EP 3 822 805 B1 relates to an apparatus system and method for adaptive-rat shifting of streaming content. It results from a divisional application of EP 05744015 later granted as EP 1 743 249 B1.
The decision to grant was published on 27.12.2023 in Bulletin 2023/52
The patent was object of actions before the EPO (opposition), the UPC CD Paris (Revocation) and the German Regional Court Munich I (infringement). An oral hearing for the German infringement action took place on 06.12.2024. A decision has not yet been issued.
From all the EPC member states designated at grant, the patent lapsed for Ireland.
Brief history of the case before the EPO
The OD revoked the patent by decision of 27.06.2025 for non-compliance of all requests, over 100, under Art 100(c), especially Art 76(1) EPC.
One specific feature was not directly unambiguously derivable from the parent application.
The OD held that this feature covers the case where several quality streamlets are determined to be sustainable and the highest quality one is selected, leading to a direct jump from a streamlet of a current quality over several higher quality streamlets determined to be sustainable to a highest quality streamlet determined to be sustainable.
Brief history of the case before the UPC
An opt-out was filed for the application underlying the Patent on 21.05.2023. A withdrawal of the opt-out was filed on 22.11.2023.
The decision to grant was published on 27.12.2023 in Bulletin 2023/52.
By decision UPC CFI 198 /2024-Revocation action 23310/2024 of 28.05.2025, the CD-Paris revoked the patent for the territory of the UPC member state Germany.
The same specific feature was at stake in both procedures
Said feature covers embodiments in which a direct shift to the highest quality is made, even when this is not the next higher quality in relation to the current one and would require the determination of the sustainability of more than one quality stream.
The UPC decision is however interesting in that the CD Paris found the request for revocation of only the German part of the patent, and not the territory of all UPC member states admissible and was allowed.
Revocation in only one UPC member state
The CD Paris held that as a general rule, according to Art. 34 UPCA, decisions of the Court shall cover, the territory of those Contracting Member States for which the European patent has effect. This provision does not restrain the possibility to limit the revocation of European patents to certain UPC Member States.
According to Art. 76 (1) UPCA, the Court shall decide in accordance with the requests submitted by the parties and shall not award more than is requested.
This limitation by the request on the revocation of a European patent is also reflected in R. 44(d) RoP.
The provision in Art. 5 (2) Regulation (EU) No. 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection also points to the possibility of declaring a European patent invalid in respect of certain national parts. While this possibility is expressly excluded for Unitary Patents in Art. 5 (2) Regulation (EU) No. 1257/2012, there is no comparable provision prohibiting this for the European patent.
No stay of the procedure in view of parallel opposition at the EPO
The UPC CD Paris rejected the proprietor’s request to stay the proceedings until the OD has decided.
Once the provisional opinion of the OD was available, the alleged infringer opposed the stay, but the proprietor did “not object to the present proceeding being stayed and/or the hearing in the present proceeding being postponed”.
The UPC-CD Paris held that the alleged infringer’s interest in obtaining a timely judgment and the interest in conducting proceedings which can be terminated in approximately one year outbalanced the proprietor’s interest.
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Same conclusions od added matter before the EPO and before the UPC
The same specific feature was considered in both fora as not in compliance of Art 76(1) EPC and for the same reasons.
Although both decisions are not yet final, the likelihood that the patent will be maintained in any form appears relatively remote in view of the problem under Art 76(1) EPC.
Revocation for only one UPC member state
As the opt-out was withdrawn on 22.11.2023, and the decision to grant issued on 27.12.2023, it is difficult to follow the CD Paris when it declared that Art. 5 (2) Regulation (EU) No. 1257/2012 was not applicable.
It might not change the non-compliance of Art 76(1) EPC, but might have an influence on the territorial scope of the decision of the UPC, as EP 3 822 805 B1 is without any doubt a European patent with unitary effect, as the opt-out has been withdrawn.
It can thus be concluded that the request for revocation in only one UPC member state should have been deemed not admissible.
When in R. 44(d) RoP “an indication of the extent to which revocation of the patent is requested” is mentioned, this does not necessarily means that it is the geographic extent of revocation which is to be considered, but actually the claims which should be revoked.
In a patent claiming at the same time an entity and a claim relating to the specific use of said entity, it can well be the case that a third party is hindered by the claim to the entity, but not by the claim to the use.
I might have missed an important point, but I am not sure.
No stay of the proceedings in view of the parallel opposition
It is not the first time that the CD Paris refuses a stay in case of a parallel opposition procedure at the EPO.
In order UPC_CoA_22/2024, commented in the present blog, the stay of proceedings refused by the CD Paris was confirmed by the CoA UPC.
It is interesting to note that the UPC CD Paris mentioned a different decision of the UPC CoA when refusing the stay, i.e. UPC_CoA_22/2024, APL_3507/2024, ORD_25123/2024– Bitzer v Carrier. Has the CD Paris forgotten that it took itself such a decision also confirmed by the CoA UPC?
In the present case, there are little chances that the patent will survive the opposition, but it could well be that the UPC CoA and a BA EPO come to diverging decisions in other cases. If the EPO maintains the patent and the UPC revokes it, or vice versa, then troubles are programmed.
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