Central Division Paris Seat

Order
of the Court of First Instance of the Unified Patent Court
Central Division (Paris Seat) delivered on 21/05/2025
lodged in the revocation action
No. ACT_27358/2024 / UPC-CFI 230/2024

Claimant:
KINEXON SPORTS & MEDIA GMBH
Schellingstraße 35, 80799 Munich, Germany
Represented by: Prof. Dr. Tilman Müller-Stoy, Prinzregentenplatz 7, 81675 Munich, Germany

Defendant:
BALLINNO B.V.
Registered at (1713 BA) Obdam, De IJvelandssloot 41
Represented by: R. Broekstra Msc LLM, M.G.R. van Gardingen, Georg Rauh, M.W.L.Groeneveld,
Grote Bickersstraat 74-78, 1013 KS Amsterdam, Netherlands

PANEL
Presiding judge François Thomas
Legally qualified judge, judge rapporteur Maximilian Haedicke
Technically qualified judge Gérard Myon

DECIDING JUDGE:
This decision has been delivered by the presiding judge François Thomas, the legally qualified judge and judge-rapporteur Maximilian Haedicke and the technically qualified judge Gérard Myon.

LANGUAGE OF PROCEEDINGS: English

SUMMARY OF FACTS
1. Reference is made to the Decision no. ORD_69092/2024 in ACT_27358/2024 UPC CFI 230 /2024 of 30 April 2025.
2. The Decision states in its headline (p. 1):
“concerning EP 1 994 067 B1”
3. The Decision states on p.2 (patent at issue):
“European patent EP 1 994 067 B1, hereinafter referred to as “EP 067” or as “the Patent”.”
4.
The Decision states on p. 46:
“1. revokes European patent n° EP 1 994 067 B1 with effect for Germany and the Netherlands.”

GROUNDS FOR THE ORDER
There is a clerical error in the denomination of the patent in the Decision. The correct number of the patent is EP 1 944 067 B1 instead of EP 1 994 067 B1. The Court rectifies this error on its own motion. According to R. 353 RoP the parties were given the opportunity to be heard.
ORDER
Decision no. ORD_69092/2024 in ACTION NUMBER: ACT_27358/2024 is rectified as follows:
• The Decision states in its headline (p. 1): “concerning EP 1 994 067 B1”
Rectification: EP 1 944 067 B1 instead of EP 1 994 067 B1
• The Decision states on p.2 (patent at issue): “European patent EP 1 994 067 B1, hereinafter referred to as “EP 067” or as “the Patent”.”
Rectification: EP 1 944 067 B1 instead of EP 1 994 067 B1
• The Decision states on p. 46:
“1. revokes European patent n° EP 1 994 067 B1 with effect for Germany and the Netherlands.”
Rectification: EP 1 944 067 B1 instead of EP 1 994 067 B1
Issued on 21 May 2025

Order details
Order no. ORD_23997/2025 in ACTION NUMBER: ACT_27358/2024
UPC number: UPC_CFI_230/2024
Action type: Revocation Action


Action n°: UPC CFI 230 /2024
Revocation action 27358/2024

DECISION
of the Court of First Instance of the Unified Patent Court
Central division Paris Seat (Section 1)
delivered on 30 April 2025
concerning EP 1 994 067 B1

1. A broad, general term used in the main claim is not to be limited to an
understanding derived from the more specific or narrower features disclosed in a
dependant claim or in the description. Instead, the dependant claim and/or the
description merely indicate possible embodiments of the patented invention which
may provide for additional advantages.
2. Embodiments generally serve to describe options for realizing the invention and
therefore do not permit a restrictive interpretation of a more general patent claim.
Embodiments mentioned in the patent description only permit the conclusion that
they fall under the claim; they do not restrict the scope of the patent claim.

KEYWORDS: Revocation, claim interpretation, non-limiting embodiments, inventive
step, starting point, obviousness, extension of scope

CLAIMANT:
KINEXON SPORTS & MEDIA GMBH
Schellingstraße 35, 80799 Munich, Germany
Represented by: Prof. Dr. Tilman Müller-Stoy,
Dr. Stefan Liek
Dr. Christian Haupt
Dr. Marius Fischer
BARDEHLE PAGENBERG
Prinzregentenplatz 7,
81675 Munich, Germany

DEFENDANT:
BALLINNO B.V.
Registered at (1713 BA) Obdam, De IJvelandssloot 41, The Netherlands
Represented by: R. Broekstra Msc LLM,
M.W.L. Groeneveld,
Eveline Lots
VOSSIUS & BRINKHOF
Grote Bickersstraat 74-78,
1013 KS Amsterdam,
The Netherlands
PANEL
Panel 1 of the Central Division (Paris Seat)
Presiding judge François Thomas
Legally qualified judge, judge rapporteur Maximilian Haedicke
Technically qualified judge Gérard Myon

LANGUAGE OF PROCEEDINGS
English

PATENT AT ISSUE
European patent EP 1 994 067 B1, hereinafter referred to as “EP 067” or as “the
Patent”.

DECIDING JUDGES
This decision has been delivered by the presiding judge François Thomas, the legally
qualified judge and judge-rapporteur Maximilian Haedicke and the technically
qualified judge Gérard Myon.

DATE OF THE ORAL HEARING
21 March 2025
1 The dispute
1.1 On 18 April 2024, Defendant in this revocation action filed for an application
for provisional measures at the UPC Local Division Hamburg, against
Claimant in this revocation action for using a method and system at the
European Football Championships (UEFA EURO 2024) in Germany, which
Defendant believes falls under the scope of protection of the Patent EP 067.
By decision of 3 June 2024 (UPC_CFI_151/2024), the Hamburg Local Division
denied Ballinno’s application. The Hamburg Local Division set the value of
the dispute to EUR 500,000. Ballinno filed an appeal against the order of the
Hamburg Local Division. The appeal is pending under number 36389/2024.
1.2 On 17 May 2024, Claimant filed this revocation action1 dated 5 May 2024,
against Defendant at the Paris Central Division of the Unified Patent Court
requesting the Court to revoke European Patent EP 067.
1.3 A corrected Statement of Defence to Revocation dated 26 July 2024 was
filed on 5 August 2024 by Defendant. On 26 July 2024, an Application to
amend the Patent was filed by Defendant (No. App_43837/2024). Claimant
filed a Reply to an Application to amend the Patent on 27 September 2024.
Also on 27 September 2024, Claimant submitted a Reply to the Defence. On
28 October 2024; Defendant filed a Rejoinder to the Reply to the Defense
to Revocation and Reply to the Defense to the Application to Amend the
Patent and subsequent Request to amend the patent. On 28 November
2024, Claimant filed a Reply to the Defence to the Application to amend the
Patent.
1.4 With submission of 26 July 2024 (No. App_43845/2024), Defendant
requested that the Court stays the revocation proceedings until four weeks
after the UPC Court of Appeal has given its judgment with grounds in appeal
case 36389/2024. This request was denied by the judge rapporteur and
upon request to review (Rule 333 RoP) it was also denied by the full panel
on 14 October 2024 (ORD_53581/2024 No. App_49450/2024).
1 The Statement for Revocation, Defence to Revocation, Reply to the Defence to Revocation and
Rejoinder to the Reply to the Defence to Revocation are herein referred to as ´SfR´, ´DtR´, ´RtD´ and
´R´, respectively.

1.5 On 13 August 2024; Claimant submitted a request for procedural security
(No. App_46766/2024). The judge-rapporteur referred the request to the
panel, Rule 331.2 RoP. The Court ordered Defendant to provide security for
the legal costs of Claimant in the (total) amount of EUR
25.000 (ORD_47273/2024). The security was duly paid.
1.6 On 30 January 2025, the interim conference was held.
1.7 After the interim conference, the parties were given the opportunity to
comment by written submission on certain issues that were discussed in the
interim conference. By order of 2 March 2025, the Court – inter alia – set
out the order allowing Auxiliary Requests 1 and 3 and rejected Defendant’s
request to disregard the argument according to which claims 7 and 15 are
not limited to football as submitted in para. 45 of Claimant’s
Reply (ORD_68879/2024).
1.8 The oral hearing was held on 21 March 2025.
1.9 For the submissions of the parties and previous orders issued by the Court,
reference is made to the case file in the Case Management System.
2 The Patent
2.1 The Patent EP 1 944 067 B1, Exhibit BP1, is entitled ‘Method and system for
detecting an offside situation’.
2.2 The Patent arose out of European patent application 07000396.7 filed
on 10 January 2007 (Exhibit BP9), published as EP 1 944 067 A1 on
16 July 2008 (Exhibit VB05). The grant of the Patent was published on
26 October 2011. No opposition was filed.
2.3 Registered owner of the Patent is Defendant.
2.4 According to the national registers, among the Contracting States of the
UPC, the Patent is in force in Germany and the Netherlands.
2.5 Claim 1 of the Patent, as granted, reads:
“Method for detecting a contact with a ball by a first player in games and
sports, the method comprising:
− sensing a sound signal produced by the ball (Ba);
− processing the sound signal in order to determine whether there is a
contact with the ball by the first player, wherein the processing
includes comparing the sensed signal with a predetermined signal,
which predetermined signal is the signal of a contact with the ball by
a player;

− if the processing determines that the ball is contacted by the first
player, generating a detection signal;
− supplying the detection signal to a signaling system; and
− generating by the signaling system an observable signal to be
observed by a referee, in response to receipt of the detection signal.”
2.6 Claim 3 of the Patent, as granted, reads:
“Method according to any of the preceding claims, wherein generating a
detection signal comprises:
− compiling a content signal of the detection signal, the content signal
of the detection signal comprising at least one element of the group
comprising detected sound information data and a ball identification
code.”
2.7 Claim 7 of the Patent, as granted, reads:
“Method according to any of the preceding claims, wherein the contact with
the ball by the first player is a kick of the ball.”
2.8 Claim 8 of the Patent, as granted, reads:
“System for detecting a contact with a ball by a first player in games and
sports, the system comprising:
− a detection signal generator comprising a sound sensing means
(SM), in particular a microphone, for sensing a sound signal
produced by the ball (Ba), and a sound processing means (PM)
coupled to the sound sensing means for processing a sound signal
received from the sound sensing means in order to determine
whether there is a contact with the ball by the first player, wherein
the processing includes comparing the sensed signal with a
predetermined signal, which predetermined signal is the signal of a
contact with the ball by a player, the detection signal generator
generating a detection signal if the sound processing means
determines that the ball is contacted by the first player;
− a detection signal transmission system (TM) for supplying the
detection signal from the detection signal generator to a signaling
system;
− an observable signal generator comprised in the signaling system for
generating, in response to receipt of the detection signal, an
observable signal to be observed by a referee.”
2.9 Claim 10 of the Patent, as granted, reads:
“System according to any one of the claims 8 - 9, wherein the detection
signal transmission system is a wireless transmission system, in particular
operating at a frequency that is suitable to transmit over a distance of at
least the distance of a diagonal of a play field.”
2.10 Claim 15 of the Patent, as granted, reads:
“System according to any of claims 8-14, wherein the contact with the ball
by the first player is a kick of the ball.”
3 Requests
3.1 Claimant requests:
1. to revoke the European Patent EP 1 944 067 in the extent of
claims 1, 3, 7, 8, 10 and 15 for the territory of the UPC member
states Germany and the Netherlands as well as, if applicable, for
the territories of all other UPC member states in which the Patent-in-
Suit was validated.
2. to order the Proprietor to pay the costs of the proceedings.
3.2 Defendant requests:
1. to dismiss Claimant’s claim for revocation of the Patent, or
(alternatively) to maintain the Patent in the form of one of the
auxiliary requests;
2. to dismiss Claimant’s claim for compensation of legal costs; and
3. to order Claimant to compensate for Defendant’s reasonable and
proportionate legal costs.
3.3 Reformulation of Claimant requests
During the haring of 21 March and upon invitation by the Court, Claimant
reformulated its revocation request to cover the following countries:
Germany and the Netherlands.

