Aggregation of Features and Inventive Step: The Hague Local Division on EP 2 061 230
The Hague Local Division revokes a software patent on cast technology, demonstrating how a lack of synergistic effect between multiple distinguishing features can lead to a finding of obviousness under the UPC framework.
In UPC_CFI_769/2025, The Hague Local Division applied the Unified Patent Court's framework for inventive step to a complex software patent concerning cast technology, demonstrating how a lack of synergistic effect between multiple distinguishing features can lead to a finding of obviousness. The panel revoked Maxell's EP 2 061 230 in its entirety following a counterclaim for revocation by Samsung, providing a rigorous application of the principle that a mere aggregation of features cannot support an inventive step.
How did the panel construe "history information" in the context of cast technology?
The patent at issue relates to the technical problem of how to pass viewing content from a portable terminal to an information processing apparatus more smoothly. A central dispute concerned the interpretation of "history information" indicating a history of user operations. Maxell argued this required a plurality of operations or a complete log of user commands. The panel rejected this narrow construction. Applying the principles of claim interpretation, the Court found that the skilled person would see no technical reason why the selection of user operations necessarily needs to be a complete log or a plurality of operations. A single operation, such as the playback position at the moment a user stops the playback, represents history information (Reasons 42 and 44). Furthermore, the panel clarified that a display state is not limited to visual display but applies more generally to all human senses, including audio displays. Under this broad construction, the granted claims were found to lack novelty over prior art D3, which disclosed a throw operation transmitting playback position information.
Why did the combination of handback and authentication features fail to establish an inventive step?
To defend the patent, Maxell relied on ten auxiliary requests. The panel focused its analysis on Auxiliary Request 7a, noting that if the request limiting the scope furthest is not considered inventive, the previous auxiliary requests are also obvious as these contain fewer distinguishing features (Reasons 68). Auxiliary Request 7a added several feature groups, including a handback functionality, authentication information, and a remote control functionality. The panel evaluated whether these additions provided an inventive step over prior art D1 in combination with D3. Crucially, the Court found that these distinguishing feature groups provided unrelated technical functionalities and did not give rise to a synergistic effect that would amount to more than the sum of their individual technical contributions (Reasons 81). The panel held that in the absence of any functional interdependencies that establish a synergistic effect, a plurality of routine modifications that the skilled person would each take as a next step and as a matter of routine amount to a mere aggregation of features that is obvious (Reasons 83).
How did a pointer in the primary prior art lead the skilled person to the handback functionality?
While the handback functionality represented a substantive technical distinction over D1, the panel concluded it was obvious in view of D3. D1 primarily described a handover from a mobile phone to a digital television. However, the panel noted that D1 contained a pointer indicating that a user might want to continue watching a broadcast on a mobile phone after leaving the house. The skilled person would understand this as a pointer to a handback operation. Guided by this pointer, the skilled person would consider D3, which disclosed a catch operation in a similar cast architecture. The panel reasoned that the skilled person would take D3 into account when trying to improve on D1, and as a next step would enhance the mobile phone of D1 with the improved capabilities of the operation control apparatus of D3 (Reasons 99). The remaining features, such as the remote control functionality and the limitation to internet site content, were deemed either implicitly disclosed in D1 or routine modifications.
What should practitioners evaluate when relying on multiple distinguishing features after this decision?
When defending a patent through auxiliary requests that add multiple distinct features, proprietors should articulate a clear synergistic effect. It is insufficient to argue that the distinguishing features together all contribute to a smoother and more user-friendly provision of content relay. Practitioners should demonstrate a functional interdependency between the added features that produces a technical effect going beyond a mere juxtaposition. If the features solve unrelated partial problems, the Unified Patent Court typically assesses them individually. Furthermore, this decision underscores the risk of relying on a narrow claim construction during a revocation action if the patent specification does not explicitly mandate such a limitation. Applicants drafting software patents should ensure that any intended restrictions, such as requiring a plurality of operations for a history log, are unambiguously defined in the claims rather than left to be inferred from specific embodiments.
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