No. 80 - June 3, 2025

Central Division (Paris) clarifies selective revocation of EP-bundle patents

Timan Pfrang
Tilman Pfrang, LL.M.
Patent Attorney, Dipl.-Phys.

Central Division (Paris) clarifies selective revocation of EP-bundle patents – and strikes down EP 3 822 805 B1 for DE only

UPC_CFI_198/2024 – Decision of 28 May 2025

The Paris seat of the UPC’s Central Division has handed down a revocation judgment in the streaming-media case Aylo Premium v DISH. Crucially, the panel accepted the claimant’s request to limit the revocation to the German national part of EP 3 822 805 B1 – confirming that Art. 34 UPCA sets merely the outer territorial reach of UPC decisions, while Art. 76(1) UPCA (ne ultra petita) lets parties tailor the relief they seek.

Procedural aspects

The Court saw “no impediment” to revoking only the DE segment of the bundle patent. Art. 34 UPCA governs effect, not jurisdiction, and nothing in the Agreement forbids a claimant from carving out territories.

Although an EPO opposition hearing was imminent, the judges refused to pause the UPC case. Given the advanced stage (oral hearing already held) and the Court’s one-year timetable mandate, expediency outweighed any efficiency gains from awaiting the OD’s decision.

DISH’s objection to late-filed demonstrative slides failed – the contested points were already on record, so no prejudice arose.

Added-matter attack succeeds

DISH’s main defence was an unconditional amendment (and 16 auxiliary requests). Central to every claim set was feature 1.7: requesting “the streamlet of the highest quality copy … determined sustainable at that time.”

The panel held that the parent PCT application only disclosed a step-wise upshift to the next higher quality, not a jump to the highest sustainable level. The “highest” wording therefore constituted an unallowable generalisation (Art. 123(2) EPC → Art. 138(1)(c) EPC).

Key takeaways

  • A revocation action can be surgically limited to selected UPC member states. Art. 34 UPCA is no bar.
  • Even a scheduled EPO opposition hearing is insufficient where the UPC case is effectively ready for decision.
  • Under Art. 123 (2) EPC, generalizations of the original disclosure are “problematic”.