3.4 Regarding the value of the claim Claimant suggests to set the value of the
case to EUR 2,000,000. In case the Court intends to apply Sec. II.2.b)(ii) of
the Guidelines and uses the decision of the LD Hamburg which set the value
to €500,000 as starting point, the value in litigation should not be less than
EUR 1,000,000. Defendant suggests to set the value to EUR 500,000.
4 Arguments
4.1 Claimant states that the claimed invention is not valid for several reasons.
Claimant argues that the following reasons for revocation apply:
o lack of novelty (Art. 54 EPC; Art. 65(1), (2) UPCA in combination with
Art. 138(1)(a) EPC), against the main request,
o lack of inventive step (Art. 56 EPC; Art. 65(1), (2) UPCA in
combination with Art. 138(1)(a) EPC), against the main request and
all auxiliary requests, and
o added matter (Article 138(1)(c) EPC, with reference to Articles 76(1)
and 123(2) EPC), against the second auxiliary request.
4.2 Defendant opposes this view and states that the claimed invention is valid.
GROUNDS FOR THE DECISION
5 Technical introduction
5.1 The patent describes a method and a system for detecting a contact with a
ball by a player in games and sports, such as for detecting an offside
situation during a game of football (soccer).
5.2 The patent description illustrates the patented invention by referring to
football (soccer), in the following: ”football”. In football usually at least two
referees (a referee and a linesman) are to referee the play. An important
rule to be observed and refereed is “offside”. Offside may occur if a player,
usually an offensive player, of a first team is located between the
goalkeeper and all the other players of the second team. If another player
of the first team passes the ball to the first-mentioned player at the moment
that the first-mentioned player is between the goalkeeper and the other
players, the first-mentioned player is deemed to be offside. The linesman is
to detect such a situation and to raise the flag to indicate to the referee that
the first-mentioned player is offside.

5.3 In order to determine whether the first-mentioned player is offside, the
linesman needs to determine a position of the first-mentioned player of the
first team with respect to a position of the players of the second team
exactly at the moment when another player of the first team kicks the ball
towards the first-mentioned player.
5.4 However, usually, the ball is not near the first-mentioned player and
therefore, the linesman cannot see the first-mentioned player and the ball
at a single glance. Therefore, the linesman commonly keeps the ball in sight
and as soon as the ball is kicked, he changes his sight towards the first-mentioned
player. Although the change of sight occurs in a very short
period, e.g. several milliseconds, the position of the first-mentioned player
and/or a number of the players of the second team may have changed
considerably. Further, other players may obstruct the sight of the kick of the
ball. Also, depending on the position of the referee with respect to the first-mentioned
player of the first team and some of the players of the second
team, it may be that the linesman misjudges the relative position of the
players.
5.5 According to the Patent (para. [0005]), it is an object of the present
invention to provide a method and system for assisting the referee and
linesman in detecting a contact with the ball by a player, such as for
correctly judging offside.
6 The claimed subject matter
6.1 Claim 1 of the Patent can be divided into the following features:
1. Method for detecting a contact with a ball by a first player in games and
sports
1.1 [the method comprising] sensing a sound signal produced by the ball;
1.2 [the method comprising] processing the sound signal in order to
determine whether there is a contact with the ball by the first player,
1.2.1 wherein the processing includes comparing the sensed signal
with a predetermined signal, which predetermined signal is the signal
of a contact with the ball by a player
1.3 [the method comprising] if the processing determines that the ball is
contacted by the first player, generating a detection signal;
1.4 [the method comprising] supplying the detection signal to a signaling
system;

1.5 [the method comprising] generating by the signaling system an
observable signal to be observed by a referee, in response to receipt of the
detection signal.
6.2 A corresponding system is defined in independent claim 8 which may be
structured as follows:
8. System for detecting a contact with a ball by a first player in games and
sports
8.1 [the system comprising] a detection signal generator
8.1.1 [the detection signal generator] comprising a sound sensing
means (SM), in particular a microphone, for sensing a sound signal
produced by the ball (Ba),
8.1.2 and [the detection signal generator comprising] a sound
processing means (PM) coupled to the sound sensing means for
processing a sound signal received from the sound sensing means in
order to determine whether there is a contact with the ball by the first
player,
8.1.2.1 wherein the processing includes comparing the sensed
signal with a predetermined signal, which predetermined
signal is the signal of a contact with the ball by a player,
8.1.3 the detection signal generator generating a detection signal if
the sound processing means determines that the ball is contacted by
the first player;
8.2 [the system comprising] a detection signal transmission system (TM) for
supplying the detection signal from the detection signal generator to a
signaling system;
8.3 [the system comprising] an observable signal generator comprised in the
signaling system for generating, in response to receipt of the detection signal,
an observable signal to be observed by a referee.
6.3 Some features of claims 1 and 8 of the Patent require interpretation.
Legal framework
6.4 The Court of Appeal of the UPC has laid down the following legal framework
for the interpretation of patent claims (Order dated 26 February 2024 in
UPC_CoA_335/2023, NanoString/10x Genomics, p. 26-27 of the original

German language version, also see Order dated 13 May 2024 in
UPC_CoA_1/2024, VusionGroup/Hanshow).
6.5 In accordance with Art. 69 EPC and the Protocol on its interpretation, a
patent claim is not only the starting point, but the decisive basis for
determining the scope of protection of a European patent. The
interpretation of a patent claim does not depend solely on the strict, literal
meaning of the wording used. Rather, the description and the drawings
must always be used as explanatory aids for the interpretation of the patent
claim and not only as a mean to resolve any ambiguities in the patent claim.
However, this does not mean that the patent claim merely serves as a
guideline and that its subject-matter also extends to what, after
examination of the description and drawings, appears to be the
subject-matter for which the patent proprietor seeks protection.
6.6 The patent claim is to be interpreted from the point of view of a person
skilled in the art. When interpreting a patent claim, the person skilled in the
art does not apply a philological understanding, but determines the
technical meaning of the terms used with the aid of the description and the
drawings. A feature in a patent claim is always to be interpreted in light of
the claim as a whole (Order dated 13 May 2024, in UPC_CoA_1/2024,
VusionGroup/Hanshow, point 29). From the function of the individual
features in the context of the patent claim as a whole, it must be deduced
which technical function these features actually have both individually and
as a whole. The description and the drawings may show that the patent
specification defines terms independently and, in this respect, may
represent a patent’s own lexicon. Even if terms used in the patent deviate
from general usage, it may therefore be that ultimately the meaning of the
terms resulting from the patent specification is authoritative.
6.7 In applying these principles, the aim is to combine adequate protection for
the patent proprietor with sufficient legal certainty for third parties.
6.8 The relevant point in time for interpreting a patent claim for the assessment
of validity is the filing (or priority) date of the application that led to the
patent.
The person skilled in the art
6.9 The person skilled in the art (hereinafter: skilled person) is a legal fiction
which, in the interests of legal certainty, forms a standardized basis for the
assessment of the legal concepts of "prior art" and "inventive step". The
skilled person represents the average expert who is typically active in the
technical field of the invention, has had the usual prior training and has
acquired average knowledge, skills and practical experience.
6.10 According to Defendant (SoD mn 75), the skilled person is an electrical
engineer involved in development of technical improvements for the
support refereeing football matches. He/She is equipped with a good
understanding of the rules of football and the decisions referees in football
need to make on a regular basis. He/she also has a broad understanding of
technologies that are regularly used in the assistance of refereeing football
matches.
6.11 According to Claimant (RtD mn 26), the skilled person responsible is an
electrical engineer involved in development of technical improvements for
contact detection in ball sports.
6.12 The reference to refereeing in the definition of Defendant is consistent with
para. [0005] of the patent. However, since paras. [0001] and [0005] are not
limited to football, the skilled person’s knowledge is not limited to this
game.
6.13 Both parties agree that the skilled person is an electrical engineer. The Court
considers that there is no limitation to a given sport in the education of an
electrical engineer.
6.14 The skilled person who works in the field of technical improvements for the
support of refereeing sports will be knowledgeable not only with respect to
football, but will take other ball sports into consideration, too. The skilled
person will apply the sensing, processing and signal generation technology
in any ball sports, in which the technology to ascertain the contact between
ball and player can support the refereeing activities.
6.15 In the opinion of the Court, the skilled person is an electrical engineer with
a knowledge in contact detection in the field of ball sports and the
corresponding rules of ball sports and games.
Interpretation of features of claim 1
6.16 Feature 1. Method for detecting a contact with a ball by a first player in
games and sports
6.17 This feature defines the method for detecting a contact with a ball by a
player in games and sports. The feature, by its wording, defines a “[m]ethod
for detecting a contact with a ball by a first player in games and sports”, not
a method for football in general or offside detection in particular. The
wording does not provide any limitation to football. It refers to ball sports
and even more generally, to games. Feature 1 does, by its wording, neither
define the nature of the contact with the ball nor in which ball game or ball
sport the invention is used. The claim language especially does not mention
football or the football offside rules. It uses the much more general terms
“games and sports”.
6.18 The skilled person will understand feature 1 as not being limited to football
not only due to the clear wording, but also with regard to para. [0005] of
the patent description. This part of the description makes it expressly clear
that offside detection (in football) is one application of the claimed
technology. This paragraph teaches that the patented method is used for
assisting the referee and linesman in detecting a contact with the ball by the
player (“such as for correctly judging offside” in para. [0005]).
6.19 Defendant states that the “first player”, in accordance with the Patent, is a
football player that is about to be in contact with the ball, which contact
may possibly lead to an offside situation (cf. §§ 16-18 SoD). Defendant
further alleges that the Patent teaches that the moment of contact between
the ball and the first player must be automatically detected in order to
correctly make the call for offside (see also paras. [0001]-[0005]). The first
player therefore cannot be anyone but the player which contact with the
ball may cause for an offside situation. In the oral hearing Defendant
emphasized that the patent description does not only serve to resolve
ambiguities but is to be taken seriously at all times.
6.20 There is no ambiguity in the patent claims, which would need to be
resolved. For the skilled person, it is clear that the patent description refers
not only to the offside situation but also allows for several other ways of
using the invention. The skilled person, who is familiar with rules of sports
and games, understands that there are several games and sports and
several incidents in which the referee needs to decide whether a “first
player” had contact with the ball. No information is provided in claim 1 in
order to specify who the first player is, apart from the fact that the same
first player is mentioned in features 1, 1.2 and 1.3. The skilled person
understands that the patented method serves to assist the referee and
linesman in detecting a contact with the ball by any player, who can be
qualified as a “first player”, be it to establish an offside situation in football
or be it to establish certain occurrences according to the rules of other ball
sports.

