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Etikettenschwindel? – How patent claims are to be interpreted at the Unified Patent Court
(Article written by Dr. Thomas Rössler, LL.M.)
15.06.2024
The Court of Appeal of the Unified Patent Court (UPC) has in a recent order regarding a very interesting case provided helpful guidance on how to properly interpret patent claims at the UPC. These guidelines will apply to infringement lawsuits, as in the case at hand, but also in the same way to patent validity issues (SES ./. Hanshow, UPC_CoA_1/2024, APL_8/2024; see also prior order in 10x Genomics ./. Nanostring Technologies, UPC_CoA_335/2023, App_576355/2023).
SES were seeking a preliminary injunctive relief against Hanshow before the Local Division Munich of the UPC.
The claimed invention relates to a programmable electronic shelf label with a communication interface, in particular to the arrangement of components (antenna, other components such PCB) with respect to each other within the container structure. The arrangement was supposed to reduce interference of the structure with the signals and hence enable an improved communication.
In a nutshell, according to the invention, the antenna (38) is supposed to be – when claims are interpreted by the skilled person – located further to the front than the PCB (35).
rear view of the device
In the case at hand, it was decided that the patent claims seem not to be infringed when interpreted properly and applied to the allegedly infringing product. The antenna (integrated into the orange foil on its back) cannot be seen as „further to the front/screen“ than the PCB (upper right corner). This is even more true since the foil is pressed towards the back when the device casing is closed.
The PCB and the antenna are hence rather arranged next to each other: therefore, no infringement could be asserted, according to the order of the Court.
source: LD Munich (First Instance), UPC_CFI_292/2023
Background
The Unified Patent Court is a new court system in Europe that has been inaugurated only a year ago in 2023. Given that this new court system geographically unifies several countries, all of which have their own jurisprudence and legal tradition in patent matters, we are awaiting with great excitement the Court’s decisions that will be shaping and guiding the way in the future.
This is particularly true for certain questions of fundamental importance.
Prior decisions of the UPC Local Divisions created some unclarity whether the history of the patent during its grant procedure, including the originally filed claim wording on the one hand as well as successive amendments, can play a vital role in the patent claim interpretation („prosecution history estoppel“ or „file wrapper estoppel“).
However, neither „the patent prosecution history“ nor its prohibition do appear on the list of guidelines provided by the UPC Court of Appeal.
The question is not only of fundamental importance for the future of the Court, but likewise a question where different member states come from different traditions: for example, in Germany such prosecution history based claim interpretation is not allowed, whilst it is frequently employed e.g. in the Netherlands.
In the case at hand, the Court of First Instance (LD Munich) had used the original claim wording as an aid to claim construction (UPC_CFI_292/2023, see also Headnote 1). In the original claim wording, the idea that the PCB and the antenna should remain at a distance with respect to each other, had been explicitly expressed („… (37) à distance de l’antenne (38) …“).
The final answer (yes or no) of the UPC system to this idea of prosecution history based claim interpretation hence still remains open.
This case also demonstrated again the truly international dimension of the new Unified Patent Court system. The case concerned a European Patent with Unitary Effect (EPUE), a patent title that is valid in a plethora of EU countries at the same time. Patent applicants and proprietors can benefit from both simplicity as well as strategic advantages when enforcing their inventions. The patent in question was a European Patent that was granted by the European Patent Office in French language (Fascicule de brevet européen) – and yet to be enforced before one of the Local Divisions of the UPC in Munich, Germany.
The generic criteria of the Court on patent claim interpretation are enumerated here (see decision):
„i. The UPC Court of Appeal proceeds from the following principles in accordance with Art. 69 of the Convention on the Grant of European Patents (EPC) and the Protocol on its interpretation.
ii. The patent claim is not only the starting point, but the relevant basis for determining the scope of protection of a European patent.
iii. The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense. Rather, the description and the drawings must always be taken into account as explanatory aids for the interpretation of the patent claim and not only be used to eliminate any ambiguities in the patent claim.
iv. 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 the drawings, appears to be the patentee’s request for protection.
v. The patent claim must be interpreted from the perspective of the person skilled in the art.
vi. In applying these principles, adequate protection for the patent proprietor should be combined with sufficient legal certainty for third parties.
vii. These principles for the interpretation of a patent claim apply equally to the assessment of infringement and the legal validity of a European patent. This follows from the function of the patent claims which, under the European Patent Convention, serve to define the scope of protection of the patent under Art. 69 EPC and thus the rights of the patent proprietor in the designated Contracting States under Art. 64 EPC, taking into account the conditions for patentability under Art. 52 to 57 EPC.“
Comment
Courts generally tend to not say much more than they have to in order to decide a case. The UPC Court of Appeal does apparently not seem to be an exception to this rule. The nonnecessity to answer this question in the present case is brought up; no obiter dictum indicates if bringing up prosecution history based arguments should be estopped or not. Hence, for a definitive answer with respect to the question of file wrapper estoppel we will likely have to wait for appeal proceedings where this question will be the crucial central point that will steer the outcome in one direction or another.
European Patent Attorney
European Patent Litigator (Representative before the UPC)
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