Nera Innovations Ltd v Xiaomi Communications Co., Ltd.; Xiaomi Inc.; Xiaomi Technology Netherlands B. V. and Xiaomi Technology Germany GmBH
UPC_CFI_173/2024 and 424/2024 (Hamburg Local Division)
Decision issued 10 July 2025 [1]
Nera Innovations Ltd. (Nera), a patent holding company owned by Atlantic IP (a non-practising entity), has lost an infringement action against Xiaomi Communications Co., Ltd.; Xiaomi Inc.; Xiaomi Technology Netherlands B. V. and Xiaomi Technology Germany GmBH (Xiaomi).
Nera brought an infringement action against Xiaomi, accusing Xiaomi’s flagship smartphones of infringing Nera’s patent EP 2 642 632 in both the Netherlands and Germany, particularly to wireless charging features of the smartphones. Xiaomi counterclaimed for invalidity of the patent, including for claims which they were not alleged to infringe.
EP 2 642 632 is directed to wireless power receiver, which can be used in a smartphone for wireless charging, for example when the smartphone is placed onto an inductive charger. Claim 1 is directed to a wireless power receiver and a connecting unit, where the wireless power receiver comprises a substrate with a receiving space for the connecting unit, and a coil unit which can be connected to the connecting unit.
Xiaomi also disputed Nera’s standing to sue. Nera had claimed that, although the patent originally belonged to LG Innotek Co., Ltd., the right to sue for past infringements had been transferred to its legal predecessor, Scramoge Technology Ltd., via an agreement. On this point, the Court referred to Rule 8.5 RoP, and to the decision of Avago v Tesla [2], which states that there is a rebuttable presumption that the party bringing the action is entitled to do so where that party has been identified in the EPO register or relevant national register.
In this case, Nera is the registered proprietor of the patent, meaning the burden of proof was on Xiaomi to prove Nera were not entitled to sue. In their defence, Xiaomi asserted that the patent had not been assigned to Nera because the EPO register did not contain an assignment to that effect. In its reply, Nera produced a second agreement showing transfer of the patent from its legal predecessor, Scramoge to it. Xiaomi did not dispute the second agreement. The Court also noted that Nera was registered on the German and Dutch national patent registers, which is where the alleged infringement was taking place.
Xiaomi’s counterclaim incited Nera to file 66 auxiliary requests in return, which the Court considered high for the ‘manageable number of features of the patent’, and considering only six prior art documents were cited by Xiaomi. However, requests numbered 14-33/33A were all combinations of requests numbered 1-13/13A, and furthermore all requests included the features of auxiliary request 1. This led to the Court admitting all of the auxiliary requests, considering there to be few substantive lines of demarcation, and pointed to Nera’s tabular format to the auxiliary requests for making the high number of auxiliary requests easy to understand.
Whilst Xiaomi were not alleged to infringe claim 18, directed to a terminal including the wireless power system of claim 1, this claim was included in Xiaomi’s counterclaim for invalidity. The Court found this to be admissible, as Article 32(1) and 65(1) UPCA [3] allow for a patent to be challenged in its entirely, even if the individual claims were not part of the infringement action.
Xiaomi challenged the validity of claim 1 of the patent for allegedly adding matter over the original filing. The original claim wording required a magnetic substrate, which was removed during examination. Thus, the granted claim was broader than the original claim. In addition, there was no mention of any substrate other than the magnetic substrate in the description.
The Court stated that, because the aim of Article 123 EPC is to preserve the technical teachings of the original application, not every deviation from the original wording necessarily violates Art. 123(2) EPC. Notably, rather than point to UPC case law for its reasoning, the Court instead cited EPO case law and related commentary. When applying this to the present case, the Court found the omission of the word ‘magnetic’ led to a set of features that was more general than originally disclosed, thus constituting an inadmissible intermediate generalisation (see pages 50 and 51 of the decision).
Furthermore, the granted claim requires ‘a receiving space for the connecting unit formed in the substrate’. However, the original claim 5 describes the receiving chamber as having a predetermined shape that corresponds to the shape of the connecting unit. Thus, the Court held that the amended feature in granted claim 1 was broader than that originally filed.
When construing this feature, the Court relied heavily on the description of the patent in terms of purpose of the feature and the teaching the description imparts to the skilled person. To do this, the Court first considered how the patent described how the connecting unit fit within the receiving space and interacted with the substrate. In particular, the Court cited paragraph 87 of the patent, ‘the thickness of the device is limited by the thickness of the connecting unit’, as meaning that the receiving space must penetrate the full thickness of the substrate and cannot be merely a recess. Nera argued that this interpretation was too narrow and that it was irrelevant whether the receiving space was covered on one side or not. But, the Court disagreed, finding that the core of the invention was in the formation of the receiving space in the substrate to be able to limit to the thickness of the connection unit. This also corresponded to the advantage in paragraph 87 of the patent of saving material.
The Court also construed the term ‘predetermined shape’ as meaning ‘substantially matching the outer contour of the connection unit’, and disagreed with Nera that the term ‘receiving space’ alone implied this. Thus, the Court found generalisation of the shape in the substrate for the connecting unit to be an inadmissible intermediate generalisation.
In light of the above, the granted patent was found to be invalid for adding matter. One of Nera’s auxiliary requests was able to resolve this by limiting the claim to recite the omitted features.
The Court briefly considered novelty and inventive step of the amended patent over the documents cited by Xiaomi. In particular, two of the documents were in the field of radio transmission, rather than wireless charging. This led the Court to note that, if a citation has a comparable function but a different field of application compared to the claim, it is not a document a person skilled in the art would have consulted in searching for a solution to the problem addressed by the patent. The amended patent was therefore found to be novel and inventive over the cited documents.
By limiting the claims to the receiving space having a predetermined shape corresponding to the shape of the connecting unit, as construed by the Court to mean that the receiving space is a ‘complete’ recess in the substrate, Xiaomi was held not to infringe the amended patent.
Nera was ordered to bear the costs of the infringement action and 20% of the costs of the invalidity counterclaim, as the patent was maintained in amended form.
This decision is in line with previous decisions at the UPC in following the well-established approach of turning to the description for claim construction [4], as well as indicating a more purposive approach to construction; an approach common to English courts. This is contrary to the EPO’s approach in recent decisions, even in view of G1/24. Despite the EPO’s Enlarged Board expressing an ‘unattractive’ position should the EPO’s practice differ from the UPC, the UPC and EPO seem only to be entrenching their approaches. As long as this is the case, inconsistent decisions between the bodies will only persist.
References:
[1] https://www.unifiedpatentcourt.org/en/node/136472
[2] https://www.unifiedpatentcourt.org/en/node/1046
[3] https://www.unifiedpatentcourt.org/en/node/116262
[4] https://www.unifiedpatentcourt.org/en/node/576