6.21 A limitation to offside situations resulting from the description does not
allow a restrictive and limiting interpretation of the patent claim. The patent
claim, which does not contain such limitation, takes precedence over the
description, which makes reference to the specific embodiment. The skilled
person is aware that embodiments generally serve to describe options for
realizing the invention and therefore do not generally permit a restrictive
interpretation of a more general patent claim. Embodiments mentioned in
the patent description only permit the conclusion that they fall under the
claim; they do not restrict the scope of the patent claim.
6.22 Defendant further states that its view is confirmed by the wording of
claim 2, which likewise refers to the “second player” as the player whose
position must be detected. According to Defendant, it is clear that this
second player is the player whose position must be detected as he might be
in offside position, whereas the first player is labelled “first” to contrast this.
Therefore, the numbering is not only necessary to distinguish one player
from the other, but also provides information on the role of said player with
regard to the offside situation. Upon proper construction, the description
as “first player” thus limits the claims to offside detection in football.
6.23 The skilled person understands that the denomination as a “first player” is
merely a linguistic technique to denominate a player. The expression
“second player” is neither used nor referred to in claim 1, thus not relevant
for claim 1, since claim 2 has, by definition, a narrower scope than claim 1.
A restrictive dependant claim, which focuses on one specific embodiment,
for example by mentioning one way of applying the patented method, does
not allow a restrictive interpretation of the main claim. A broad, general
term used in the main claim is not to be limited to an understanding
corresponding to the more specific or narrower features used in a
dependant claim. Instead, the dependant claim merely indicates possible
embodiments of the patented invention, which may be linked to additional
advantages.
6.24 This rule also applies here. The main claim 1 teaches technology for
detecting a contact with the ball by any first player and is not limited to
technologies as described in dependent claim 2, which additionally detect a
position of a second player at the moment of observation of the observable
signal.
6.25 Defendant observes that the title of the patent explicitly refers to detecting
an offside situation. However, as the claims do not mention the words
“football” or “offside”, the title cannot limit the scope of the claims of the
main request. According to R 41(2) EPC the title of the invention shall clearly
and concisely state the technical designation of the invention and shall
exclude all fancy names.
6.26 Finally, the patent description itself mentions that the method and system
of the invention may as well be employed in determining a handball or in
determining which player was the last to touch the ball. See Patent,
para. [0022].
6.27 Defendant states that in view of the description, the term “contact with the
ball” in the claim must be understood to refer to “any contact with a player
that may lead to offside” (SoD, mn. 19-20 and Patent, para. [0030]).
6.28 The Court does not consent to this interpretation. The skilled person
understands that a “contact” between ball and player may lead to offside,
provided that the contact happens in a football game. The skilled person
however does not limit the contact to apply only to the specific offside
situation in football. The skilled person understands that a contact leading
to an offside situation is an embodiment of contact, which can be measured
by applying the patented method, but does not define or restrict the various
ways in which a contact between ball and player can happen and be of
relevance under the rules of any ball game or sports. The skilled person,
who is familiar with the rules of various ball sports and games, will know
that there are other instances in which the identification of a contact
between ball and player may be necessary under the specific rules of the
respective ball game or sport.
6.29 In addition, the method and system of the invention may as well be
employed in determining a handball or in determining which player was the
last to touch the ball. See Patent, paras. [0022] and [0054]. For this reason
also, feature 1 is not limited to a situation that may lead to offside.
6.30 As explained above, the wording of the patent claim does not exclusively
refer to football rules, especially not to offside. The reason why a contact
between ball and player needs to be measured in the game or sports is not
limited to offside situation in the patent description.
6.31 From that, it follows that the patent claim does not specify how the contact
with the ball is to be made. The skilled person understands that the contact
as such is determined and that it is immaterial whether the contact is
established with a sport accessory, like a racket or bat, or with the foot or
with the hand of the first player. The patented method ascertains that there
is contact of any kind between the player and the ball, whereby, as
explained above, the ball does not have to be a football.
6.32 Feature 1.1: “[the method comprising] sensing a sound signal produced by
the ball”
6.33 The Patent does not explicitly define the meaning of “sound”. The sound to
be sensed shall be produced by the ball. Generally, any impact on the ball
on any surface will yield a sound produced by the ball. The Patent
(para. [0030]) exemplarily mentions a kick of the ball (a football) including
a header or a contact by knee) or the ball hitting the ground as possible
causes for a (corresponding) sound produced by the ball. This, however,
does not exclude that the sound signal produced by the ball has another
origin, for example the hitting of the ball with a racket or a bat.
6.34 Feature 1.2 “[the method comprising] processing the sound signal in order
to determine whether there is a contact with the ball by the first player”
According to feature 1.2, the sound signal sensed in feature 1.1 is
processed. The purpose of this processing is to determine whether there is
a contact with the ball by the first player. The cause for the sound signal
needs to be qualified. For this reason, the sensed sound signal is processed
in order to determine whether there is a contact with the ball by the first
player, i.e. to determine whether the sound signal sensed was caused by a
contact of the ball by the first player or whether it was caused by some other
event, e.g. the ball hitting the ground [0030].
6.35 Feature 1.2.1: “wherein the processing includes comparing the sensed
signal with a predetermined signal, which predetermined signal is the signal
of a contact with the ball by a player”
6.36 Feature 1.2.1 defines the processing according to feature 1.2 in more detail.
Specifically, the processing must comprise comparing the sensed sound
signal with a predetermined signal, which is the signal of a contact with the
ball by a player. Feature 1.2.1 does not specify whether the comparison is
made automatically, e.g. by a computer, or intellectually, e.g. by the
referee.
6.37 Feature 1.3 [the method comprising] if the processing determines that the
ball is contacted by the first player, generating a detection signal
6.38 As per feature 1.3, a detection signal is generated if the processing of the
sensed sound signal according to feature 1.2 (and 1.2.1) determines that
the ball made contact with the first player.
6.39 Defendant relies on the description to argue that the claimed detection
signal must necessarily be a “temporal indication, i.e. to reflect the moment
the ball is contacted by the first player” (SoD, mn. 23-24). Defendant
reasons that assisting the detection of offside not only requires the
determination of whether the ball has been kicked. Rather, it is essential
that the system determines when exactly the ball was kicked. Therefore,
according to Defendant, the skilled person understands the claim “if the
processing determines that the ball is contacted by the first player,
generating a detection signal” as a temporal indication, i.e. to reflect the
moment when the ball is contacted by the first player.
6.40 The Court does not follow this argument. The wording of feature 1.3 is clear.
There is not a temporal (“when”), but a conditional (“if”) relationship
between the detection signal and the determination that the ball has been
contacted. The patent description does not mention temporal dictation. It
merely discloses means to identify a contact. The skilled person
understands that there are several reasons why this contact may be
identified. It is either necessary to identify the contact as such or it is
necessary, due to the rules of the specific game played, to identify the
moment in time in which the contact has occurred. The wording of feature
1.3 covers both options.
6.41 This is confirmed by para. [0022] of the Patent. This section states that the
method and system according to the invention may as well be implied in
determining a handball and/or which player was the last player to touch the
ball before the ball went outside the playfield. This section does not only
show that the scope of the patent is not limited to offside detection, but it
also shows that the invention does not necessarily aim at identifying a
certain moment in which the ball has been touched. Especially for
determining a handball it is not the exact time of the touch is what matters,
but that the hand of the player has touched the ball at all.
6.42 Feature 1.4 [the method comprising] supplying the detection signal to a
signaling system
6.43 As per feature 1.4, the detection signal is supplied to a signaling system,
with the objective to eventually inform a human of the fact that the ball was
contacted by the first player, as will become clear in the context of
feature 1.5.
6.44 Feature 1.5 [the method comprising] generating by the signaling system an
observable signal to be observed by a referee, in response to receipt of the
detection signal
6.45 Finally, as per feature 1.5, the signaling system generates an observable
signal to be observed by a referee in response to receipt of the detection
signal.
Interpretation of features of claim 8
6.46 The features of claim 8 also require interpretation, for which reference can
be made to the interpretation of claim 1. Claim 8 is an independent system
claim protecting the invention with regard to a combination of steps that
realize the method protected by claim 1.
6.47 Claim 8 protects a system for detecting a contact with a ball by a first player
in games and sports (feature 8). As previously discussed with regard to
claim 1, the system for detection is not limited to a contact between the ball
and the first player in the game of football, but can be applied in any games
and sports and for detecting situations not limited to offside. Further, the
nature of the contact is not specified. It does not matter whether the ball is
hit by a foot or by a sport accessory.
6.48 The system comprises a sound sensing means (SM), in particular a
microphone, for sensing a sound signal produced by the ball (Ba)
(feature 8.1).
6.49 According to feature 8.1.1, the detection signal generator comprises a
sound processing means (PM) coupled to the sound sensing means for
processing a sound signal received from the sound sensing means in order
to determine whether there is a contact with the ball by the first player
(feature 8.1.2). As previously discussed, any impact on the ball on any
surface will yield a sound produced by the ball which can be processed
afterwards.
6.50 The sound needs to be sensed by a microphone and is then processed in
order to qualify the sound. The processing is further defined as comprising
means which serve to compare the sensed sound signal with a
predetermined signal which is the signal of a contact with the ball by a player
(feature 8.1.2.1).

6.51 Further, according to feature 8.1.3, the detection signal generator
generating a detection signal if the sound processing means determines that
the ball is contacted by the first player.
6.52 According to feature 8.2, the system comprises a detection signal
transmission system (TM) for supplying the detection signal from the
detection signal generator to a signaling system.
6.53 Finally, pursuant to feature 8.3, the system comprises an observable signal
generator in the signaling system for generating, in response to receipt of
the detection signal, an observable signal to be observed by a referee.
7 Lack of Novelty of independent claims 1 and 8 in the Main Request
Legal framework for novelty
7.1 An invention shall be considered new, if it does not form part of the
state of the art (Art. 54 EPC). To form part of the state of the art, the subject
matter of a claim, with all its features, needs to be directly and
unambiguously disclosed in one single piece of prior art and in its existing
form, it must be identical in its constitutive elements, in the same form, with
the same arrangement and the same features.
7.2 The standard for the disclosure content of a publication is what can and may
be expected from the knowledge and understanding of the skilled person.
7.3 Claimant has argued that the Patent lacks novelty under Article 54(3) EPC
over documents D1 – D2 because these documents directly and
unambiguously disclose the combination of features of claim 1 of the patent
at issue in a novelty-destroying manner.
Lack of novelty over D2 (GB 2 403 362 A) (“Roke”)
7.4 Claim 1 in view of D2 (GB 2 403 362 A) (“Roke”)
7.5 The method to which claim 1 pertains is disclosed by UK Patent Application
Publication GB 2 403 362 (hereinafter referred to as “Roke” or D2). It does
not classify as new over “Roke” (Art. 54 EPC).
7.6 The UK Patent Application Publication No. 2 403 362 A (“Roke”) was
published prior to the filing date of the Patent EP 067
(10 January 2007), namely on 29 December 2004. “Roke” is prior art to be
considered for the evaluation of the patentability under Art. 54(2) EPC.

