No. 146 - 1 September 2026
Maxell v Samsung – LD The Hague, 10 August 2026, UPC_CFI_251/2025 and UPC_CFI_769/2025
When a patent claim contains several distinguishing features, inventive step cannot necessarily be established simply by considering their number. In Maxell v Samsung, the Local Division The Hague held that a plurality of modifications which the skilled person would each make as a matter of routine remains obvious where the features do not functionally interact to produce a synergistic effect.
The decision is particularly interesting because it applies the UPC Court of Appeal’s developing approach to inventive step to what the Court describes as a “mere aggregation” of features.
Maxell asserted EP 2 061 230 against several Samsung entities in relation to Galaxy smartphones and tablets. The patent concerns the transfer or “casting” of content from a portable terminal, such as a mobile phone, to another device, such as a television.
Samsung counterclaimed for revocation. The Local Division concluded that the independent claims as granted lacked novelty over D3. It therefore turned to Maxell’s auxiliary requests, which added various features concerning, inter alia, a handback functionality, authentication information, remote-control functionality and a limitation to internet content identified by a URL.
The Court ultimately revoked the patent in its entirety and dismissed the infringement action.
The Local Division first referred to the inventive-step framework developed by the Court of Appeal. The claimed invention must be considered as a whole, taking into account the inventive concept and the technical effects achieved by the claimed combination. Starting from a realistic starting point, the relevant question is whether the skilled person wishing to solve the objective problem would – rather than merely could – have arrived at the claimed solution.
At the same time, the Court stressed that this holistic assessment does not mean that the mere accumulation of several individually obvious features can establish inventive step.
The auxiliary request under consideration contained several groups of distinguishing features. However, according to the Court, these features provided unrelated technical functionalities. Maxell argued that they collectively contributed to a smoother and more user-friendly transfer of content between devices. The Court considered this insufficient: the alleged advantages were merely the standard functionalities associated with the respective individual features. No additional technical benefit resulting from their combination had been identified.
The Local Division therefore held that, where the individual modifications are routine and there are no functional interdependencies producing a synergistic effect, their combination amounts merely to an obvious aggregation.
This provides a useful qualification of the principle that the claim must be assessed as a whole. A patentee cannot establish inventive step simply by pointing to the combined presence of several distinguishing features. Where those features solve independent problems and each represents a routine next step for the skilled person, something more is required to make their combination inventive.
The decision also illustrates the importance of the “routine next step” within the UPC’s inventive-step analysis.
The Court recalled that the skilled person has no inventive skills or imagination and generally requires a pointer or motivation towards the claimed solution. However, such a pointer is not necessary where the relevant modification is one that the skilled person would make as a matter of routine.
This played an important role for several of the additional features. For example, the Court regarded the use of UTF-8 as an obvious routine implementation at the priority date. The same applied to the use of a touch panel as a user interface. Neither modification could contribute to inventive step merely because it was added to other distinguishing features where no synergistic interaction resulted from the combination.
The Court also adopted a pragmatic approach to Maxell’s numerous auxiliary requests.
The requests progressively narrowed the scope of protection. The Court therefore considered the requests containing the greatest number of limiting features first. Once it had concluded that these narrower requests lacked inventive step, the broader preceding requests necessarily failed as well because they contained fewer distinguishing features.
This approach may considerably simplify the assessment of a large set of auxiliary requests where they form a genuinely progressive hierarchy. It does, however, depend on the relationship between the requests: the reasoning works where the narrower request contains the relevant distinguishing features of the broader requests plus further limitations.
