioned period of 30 days after service of the notification within the meaning of R. 118.8 sentence 1 RoP and, if applicable, the certified translation. III. to provide the applicant with information on 1. Origin and distribution channels of products delivered, received or ordered since 4 January 2023 in accordance with point A.,2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 49 2. the quantities delivered, received or ordered since 4 January 2023 and the prices paid for the products referred to in point A., and 3. the identity of all third parties involved in the manufacture or distribution of products referred to in point A. since 4 January 2023; IV. within a period of 30 days after delivery of the notification within the meaning of R. 118.8 p. 1 RoP and, if applicable, the certified translation, to destroy the products in its direct or indirect possession or in its ownership in accordance with letter A. at the defendant's expense. C. The defendants are ordered to compensate the plaintiff for all damage that it has suffered and will suffer as a result of the acts referred to in point A. during the term o f EP 3 926 698 B1. D. The action for annulment is dismissed. E. The defendants shall each bear half of the costs of the action. The defendant 2) shall bear the costs of the action for annulment. F. The amount in dispute for the action and the action for annulment is set at EUR 500,000.00 each. G. The upper limit for reimbursable representation costs is set at EUR 56,000 for the action and EUR 56,000 for the action for annulment. H. The Orders under letters A. and B. I. to IV. are only enforceable after the plaintiff has notified the court which part of the Orders it intends to enforce and has submitted a certified translation of the Orders into the official language of the Contracting Member State in which enforcement is to take place and after the defendants have been served with the notification and the (respective) certified translation. ORDER DETAILS: Main file reference ACT 579244/2023 and CC 3580/2024 UPC number: UPC CFI 363/2023 Type of proceedings: Action for infringement and action for annulment2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 50 Düsseldorf on 10 October 2024 NAMES AND SIGNATURES Presiding judge Thomas Ronny Digital signed from Ronny Thomas Thomas Date: 2024.10.09 17:27:42 +02'00' Legally qualified judge Dr Thom Anna Digitally signed by Bérénice Anna Bérénice Dr. THOM Dr. THOM Date: 2024.10.04 15:39:11 +02'00' Legally qualified judge Mlakar MOJCA Digitalno podpisal MOJCA MLAKAR MLAKARDate: 2024.10.04 13:42:23 +02'00' Technically qualified judge Sani Alessan signed by Digital Alessandra Sani dra Sani Date: 2024.10.03 11:49:49 +02'00' For the Deputy Chancellor Boudra-Seddiki Rachida Digitally signed by Rachida Boudra- Boudra- Seddiki Date: 2024.10.04 Seddiki 14:48:50 +02'00' INFORMATION ON THE APPOINTMENT: An appeal against this decision may be lodged with the Court of Appeal by any party whose applications have been wholly or partially unsuccessful within two months of service of the decision (Art. 73 para. 1 UPCA, R. 220.1 (a), 224.1 (a) RoP).2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com 51 Information on enforcement (Art. 82 UPCA, Art. 37 para. 2 EPGS, R. 118.8, 158.2, 354, 355.4 RoP): A certified copy of the enforceable decision is issued by the Deputy Registrar on application by the enforcing party, R. 69 RegR. This decision was announced in open court on 10 October 2024. Presiding judge Thomas Ronny Digitally signed by Ronny Thomas Date: 2024.10.10 09:45:30 +02'00'Thomas2024-10-10 LD Dusseldorf UPC CFI 363-2023 ACT 579244-2023 ORD 598458-2023 enDeepL machine translation provided by www.veron.com

Key Holdings

• If a plaintiff sues several defendants, the actions must be dealt with independently for each defendant, without the actions of one defendant causing advantages or disadvantages for another.
• The requirement to file a counterclaim for invalidity (R. 25.1 RoP) applies separately to each defendant. If individual defendants do not file a nullity counterclaim, the validity argument is formally excluded for them, though this has no de facto effect if proceedings are not separated.
• The decision to make an order or decision dependent on security (R. 118.8 RoP) requires a case-by-case examination, weighing the plaintiff's interest in effective enforcement against potential damages claims if the judgment is set aside, considering the plaintiff's financial situation.

Tags

• Counterclaim
• Direct Infringement
• Security for Costs

Related Rules

• Art. 3 – Scope of application
• Art. 8 – Composition of the panels of the Court of First Instance
• Art. 2 – Definitions
• Art. 1 – Unified Patent Court
• Art. 1 – Unified Patent Court
• Art. 5 – Liability
• Art. 5 – Liability
• Art. 6 – The Court
• Art. 2 – Definitions

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