7.7 “Roke” discloses “an acoustic event synchronisation and characterisation
system for sports” (D2, p. 1, heading). It provides a method for calculating
the location of an impact event. More particularly, it discloses means for
determining the occurrence and location of an impact event comprising a
video-based trajectory tracking system for tracking the path of an object
and one or more microphones placed in the expected vicinity of the impact
event. It thereby provides help to the referee in deciding when and where
an impact between ball and player happened, or whether one occurred at
all, and what that impact consisted of in terms of which objects were
involved. It helps the referee to classify the event into one of several
possible categories. For example, it can be determined whether in fact the
ball had touched either the bat or the batsman before respectively hitting
the stumps or being caught by a fielder. By describing impact events, “Roke”
makes special reference to cricket and other racquet games, such as tennis.
It does not mention football but does not exclude other ball sports such as
football either.
7.8 As explained above for the interpretation of claim 1, the patent claim is not
limited to offside detection in football, such that it is immaterial that D2
relates to racket/bat sports in general and cricket in particular. Therefore, a
reader understands that “Roke” discloses “a contact with the ball by first
player” which is to be measured in game and sports, in the meaning of
feature 1.
7.9 “Roke” discloses a “Method for detecting a contact with a ball by a first
player in games and sports” (feature 1). The reader of D2 understands that
the method applied in “Roke” serves to detect a contact with a ball by a first
player in games and sports. As previously explained, the contact with the
ball does not necessarily have to be established by a part of the human
body, but can also be established by a racket.
7.10 “Roke” discloses a contact. This becomes very clear since, on page 8, line 25
of “Roke”, it is stated that “a valuable further insight may be obtained to
determine the nature of the impact, and so to determine, for example,
whether the ball hit the bat or part of the batsman”. “Roke“ further states
that this is “essential in determining LBW decisions, or whether the impact
involved the ball at all.” (“leg before wicket (LBW) decisions”).
7.11 As “Roke“ describes on page 7, lines 11-14, in cricket, an impact might be
between the ball, the cricketer's hat, pad, clothing, the ground or the
wicket. In cricket there also is a “contact with the ball” by a “first player”
(and generally and consecutively by a “second player”), be it using the bat
20
or, e.g., at the player’s leg or the pad covering the leg, respectively (cf. D2,
page 7, lines 11-14).
7.12 There is no dispute between the parties with regard to feature 1.1: “[the
method comprising] sensing a sound signal produced by the ball”. Indeed,
“Roke” discloses on page 7, line 15 and 16 that an “audio signal waveform
from an impact is picked up by one or more microphones or other sensors
installed near the pitch”.
7.13 Defendant disputes that “Roke” discloses feature 1.2 “[the method
comprising] processing the sound signal in order to determine whether there
is a contact with the ball by the first player”. “Roke” demonstrates that once
the audio signal is captured, an analysis can be performed to identify what
could have happened at the time of impact. Additionally, “Roke” shows that
amongst the various techniques available to analyze the audio waveforms,
Wavelet transforms provide an appropriate means of identifying time and
frequency varying properties of audio impulses.
7.14 Defendant states that the analysis disclosed in “Roke” is supposedly
performed visually by viewers or an umpire using the system’s “display
device”, rather than automatically as claimed (SoD, mn. 59-65). Defendant
further states that a proper reading of page 21, lines 1-16 of D2 leads to the
conclusion that it does not disclose a system wherein it is the system that
automatically determines if some ball is contacted by a player.
7.15 Claimant responds that comparing “a Wavelet transform […] produced for
the time region surrounding an impact” is not meant to be done visually,
but automatically.
7.16 First, feature 1.2 is not specified as being made visually nor automatically.
Thus, the discussion on whether “Roke” is based on visual or automatic
processing is not relevant.
7.17 Second, the parts made available to the viewers or the umpire, as specified
on page 21, lines 14-16 of D2, are renditions of the transformed waveforms,
which require some processing to be generated.
7.18 Third, assuming that feature 1.2 requires automatic processing, the Court
considers Claimant’s view to be correct. On page 21 (lines 3-5), “Roke”
discloses how the sound signals are to be measured. It states that
“analysis 16 can be performed to identify what could have happened at the
time of impact. Amongst the various techniques available to analyse the
audio waveforms Wavelet transforms provide an appropriate means of
identifying the time and frequency varying properties of audio impulses”.

7.19 Wavelet transform describes a tool for identifying the time and frequency
varying properties of audio impulses.
7.20 When applied in sports or games, the Wavelet transforms allow identifying
impact sounds as well as analyze their duration and intensity. “Roke”
discloses further that these may be examined according to their distinct
patterns, allowing them to be classified based on the known characteristics
of ball-object interactions, e.g. ball-ground, ball-person (D2, p9 5-7, p 21 6-
8).
7.21 While it is true that the analysis of the origin of the sound can be performed
visually, as evidenced on page 10, lines 2 and 3, reading that “This should
allow the observer to determine the type of impact: that is, the object that
the ball hit.”, a reader of D2 would understand the following sentence to
indicate that there is also an automatic comparison that can be used as an
auxiliary tool, since it is stated on page 10, lines 3-5 that: “This analysis may
also be combined with an analysis of the sound made by the impact to arrive
at a conclusion as to the nature of the object hit by the ball” [emphasis
added]. The term “analysis” herein provides for an already completed,
automatic analysis.
7.22 “Roke” further states, on page 21 lines 14-16, that: “If required, renditions
of the transformed waveform can be made available on a transmitted
picture, to allow viewers or an umpire to compare this with the set of
patterns representing the various types of impact.”[emphasis added].
7.23 The assumption that the analysis is conducted automatically becomes
especially apparent from the very purpose of the system. The system is
designed specifically for time efficient identification of sound patterns, so
that it would only be sensible to not burden an umpire with the complex
and impractical task of comparing different Wavelet transforms during an
ongoing game. Implementation of this comparison by an umpire would, in
practice, probably be impossible.
7.24 Moreover, on page 9, lines 5-7, “Roke” states that various possible “impact
events, such as bat-ball, stump-ball, cricketer-ball, ground-ball, bat-pad bat-ground,
each have a typical associated sound. This may also be included into
a system according to the present invention for assisting in classifying the
nature and location of the impact event.” This analysis aims at identifying
the nature and origin of the sound.
7.25 Further, on page 21, lines 7-8, “Roke” discloses that a wavelet transform
can be produced and ”this can be compared to a lookup table of wavelet
transforms corresponding events of known origin." Hence, exactly as
required by feature 1.2.1, this processing includes comparing the sensed
signal with a predetermined signal, which predetermined signal is the signal
of a contact with the ball by a player.
7.26 Defendant further states that the “analysis 16” merely concerns one of “the
various techniques available to analyse the audio waveforms”, among
which the Wavelet transform. It is irrelevant whether or not this analysis is
performed automatically, as this analysis does not concern the classification
of the captured signal.” Nevertheless, this wording means that a Wavelet
transform is used to analyze the audio waveforms and hence to analyze
whether the signal is considered to be the sound of a ball which has been
hit. Using wavelet transform technology it is the system which exclusively
determines what event occurred.
7.27 Further, as Claimant has stated in the oral hearing, a lookup table is not a
physical table. A lookup table is a computer storage file, which allows to
look up values stored in computer memory and hence is part of the data
processing.
7.28 Once the processing determines that the ball is contacted by the first player,
the invention according to “Roke” generates a detection
signal (feature 1.3). Indeed, page 16, line 14 discloses that “When a signal
of an impulsive nature is recorded…, such as is typically generated by an
impact event, …”. An impact event yields a signal of an impulsive nature.
7.29 “Roke” also discloses the supply of the detection signal to a signalling
system (feature 1.4). Once the sound made by the ball has been detected
and analysed, a signal is supplied to a signalling system, such as a display.
The described processing “can be used to give judgement on the nature of
the impact, for example on a display device 17” (D2, p. 21, lines. 10-11).
7.30 This is further illustrated in Fig. 3 of “Roke” which is inserted below.
7.31 Figure 3 illustrates that “Roke” discloses the supply of the detection signal
to a signalling system. Figure 3 shows the analysis 16, in which the sound
signal is processed and the display device 17. The “display device 17” is a
unit separate from that responsible for “analysis 16”, i.e., that responsible
for the processing in the sense of features 1.2 and 1.2.1.
7.32 Analysis 16 and display 17 are connected by an arrow (vertical and
downwardly oriented on Fig.3). This arrow indicates that the analysed data
is transmitted to the display. If the processing determines that the ball has
made contact with the first player (and/or specifically, e.g., his/her bat), it
generates a corresponding detection signal that it then supplies to a
signalling system such as “display device 17”. “[D]isplay device 17” then in
turn generates an observable signal in response to receipt of the detection
signal.
7.33 Feature 1.5 [the method comprising] generating by the signaling system an
observable signal to be observed by a referee, in response to receipt of the
detection signal
7.34 As required by feature 1.5, the signal displayed on the “display device 17”
may be observed by a referee (umpire), considering that D2 labels its system
as particularly “useful in the televising and umpiring of sporting events” (D2,
page 7, lines 4-5, emphasis added).
7.35 In summary, this leads to the result that D2 “Roke” is anticipating prior art
to claim 1 of the Patent as granted. Claim 1 is invalid due to a lack of novelty.
7.36 Claim 8 in view of D2 (GB 2 403 362 A) (“Roke”)
7.37 The system to which claim 8 pertains is also disclosed by “Roke”. Similar to
claim 1, it is not to be considered new over “Roke” (Art. 54 EPC). The
arguments raised by the court with regard to claim 1 apply similarly to
independent claim 8.
7.38 Claim 8 is providing the means to use the method disclosed in claim 1. It
discloses a system for detecting a contact with the ball by a first player in
games and sports (feature 8). “Roke” serves to detect whether a ball is hit
by the bat or part of the batsman (page 8, line 25). “Roke” identifies, in
cricket, an impact which may be between the ball, the cricketer's hat, pad,
clothing, the ground or the wicket (page 7, lines 11-14).
7.39 On page 7, lines 15 and 16, “Roke” also discloses a microphone which picks
up the sound signals by stating that an audio signal waveform from an
impact is picked up by one or more microphones or other sensors installed
near the pitch. Therefore, it comprises a sound sensing means for sensing a
sound signal produced by the ball (feature 8.1.1).
7.40 As previously discussed, “Roke” discloses a sound processing means
coupled to the sound sensing means for processing a sound signal received
from the sound sensing means in order to determine whether there is a
contact with the ball by the first player (feature 8.1.2). According to the
disclosure on page 21, the processing serves to identify what could have
happened at the time of impact.
7.41 Amongst the various techniques available to analyze audio waveforms,
Wavelet transforms provide an appropriate means of identifying the time
and frequency varying properties of audio impulses (feature 8.1.2.1) to
analyze the sound signal in order to determine whether there is a contact
with the ball by the first player. On page 9, lines 5-7, “Roke” discloses that
various possible impact events have a typical associated sound. On page 21,
lines 7-8, “Roke” discloses a comparison to events of known origin.
7.42 As already described in connection to claim 1, “Roke” discloses that once
the sound made by the ball has been detected and analysed, a signal is
supplied to a signalling system such as a display (feature 8.2). According to
“Roke”, the described processing, as exercised by the system, “can be used
to give judgement on the nature of the impact, for example on a display
device 17” (D2, page 21, lines 10-11). Further, as previously described, the
relationship between the processing device 16 and the signal device 17 is
shown in Fig. 3.
7.43 Finally, the system comprises a monitor which displays a signal so that the
signal is observable (feature 8.3).
7.44 In summary, this leads to the result that D2 “Roke” is anticipating prior art
to claim 8 of the Patent as granted. Claim 8 is invalid due to a lack of novelty.
8 Lack of Inventive step of independent claims 1 and 8 in the Main Request
8.1 Furthermore the Court considers it useful to examine the inventive step
regarding the objects of claims 1 and 8.
Legal framework for inventive step
8.2 According to Article 56 EPC, an invention shall be considered as involving an
inventive step if, having regard to the state of the art, it is not obvious to a
person skilled in the art.
8.3 Whether inventive step is acknowledged is always to be assessed in each
individual case and requires a legal evaluation of all relevant facts and
circumstances. As held by the Court of Appeal in NanoString/10x Genomics
(Order dated 26 February 2024 in UPC_CoA_335/2023, p. 30, fourth para.
in the original German language version), the burden of presentation and
proof with regard to the facts from which the lack of validity of the patent
is derived and other circumstances favourable to the invalidity or revocation
lies with the Claimant in a revocation action (Art. 54 and 65(1) UPCA, Rules
44(e)-(g), 25.1(b)-(d) RoP). Even though proof of certain facts, if contested,
may thus be required, the ultimate assessment of the relevant facts
circumstances is a question of law, which does not lend itself to the taking
of evidence.
8.4 Inventive step is to be assessed from the point of view of the skilled person
on the basis of the state of the art as a whole including the skilled person´s
common general knowledge. The skilled person is assumed to have had
access to the entire publicly available art on the relevant date. The decisive
factor is whether the claimed subject matter follows from the prior art in
such a way that the skilled person would have found it on the basis of their
knowledge and skills, for example by obvious modifications of what was
already known.
8.5 In order to assess whether or not a claimed invention was obvious to a
skilled person, it is first necessary to determine a starting point in the state
of the art. There has to be a justification as to why the skilled person would
consider a particular part of the state of the art as a realistic starting point.
A starting point is realistic if its teaching would have been of interest to a
skilled person who, at the priority date of the patent at issue, was seeking
to develop a similar product or method to that disclosed in the prior art
which thus has a similar underlying problem as the claimed invention (cf.
Order dated 26 February 2024 in UPC_CoA_335/2023, NanoString/10x
Genomics, p. 34 under “cc” in the German original version, “Für eine
Fachperson, die sich zum Prioritätszeitpunkt des Verfügungspatents vor die
Aufgabe gestellt sah, […] war D6 von Interesse”). There can be several
realistic starting points. It is not necessary to identify a “most promising”
starting point.
8.6 Comparing the claimed subject matter, after interpretation following the
guidelines provided above under “claim interpretation”, and the prior art,
the subsequent question is whether it would be obvious for the skilled
person to, starting from a realistic prior art disclosure, in view of the
underlying problem, arrive at the claimed solution. If it was not obvious to
arrive there, the claimed subject matter meets the requirements of Article
56 EPC.
8.7 In general, a claimed solution is obvious if, starting from the prior art, the
skilled person would be motivated (i.e. have an incentive or in German:
“Veranlassung”, see Order dated 26 February 2024 in UPC_CoA_335/2023,
NanoString/10x Genomics, p. 34 of the original German language version)
to consider the claimed solution and to implement it as a next step
(“nächster Schritt”, UPC_CoA_335/2023, p. 35, second para.) in developing
the prior art. On the other hand, it may be relevant whether the skilled
person would have expected any particular difficulties in taking any next
step(s). Depending on the facts and circumstances of the case, it may be
allowed to combine prior art disclosures.
8.8 A technical effect or advantage achieved by the claimed subject matter
compared to the prior art may be an indication for inventive step. A feature
that is selected in an arbitrary way out of several possibilities cannot
generally contribute to inventive step.
8.9 Hindsight needs to be avoided. The question of inventive step should not be
answered by searching retrospectively, with knowledge of the patented
subject matter or solution, for any (combination) prior art disclosures from
which that solution could be deduced.
Lack of inventive step starting from D3 (BE 10 15 552) (“Penezy”)
8.10 The parties agree that D3 is a possible starting point for the assessment of
an inventive step.
8.11 The Belgian Patent Application Publication No. 1015552A6 (“Penezy”) was
published prior to the filing date of the Patent EP 067
(10 January 2007), namely on 7 of June 2005. “Penezy” is prior art to be
considered for the evaluation of the patentability under Art. 54(2) EPC.
8.12 D3 discloses an invention which consists in sending information about the
moment of the pass instantaneously to the linesman, i.e., when the football
player comes into contact with the D.S.J. (Abbreviation of
“Detecte.Signale.Juste”) ball fitted with the chip, the latter sends the
information directly via a sound emitter to the earpiece worn by the
linesman, so no more seconds are lost. It proposes placing a chip in a
football (and dubs the result “D.S.J. ball”). This chip senses pressure changes
and/or shocks experienced by/within the ball due to a contact of a player
with the ball. Linesmen can be instantaneously informed of any such
contact via an earpiece in wireless communication with the chip, e.g., such
as to better adjudge offside situations (cf. D3, Fig. 4).
8.13 The parties agree that “Penezy” discloses features 1, 1.1 and 1.4 to 1.5.(SfR
mn 76-77, SoD mn 82-85)
8.14 Claimant states that “Penezy” also discloses feature 1.2 “[the method
comprising] processing the sound signal in order to determine whether there
is a contact with the ball by the first player”.
8.15 Defendant disputes that “Penezy” discloses feature 1.2.
8.16 “Penezy” discloses that: “any impact or change in pressure in the ball will be
signalled by a beep to the linesman's ear”. The chip of D3 is programmed to
detect an impact with the player. Thus, some processing takes place within
the chip of D3. The information transmitted to the linesman includes
whether there was an impact with the ball by the first player (See page 1,
lines 14-16 : “… le choc dû au contacte du joueur avec ballon”. See also claim
1 : … le juge de ligne détectera le choc grâce à la puce électronique.) Also,
lines 39-41 of page 1 of D3 show that the signal received from the ball is
exploited by the receptor or the emitter of the headset of the linesman.
Therefore, some processing of the sound signal is performed in D3 and it
allows assessing whether there is a contact with the ball by the player.
Feature 1.2 is disclosed in D3.
8.17 Both parties agree that feature 1.2.1. is not disclosed in D3.
8.18 Feature 1.2.1 defines the processing as per feature 1.2 in more detail,
specifically requiring a comparison of the sensed signal with a
predetermined signal that represents a contact with the ball by a player.
8.19 Defendant submits [SoD mn 86] that the problem to be solved when starting
from D3 is “how to provide a more reliable detection of offside situations”.
Nevertheless, the Court considers this problem formulation to be too
narrow. Defendant is right insofar as the automated determination of the
moment of contact indeed makes the determination more objective and
therefore more reliable. However, as shown above, the automatic
determination of ball contact is not only relevant for offside, but also for
other ball games and sports.
8.20 The objective technical problem addressed by feature 1.2.1 may be
regarded as to provide a more accurate method for detecting a kick of the
ball, as compared to the method of D3, in particular to distinguish a kick of
the ball from a ball bouncing on the ground.
8.21 Claimant states that a solution to this this technical problem is to compare
to a reference signal (See SfR, paras. [0087] to [0096])
8.22 The skilled person, looking to improve D3 to provide a more reliable ball
contact detection, would have looked in the literature of games and sports
how to increase the reliability of the detection, including D2, which belongs
to this technical field and teaches a solution to this technical problem. The
technical teachings of D2 are understandable by an electrical engineer with
a knowledge in contact detection in the field of ball sports.
8.23 D2 emphasizes that determining which objects were involved in an impact
is of considerable interest (page 1, lines 9-12) and explains how to do it on
top of page 21, by using the lookup table of Wavelet transforms
corresponding to events of known origin.
8.24 Claimant states that the idea of comparing a sensed signal to a
predetermined signal representing a contact with a ball by a player in order
to distinguish such a contact from other events was well known in the prior
art at the filing date of the Patent. SfR mn 87: ”A skilled person had every
incentive to apply this knowledge to the system of D3 – because D3 is indeed
silent on any details of the processing, inevitably forcing the skilled person
to think about how to best implement its teachings.” SfR mn 89 “The skilled
person would have readily implemented D3’s teachings using D2’s “lookup
table of Wavelet transforms corresponding to events of known origin” (…)
such as to ensure that impacts experienced by the ball are characterized
correctly, in turn enhancing “broadcast, umpiring and training” (cf. D2, p. 1,
l. 12)”.
8.25 Defendant argues that there is no incitation for the skilled person to
combine documents D3 and D2.
8.26 However, once the objective technical problem is defined (independently
of D2), it is natural for the skilled person to look for a solution in the
technical field of games and sports. And D2 provides such a solution, which
answers the objective technical problem, so that it is obvious for the skilled
person to use this solution within the method and system of D3.
8.27 Concerning the argument of Defendant that D2 does not relate to offside
detection, the Court observes that claim 1 of D3 and the objective technical
problem relate to this feature. Moreover, as this feature is already known
from D3, it is included in any combination starting from D3.
8.28 No long-felt need is demonstrated by Defendant. A long-felt need should be
computed between the date of the prior art and the priority date of the
patent at issue, not between the date of the prior art and an
implementation by a third party. The argument of Defendant cannot be
followed.
8.29 Claimant states that “Penezy” also discloses feature 1.3 [the method
comprising] if the processing determines that the ball is contacted by the
first player, generating a detection signal”.
8.30 Defendant disputes that “Penezy” also discloses feature 1.3, based on the
fact that feature 1.3. cannot be disclosed if feature 1.2 is not disclosed.
However, as mentioned here above, “Penezy” discloses feature 1.2, so that
the exclusion invoked by Defendant does not exist.
8.31 Moreover, “Penezy” states in lines 1-3 of claim 1 that the chip in the ball
instantaneously sends information related to the shock detected in the ball,
which necessarily implies generating a signal to be sent. Feature 1.3 is
disclosed in D3.
8.32 Defendant states that D2 and D3 are not compatible because the
microphones of D2 are located around the playfield, whereas the chip of D3
is embedded in the ball. However, D2 also contemplates a variant with
sensors embedded in the ball. See page 13, lines 25-27.
8.33 Thus, nothing prevents the skilled person from combining D2 and D3, for
the reasons given above regarding feature 1.2.1.
8.34 Therefore, the method of claim 1 does not involve an inventive step in view
of the combinations of documents D3 and D2.
Claim 8 when starting from (BE 10 15 552) (“Penezy”)
8.35 The arguments mentioned above with regard to claim 1 on inventive step
apply mutatis mutandis. Claimant states that its considerations concerning
construction of independent claim 1 apply to independent claim 8.
Defendant discusses his interpretation of the features of claim 8 together
with those of claim 1.
8.36 As the parties agree that “Penezy” discloses features 1, 1.1 and 1.4 to
1.5.(SfR mn 76-77, SoD mn 82-85), they also agree on the disclosure of the
corresponding features 8, 8.1 and 8.1.1.
8.37 Claimant states that “Penezy” discloses feature 8.1.2 “[the system
comprising] a sound processing means (PM) coupled to the sound sensing
means for processing a sound signal received from the sound sensing means
in order to determine whether there is a contact with the ball by the first
player;” Defendant disputes that “Penezy” discloses feature 8.2.
8.38 As explained above, “Penezy” discloses that: “any impact or change in
pressure in the ball will be signaled by a beep to the linesman's ear”. Since
the chip of D3 is programmed to detect an impact with the player. Thus,
some processing takes place within the chip of D3. The information
transmitted to the linesman includes whether there was an impact with the
ball by the first player. Thus a sound processing means (PM) is used to
determine whether there is a contact with the ball by the (first) player.
8.39 Both parties agree that similar to features 1.2.1. also feature 8.1.2.1 is not
disclosed in D3. As explained above, the skilled person, looking to improve
D3 to provide a more reliable ball contact detection, would have looked in
the literature of games and sports how to increase the reliability of the
detection, including D2, which belongs to this technical field and teaches a
solution to this technical problem. D2 provides such a solution, which
answers the objective technical problem, so that it is obvious for the skilled
person to use this solution within the method and system of D3.
8.40 Claimant states that “Penezy” discloses feature 8.2 “[the system
comprising] a detection signal transmission system (TM) for supplying the
detection signal from the detection signal generator to a signaling system;”
Defendant disputes that “Penezy” discloses feature 8.2.
8.41 As explained above, “Penezy” discloses that: “any impact or change in
pressure in the ball will be signaled by a beep to the linesman's ear”. Since
the chip of D3 is programmed to detect an impact with the player. Thus,
some information is transmitted from the chip to the earpiece of the
linesman. Thus a detection signal transmission system (TM) for supplying
the detection signal from the detection signal generator is disclosed.
8.42 Feature 1.3 corresponds to feature 8.1.3. As the Court holds that feature
1.3 is disclosed, the same holds true for feature 8.1.3
8.43 In sum, also claim 8 is obvious over D3 in connection with D2.
9 Dependent Claims 3, 7, 10 and 15
Interpretation of claimant’s requests
9.1 Claimant requested “to revoke the European Patent EP 1 944 067 in the
extent of claims 1, 3, 7, 8, 10 and 15 for the territory of the UPC member
states Germany and the Netherlands (…).” This request can be interpreted
as requesting the Court to declare invalid the claims listed in this request in
this order to the largest extent possible.
Claim 3
9.2 Claim 3 merely states that a detection signal is compiled (created), which
includes a content comprising either a sound information or a ball
identification code or both.
9.3 Claim 3 of the Patent can be divided into the following features:
3. Method according to any of the preceding claims,
3.1 wherein generating a detection signal comprises: compiling a
content signal of the detection signal,
3.2 the content signal of the detection signal comprising at least one
element of the group comprising detected sound information data
and a ball identification code.”
9.4 Claimant alleges (SfR mn 100 et seq.) that claim 3 merely requires that the
detection signal as per feature 1.3/8.1.3 comprises detected sound
information data (which is understood to refer to raw data representing the
sound signal as sensed), ball identification code, or both. Claimant considers
this as non-inventive. Claimant reasons that “it is and has always been
common practice to supply raw data along with any analysis results relating
thereto” and that “it is a no-brainer to identify in the detection signal the
ball with which contact by a first player was detected” (§ 100-101 SoC).
9.5 Defendant states that claim 3 is inventive as there is no reason for the skilled
person to do this for purposes of improving offside detection (SoD mn. 106).
9.6 A statistical analysis is disclosed in D2. Compiling of a content signal is
needed in D2 for implementing features 1.2, 1.2.1 and 1.3. In D2, audio
signals are captured (see top of page 21) and they comprise sound
information (sensed by the microphone 20).
9.7 Compiling a signal is needed for using the statistical analysis 16 mentioned
on top of page 21 of D2. Thus, feature 3.1 is at least implicitly known
from D2.
9.8 Moreover, the chip of D3 must emit a signal to the earpiece and this signal
must be compiled from the pressure change or from the shock sensed by
the chip, which is programmed to detect pressure changes and shocks due
to contact. Thus, feature 3.1 is also known from document D3.
9.9 Therefore, the combination of D3 and D2 considered for claim 1 also
induces that feature 3.1 is disclosed.
9.10 Moreover, lines 16-19 of page 1 of D3 show that a pressure change is
detected by the chip so that the content signal comprises an information on
this pressure change which is equivalent to a detected sound, in the
meaning of the first alternative of feature 3.2.
9.11 Further, the signal provided by the chip includes its number, in the form of
a bar code, for its own identification. Since the chip is embedded in the ball,
this bar code is an identification code of the ball, in the meaning of the
second alternative of feature 3.2.
9.12 Thus, the combination of documents D3 and D2 discloses all features of
claim 3, without having to consider the other documents provided by
Claimant.
Claims 7 and 15
9.13 Claim 7 has the following wording:
Method according to any of the proceeding claims, wherein the contact with
the ball by the first player is a kick of the ball.
9.14 Claim 15 has the following wording:
System according to any of claims 8-14, wherein the contact with the ball by
the first player is a kick of the ball.
9.15 Since the specific features of claims 7 and 15 are already known from D3,
any combination based on this document will include these features. Such
is the case for the combination of D3 and D2, which makes the objects on
claims 7 and 15 obvious.
9.16 Claimant states that the restriction to football is non-technical and must
hence be disregarded for the assessment of the inventive step. Claimant
further states that even if it was considered nonetheless, not least in view
of D3, the skilled person would have readily contemplated applying the
teachings of D2 also in the context of football, considering that both
documents emphasize that they relate to “ball game[s]” (D1, p. 1, first
para.) and “ball sports” (D2, p. 1, heading) more generally (SfR mn 106).
9.17 Defendant responds that the use of the method and system for football is
clearly technical. Inter alia, the restriction implies the use of the method
using a football (as opposed to another ball), which difference is clearly
technical. It also involves the detection of specific contacts – i.e. the types
of ball-player contacts in football that may lead to offside. These contacts
are also clearly of a technical nature.
9.18 The issue of the technical nature of the invention can be left open because
even if these elements of the claim were considered to have a technical
nature, there is no inventive step involved over D3 combined with D2.
9.19 Similar to claims 1 and 8, neither claim 7 nor claim 15 are restricted to
football. The only additional feature is “kick of the ball”. This feature “kick
of the ball” is defined in para. [0009] of the Patent as “any contact with the
ball by a player that may lead or will lead to offside”.
9.20 As previously discussed, D2 (“Roke”) will be considered by the skilled person
confronted to the technical problem of providing a more accurate method
than in D3 for detecting a kick of the ball. D2 discloses a system which
“analyse[s] data from sports matches such as cricket, baseball, tennis and
other bat / racquet sports” to provide information on “[w]hen and where an
impact happened (or whether one occurred at all), and what it consisted of
in terms of which objects were involved in the impact” (D2, p. 1, l. 8-11).
9.21 The skilled person will therefore consider “Roke” and apply the technology
disclosed in D2 regarding the identification of a kick of the ball. This does
not require an inventive step and directly leads the skilled person toward
the method of claim 7, respectively the system of claim 15.
Claim 10
9.22 Claim 10 has the following wording:
System according to any one of the claims 8 - 9, wherein the detection signal
transmission system is a wireless transmission system, in particular
operating at a frequency that is suitable to transmit over a distance of at
least the distance of a diagonal of a play field.

9.23 Claimant states that Claim 10 does not provide any further distinction over
D3, in which a detection signal in the sense of feature 1.3/8.1.3 is
transmitted wirelessly to an earpiece worn by a linesman. Claimant further
states that, for this reason alone, claim 10 cannot provide for an inventive
step over D2, either, as the skilled person would have readily contemplated
a wireless design for their respective systems in view of D3, but also in view
of common general knowledge. In 2007 (when it was filed for the patent-in-suit)
wireless technology was already ubiquitous and part of every skilled
person’s standard repertoire.
9.24 Defendant states that the combination of those documents is not obvious
(Claimant provides no arguments for a motivation to combine), whereas D2
does not qualify as suitable starting points / “closest prior art” for solving a
problem of offside detection in football. Defendant further states that the
inventive step was confirmed by the satisfaction of a long felt need.
Defendant notes that the problem of offside detection is a long-standing
problem. Detection of offside has been historically error-prone, with a great
number of match outcome determining errors being made. This argument
of long-felt need does not convince the Court for the reasons mentioned
regarding the lack of inventive step of the method of claim 1.
9.25 Claim 10 includes
- a first feature “detection signal transmission system is a wireless
transmission system”
- a second feature: “ in particular operating at a frequency that is
suitable to transmit over a distance of at least the distance of a
diagonal of a play field”.
9.26 Claimant identifies the second feature as optional (SfR mn 108). Defendant
does not discuss whether or not the second feature is optional. In both
cases, claim 10 is not inventive.
9.27 First, if the second feature is optional, then claim 10 covers a wireless
transmission system between the ball and the signalling system. Such a
wireless transmission system is disclosed in D3. See D3 page 1, lines 39-41 :
“… un émetteur qui lui signalerait instantanément par bip l’information
émise du ballon…" and the representation of signal waves in figure 4, next
to players 6 and 8. Thus, any combination of prior art based on D3 includes
the compulsory feature of claim 10. The object of claim 10 cannot imply an
inventive step.

9.28 Second, if one considers that the second feature of claim 10 must be
construed in light of the first feature, then the second feature is not
optional. Under this assumption, the skilled person understands that the
use of a frequency that is suitable to transmit over a distance is necessary
because the linesman receiving the signal cannot stand inside the playing
field, as this would disturb the game. The skilled person, who has a
background in electronic engineering will also understand that in order to
fulfill this function, the wireless transmission system must necessarily
operate on a suitable frequency.
9.29 In other words, the skilled person has no choice but to use the second
feature if he/she needs to implement the invention of D3 in real life. Also
for this reason, the object of claim 10 cannot imply an inventive step.
9.30 In addition, D2 teaches on lines 23-24 of page 24 that wireless microphones
are suitable for insertion into the ball. The skilled person knows that, by
definition, wireless microphones work at frequency suitable for
transmission up to the corresponding receiver, which confirms to the skilled
person that the second feature of claim 10 shall be used when combining
the teachings of D2 and D3
9.31 Thus, the Court concludes that the objects of claims 3, 7, 10 and 15 do not
imply an inventive step.
10 Defendant’s Auxiliary Requests
10.1 Defendant submitted an auxiliary request together with the Defense to
revocation on 26 July 2024. Subsequently, together with the Rejoinder on
28 October 2024, Defendant submitted two further auxiliary requests in a
Subsequent application to amend the patent. With submission of 28
November 2024 plaintiff opposed the supplementary auxiliary requests.
10.2 The auxiliary requests are as follows, whereby the numbering of the
features is according to the submission in the Rejoinder of 28 October 2024.
The Court observes that the numbering differs from the numbering which
was originally applied in the Statement for revocation and the Reply to the
statement of revocation. In addition the features of each request in bold
characters are in addition with respect to the claims of the main request.
10.3 Auxiliary request 1 has the following features:
Auxiliary Request 1 – Claim 1
1.1 Method for detecting a contact with a ball by a first player in games and
sports, [1] for detecting an offside situation in a game of football (soc-cer),
the method comprising:
1.2 sensing a sound signal produced by the ball (Ba), [2] wherein the ball is a
football [3], and wherein the sound signal is sensed by a sound sensing
means arranged in the ball;
1.3 processing the sound signal in order to determine whether there is a con-tact
with the ball by the first player, wherein the processing includes com-paring
the sensed signal with a predetermined signal, which predeter-mined
signal is the signal of a contact with the ball by a player;
1.4 if the processing determines that the ball is contacted by the first player,
generating a detection signal, [5] wherein the detection signal is gener-ated
when the ball is contacted by the first player;
1.5 supplying the detection signal to a signaling system; and
1.6 generating by the signaling system an observable signal to be observed by
a referee, in response to receipt of the detection signal.
Auxiliary Request 1 – Claim 8
8.1 System for detecting a contact with a ball by a first player in games and
sports, [1] for detecting an offside situation in a game of football (soc-cer),
the system comprising:
8.2 a detection signal generator comprising a sound sensing means (SM), in
particular a microphone, for sensing a sound signal produced by the ball
(Ba), [2] wherein the ball is a football [3], and wherein the sound sens-ing
means (SM) is arranged in the ball;
8.3 a sound processing means (PM) coupled to the sound sensing means
8.3.1 for processing a sound signal received from the sound sensing means in
order to determine whether there is a contact with the ball by the first
player, wherein the processing includes comparing the sensed signal with
a predetermined signal, which predetermined signal is the signal of a
contact with the ball by a player
8.4 The detection signal generator generating a detection signal if the sound
processing means determines that the ball is contacted by the first
player, [5] wherein the detection signal is generated when the ball is
contacted by the first player;
8.5 a detection signal transmission system (TM) for supplying the detection
signal from the detection signal generator to a signaling system;
8.6 an observable signal generator comprised in the signaling system for
generating, in response to receipt of the detection signal, an observable
signal to be observed by a referee.
10.4 Auxiliary request 2 has the following features:

Auxiliary Request 2 – Claim 1
1.1 Method for detecting a contact with a ball by a first player in games and
sports, [1] for detecting an offside situation in a game of football (soc-cer),
the method comprising:
1.2 sensing a sound signal produced by the ball (Ba), [2] wherein the ball is a
football, [3] and wherein the sound signal is sensed by a sound sensing
means arranged in the ball;
1.2a [4] sensing an acceleration signal produced by the ball (Ba);
1.3 processing the sound signal in order to determine whether there is a con-tact
with the ball by the first player, wherein the processing includes
comparing the sensed signal with a predetermined signal, which prede-termined
signal is the signal of a contact with the ball by a player;
1.4 if the processing determines that the ball is contacted by the first player,
generating a detection signal, [5] wherein the detection signal is gener-ated
when the ball is contacted by the first player;
1.5 supplying the detection signal to a signaling system; and
1.6 generating by the signaling system an observable signal to be observed
by a referee, in response to receipt of the detection signal.
Auxiliary Request 2 – Claim 8
8.1 System for detecting a contact with a ball by a first player in games and
sports, [1] for detecting an offside situation in a game of football (soc-cer),
the system comprising:
8.2 a detection signal generator comprising a sound sensing means (SM), in
particular a microphone, for sensing a sound signal produced by the ball
(Ba), [2] wherein the ball is a football, [3] and wherein the sound sens-ing
means (SM) is arranged in the ball;
8.2a [4] the detection signal generator also comprising an acceleration sens-ing
means for sensing an acceleration signal produced by the ball (Ba);
8.3 a sound processing means (PM) coupled to the sound sensing means
8.3.1 for processing a sound signal received from the sound sensing means in
order to determine whether there is a contact with the ball by the first
player, wherein the processing includes comparing the sensed signal with
a predetermined signal, which predetermined signal is the signal of a
contact with the ball by a player
8.4 The detection signal generator generating a detection signal if the sound
processing means determines that the ball is contacted by the first
player, [5] wherein the detection signal is generated when the ball is
contacted by the first player;
8.5 a detection signal transmission system (TM) for supplying the detection
signal from the detection signal generator to a signaling system;
8.6 an observable signal generator comprised in the signaling system for
generating, in response to receipt of the detection signal, an observable
signal to be observed by a referee.

10.5 Auxiliary request 3 has the following features:
Auxiliary Request 3 – Claim 1
1.1 Method for detecting a contact with a ball by a first player in games and
sports, [1] for detecting an offside situation in a game of football (soc-cer),
the method comprising:
1.2 sensing a sound signal produced by the ball (Ba), [2] wherein the ball is a
football, [3] and wherein the sound signal is sensed by a sound sensing
means arranged in the ball;
1.2a [4] sensing an acceleration signal produced by the ball (Ba); [6] wherein
the acceleration signal is sensed by a sensing means arranged in the
ball;
1.3 processing the sound signal in order to determine whether there is a con-tact
with the ball by the first player, wherein the processing includes
comparing the sensed signal with a predetermined signal, which prede-termined
signal is the signal of a contact with the ball by a player;
1.4 if the processing determines that the ball is contacted by the first player,
generating a detection signal, [5] wherein the detection signal is gener-ated
when the ball is contacted by the first player;
1.5 supplying the detection signal to a signaling system; and
1.6 generating by the signaling system an observable signal to be observed
by a referee, in response to receipt of the detection signal.
Auxiliary Request 3 – Claim 8
8.1 System for detecting a contact with a ball by a first player in games and
sports, [1] for detecting an offside situation in a game of football (soc-cer),
the system comprising:
8.2 a detection signal generator comprising a sound sensing means (SM), in
particular a microphone, for sensing a sound signal produced by the ball
(Ba), [2] wherein the ball is a football, [3] and wherein the sound sens-ing
means (SM) is arranged in the ball;
8.2a [4] the detection signal generator also comprising an acceleration sens-ing
means for sensing an acceleration signal produced by the ball (Ba);
[6] wherein the acceleration sensing means is arranged in the ball;
8.3 a sound processing means (PM) coupled to the sound sensing means
8.3.1 for processing a sound signal received from the sound sensing means in
order to determine whether there is a contact with the ball by the first
player, wherein the processing includes comparing the sensed signal with
a predetermined signal, which predetermined signal is the signal of a
contact with the ball by a player
8.4 The detection signal generator generating a detection signal if the sound
processing means determines that the ball is contacted by the first
player, [5] wherein the detection signal is generated when the ball is
contacted by the first player;
8.5 a detection signal transmission system (TM) for supplying the detection
signal from the detection signal generator to a signaling system;

8.6 an observable signal generator comprised in the signaling system for
generating, in response to receipt of the detection signal, an observable
signal to be observed by a referee.
Admission of Auxiliary Requests
10.6 Auxiliary requests 1-3 are allowable. After discussing the admissibility of
auxiliary requests 1 and 3 in the interim conference and after giving the
parties the opportunity to comment, the judge rapporteur decided by order
of 2 March 2025 to admit the subsequent applications to amend
(ORD_68879/2024). Reference is made to this order.
Auxiliary Request 1
Features added to claim 1
10.7 Amendment [1] of feature 1.1 (feature 1 of the main request)
10.8 Feature 1.1 is modified by adding feature [1] “… for detecting an offside
situation in a game of football (soccer)”
10.9 Amendments [2] and [3] of feature 1.2 (feature 1.1 of the main request)
10.10 Feature 1.2 is modified by adding
- feature [2] “… wherein the ball is a football” and
- feature [3] “and wherein the sound signal is sensed by a sound sensing
means arranged in the ball”
10.11 Amendment [5] of feature 1.4 (feature 1.3 of the main request)
10.12 Feature 1.4 is modified by adding feature [5] “wherein the detection signal
is generated when the ball is contacted by the first player”.
Lack of inventive step of the method of claim 1, starting from D3 (BE 10 15 552)
(“Penezy”)
10.13 Feature [1] (for detecting an offside situation in a game of football (soccer)
and feature [2] (“wherein the ball is a football”) are known from D3. The
title of D3 mentions ‘juste hors jeu” - offside. Further, figure 4 of D3 is a
sketch of an offside position in football. Thus, any combination of prior art
based on D3 includes feature [1] and [2].

10.14 Feature [3] (“and wherein the sound signal is sensed by a sound sensing
means arranged in the ball”) is known from D3. Page 1, lines 27-31 of D3
describe that the chip can be introduced inside the ball; this is also
illustrated in figures 1 and 2 of D3. Thus, any combination of prior art based
on D3 includes feature [3].
10.15 Feature [5] is known from D3. According to page 1, lines 14-16, the changes
in pressure which trigger a sound happen at the moment in which the ball
is contacted by the player whereby this contact leads to a change of
pressure and whereby the shock comes from the contact (‘kick’) by a player.
Thus, any combination of prior art based on D3 includes feature [5].
10.16 Thus, any combination of prior art based on D3 includes features [1], [2], [3]
and [5]. The object of claim 1 of the first auxiliary request cannot imply an
inventive step.
Features added to claim 8
10.17 Amendment [1] of feature 8.1 (feature 8 of the main request)
10.18 Feature 8.1 is modified by adding feature [1] “… for detecting an offside
situation in a game of football (soccer)”
10.19 Amendments [2] and [3] of feature 8.2 (feature 8.1.1 of the main request)
10.20 Feature 8.2 is modified by adding
- feature [2] “… wherein the ball is a football” and
- feature [3] “ and wherein the sound sensing means (SM) is arranged in the
ball”
10.21 Amendment [5] of feature 8.4 (feature 8.1.3 of the main request)
10.22 Feature 8.3 is modified by adding feature [5] “wherein the detection signal
is generated when the ball is contacted by the first player”.
Lack of inventive step of the system of claim 8, starting from D3 (BE 10 15 552)
(“Penezy”)
10.23 The features added to claim 8 in auxiliary request 1 are nearly identical to
the features added to claim 1 in auxiliary request 1. Therefore, the
considerations above, which related to claim 1 on inventive step apply
mutatis mutandis to claim 8 of auxiliary request 1. D3 discloses an offside
situation in a game of football (feature [1]) and also shows that the sound
sensing means are arranged in the football (features [2] and [3]). As
previously claimed, D3 also discloses feature [5] according to which the
detection signal is generated when the ball is contacted by the first player.
10.24 In sum, also auxiliary request 1 regarding claim 8 does not imply an
inventive step.
Auxiliary Request 2
Features added to claim 1
10.25 Amendments [1], [2], [3] and [5] of claim 1 of Auxiliary Request 1 are
reproduced in claim 1 of Auxiliary Request 2
10.26 Further Amendment [4] of feature 1.2a
10.27 Feature 1.2a is added with feature [4] “…sensing an acceleration signal
produced by the ball (Ba)”
Features added to claim 8
10.28 Amendments [1], [2], [3] and [5] of claim 8 of Auxiliary Request 1 are
reproduced in claim 8 of Auxiliary Request 2
10.29 Further Amendment [4] of feature 8.2a
10.30 Feature 8.2a is added with feature [4] “the detection signal generator also
comprising an acceleration sensing means for sensing an acceleration signal
produced by the ball (Ba))”
Inadmissible extension of Auxiliary Request 2
10.31 An amendment is regarded as introducing subject-matter which extends
beyond the content of the application as filed, and therefore unallowable,
if the overall change in the content of the application (whether by way of
addition, alteration or excision) results in the skilled person being presented
with information which is not directly and unambiguously derivable from
that previously presented by the application, even when account is taken of
matter which is implicit to a person skilled in the art. Any amendment can
only be made within the limits of what a skilled person would directly and
unambiguously derive, using common general knowledge, and seen
objectively and relative to the date of filing (or the priority date, where
appropriate), from the whole of the documents as filed (LD The Hague,
Order dated 19 June 2024 in UPC_CFI_131/2024, Abbott Diabetes
Care/Sibio Technology, page 12, mn 3.4; CD Paris, Decision dated 17 January
2025 in UPC_CFI_316 /2023, NJOY Netherlands B.V./Juul Labs International,
Inc., p. 22 mn 9.2).
10.32 The Patent cannot be upheld in the form of Auxiliary Request 2 if Auxiliary
Request 2 extends beyond the content of the European application as filed
(Exhibit BP9).
10.33 With regard to auxiliary request 2 (originally submitted as the only auxiliary
request in submission of 26 July 2024), in its submission of 27 September
2024 Claimant alleges extension of subject matter.
10.34 The precise wording used for Auxiliary Request 2 claim 1 and 8 in its flow of
words can as such not be found in the application.
10.35 Independent claim 1 according to the Auxiliary Request 2 leaves open where
and/or by what means “an acceleration signal produced by the ball” as per
feature [4] is sensed.
10.36 Similarly, independent claim 8 according to the Auxiliary Request 2 does not
specify where the detection signal generator and/or the acceleration
sensing means is located.
10.37 Hence, the independent claims 1 and 8 as per Auxiliary Request 2 cover
embodiments in which a sound signal produced by the ball “is sensed by a
sound sensing means arranged in the ball” as per feature [3], whereas “an
acceleration signal produced by the ball” as per feature [4] may be sensed
anywhere, i.e., also outside of the ball.
10.38 In contrast, the original disclosure requires that both the sound signal and
the acceleration signal are sensed inside the ball. The original application
documents only discloses an embodiment where both a sound signal as well
as an acceleration signal are sensed by a “sensing means” within a ball.
10.39 Auxiliary request 2 claims 1 and 8 of the Patent hence extend beyond the
content of the European application as filed and thus violate Art. 123(2) EPC.
The Patent cannot be maintained in form of Auxiliary Request 2 claim 1
and/or 8.

Auxiliary Request 3
Features added to claim 1
10.40 Amendments [1], [2], [3], [4] and [5] of claim 1 of Auxiliary Request 2 are
reproduced in claim 1 of Auxiliary Request 3
10.41 Further Amendment [6] of feature 1.2a of the second auxiliary request
10.42 Feature 1.2a is further modified by adding [6] “wherein the acceleration
signal is sensed by a sensing means arranged in the ball”.
Lack of inventive step of the method of claim 1 starting from D3 (BE 10 15 552)
(“Penezy”)
10.43 Features [4] and [6] are known from D3 page 1, line 15 (…puce programmée
pour détecter (…) le choc dû au contacte du joueur… »). This part of D3
discloses that the chip inserted into the football, as per feature [6], is
programmed to detect the shock stemming from the contact of the player,
as per feature [5]. Thus, any combination of prior art based on D3 includes
features [5] and [6].
10.44 Thus, any combination of prior art based on D3 includes features [1] to [6].
The object of claim 1 of the third auxiliary request cannot imply an inventive
step.
10.45 In addition the use of an accelerometer is also disclosed in D2 : page 7, line
7, and page 10, line 12.
Features added to claim 8
10.46 Amendments [1], [2], [3], [4] and [5] of claim 1 of Auxiliary Request 2 are
reproduced in claim 1 of Auxiliary Request 3
10.47 Further Amendment [6] of feature 8.2a of the second auxiliary request:
10.48 Feature 8.2a is further modified by adding [6] “wherein the acceleration
sensing means is arranged in the ball”.
Lack of inventive step of the system of claim 8, starting from D3 (BE 10 15 552)
(“Penezy”)

10.49 The features added to claim 1 in auxiliary request 3 are nearly identical to
the features added to claim 1 in auxiliary request 1. Therefore the
considerations above, which related to claim 1 on inventive step apply
mutatis mutandis to claim 8 of auxiliary request 1. D3 discloses an offside
situation in a game of football (feature [1]) also shows that the sound
sensing means are arranged the football (features [2] and [3]). As previously
claimed, D3 also discloses feature [5] according to which the detection
signal is generated when the ball is contacted by the first player. Moreover,
D3 discloses that an acceleration due to a shock with a player is sensed by
the chip embedded in the ball, as per features [4] and [6].
10.50 In sum, also auxiliary request 3 regarding claim 8 does not imply an
inventive step.
11 Costs
11.1 In accordance with Article 69 UPCA and since the Patent is revoked entirely,
the Defendant, as the unsuccessful party, has to bear the legal costs of the
Claimant.
12 Value of dispute
12.1 The assessment of the value of the dispute shall reflect the objective
interest pursued by the filing party at the time of filing the action. The
Guidelines for the determination of the court fees and the ceiling of
recoverable costs laid down in a decision of the Administrative Committee
for this purpose (hereinafter: “Guidelines”) may in particular be taken into
account. For proceedings where a fixed fee and a value-based fee are to be
paid as court fee (actions identified in R. 370(2) and (5) RoP), this is
stipulated in R370 (6) RoP. According to R152 (3) RoP R. 370(6) RoP is to be
applied likewise to proceeding with only a fixed fee (e.g. proceedings of R.
370(4) RoP).
12.2 To indicate the value in dispute in a singular revocation action, it is sufficient
to indicate in which band of the 10 bands indicated in annex of the
document “Scale of ceilings for recoverable costs” authored by the
Administrative Committee the value in dispute is considered to be.
12.3 In a revocation action, the court fee is a fixed fee (R370 (4) (a) ‘RoP’) and
the value in dispute is only needed to determine the ceiling for recoverable
costs.

12.4 The parties did not provide sufficient information that would allow the
calulation of a reasonable license fee as basis for determining the value of
the dispute (Sec. II.2.b)(2)(i) of the Guidelines. The Court uses as starting
point the value of the dispute as set out by the Hamburg Local Division
which sets the value to EUR 500,000.
12.5 According to Sec. II.2.b)(2)(ii) of the Guidelines, in the absence of relevant
information the value of the revocation counterclaim may be assumed as
being equal to the value of the infringement action plus up to 50%.
12.6 Claimant has not raised a revocation counterclaim but has lodged a
revocation action. However the general principle of the Guidelines is
applicable according to which, in the absence of relevant information, the
value of dispute of a revocation action is considerably higher than the value
of an infringement action to which the revocation action is linked and in
which the same patent is at issue.
12.7 The Court further takes into account that the proceedings before the
Hamburg Local Division only concerned preliminary measures. According to
Sec 5 (b) of the Guidelines, in case of the application for interim relief which
is not followed by an infringement action on the merits the value of an
application for interim relief for determining the level of the recoverable
costs should be calculated at 66% of the value of a lawsuit. From this the
Court derives the general principle that the value of the dispute in main
proceedings will be 1/3 higher than in interim relief proceedings.
12.8 On the other hand the Court takes into account that the current revocation
action has been initiated by one party only, whereas the proceedings before
the Hamburg Local Division only concerned preliminary measures were
directed against three defendants. This allows for a certain deduction.
12.9 Considering these factors in their entirety, the Court concludes that the bar
of EUR 500,000 is surpassed but the value of the dispute has not doubled.
Therefor the value of dispute is in the range between EUR 500,000 and up
to and including EUR 1,000,000.
13 Ceiling for recoverable costs
13.1 The Administrative Committee has published a Scale of ceilings for
recoverable costs depending on the value of the dispute. This Scale of
ceilings will be applied by the Court.
13.2 The Court decides that the value of the proceedings is up to and including
EUR 1,000,000 so that, according to the Scale of ceilings the ceiling for
recoverable costs in this case is EUR 112,000.

13.3
14 Reimbursement of security
14.1 The EUR 25,000 paid by Defendant as security shall be kept by the Court
until Defendant provides proof of payment of the reasonable litigation costs
to Claimant.

DECISION
Having heard the parties on all relevant aspects of the case, the Central Division:
1. revokes European patent n° EP 1 994 067 B1 with effect for Germany
and the Netherlands.
2. orders that the Registry shall send a copy of this decision to the
European Patent Office and to the national patent office of any
Contracting Member States concerned, after the deadline for appeal
has passed.
3. dismisses any further request made.
4. orders that the defendant bears the costs of the proceeding.
5. sets the value of the proceedings up to and including EUR 1,000,000.
6. orders that the EUR 25,000 paid by Defendant as security shall be kept
by the Court until Defendant provides proof of payment of the
reasonable litigation costs to Claimant.

Information about appeal
An appeal against the present Decision may be lodged at the Court of Appeal, by any
party which has been unsuccessful, in whole or in part, in its submissions, within two
months of the date of its notification (Art. 73(1) UPCA, Rule 220.1(a), 224.1(a) RoP).
Information about enforcement
Art. 82 UPCA, Art. 37(2) UPCA, Rule 118.8, 158.2, 354, 355.4 RoP.
An authentic copy of the enforceable decision will be issued by the Deputy-Registrar
upon request of the enforcing party, Rule 69 RegR.

Order details
Order no. ORD_69092/2024 in ACTION NUMBER: ACT_27358/2024
UPC number: UPC_CFI_230/2024
Action type: Revocation Action