Subject-matter of the decision UPC-CFI-292/2023 is patent EP 3 883 277.
The patent relates to an electronic label for sales area. Its aim is to provide a means of providing a consumer with spatially localized information, depending on the location and context in which the consumer is located, which is complementary to the information already visually available in a sales area.
Brief outline of the case
The proprietor, SES-imagotag SA, requested (in UPC wording the “application”) a PI against Hanshow Technology Co. Ltd. Et al. The proprietor claimed that EP 3 883 277 is directly infringed by the defendants.
On 28.04.2023, the patent was opted out under Art 83(3) UPCA. This opt-out was rescinded on 29.08.2023 under Art 83(4) UPCA, after mention of the grant on 09.08.2023 in Bulletin 2023/32.
The request for unitary effect has been registered as of 01.09.2023.
The request=application for PI has been rejected by the Munich Local Division of the UPC. The complainant has to bear the costs of the decision.
The case is interesting in view of the interpretation of the claims given by the local division of the UPC.
Technical issue at stake
The technical issue at stake was the relative arrangement of a printed circuit board (PCB) and of an antenna within the electronic label.
According to claim 1 as granted
- a printed circuit board (35) is housed in the case on the side of the back of the case of the electronic label
- the antenna (38) of the radio frequency device being disposed on or in the housing on the side of the front of the electronic label, i.e. in vicinity of the display.
The proprietor’s point of view
In accordance with claim 1, the PCB is located on the back of the electronic label, which, however, does not mean that the PCB has to be directly or in contact with it.
The proprietor argued that the skilled person understands the patent claim to mean that the antenna should be located in the front area of the label (but not necessarily in front of the display screen) in order to enable a reliable data connection with a mobile terminal.
It was sufficient for the antenna to be located between the printed circuit and the display screen.
The defendant’s point of view
The defendants argued that the wording of the claim clearly required the PCB to be technically and functionally aligned with the rear side of the housing.
The concretisation of the positioning of the antenna (on the side of the front surface) should not be defined as any position in the – not further defined – front area, but should be understood that the intended optimisation of the radio link to the front is achieved.
This excludes a position of the antenna behind components such as the display screen in particular, which could cause shielding and interference and thus prevent the intended optimisation of the transmission and reception performance.
The interpretation of the claims by the Munich local division
The Munich local division was thus confronted with the task to decide which interpretation was to be valid.
For the local division, it appeared essential for the skilled person’s understanding that according to paragraph [0038] the patent, the antenna should not be positioned behind the display screen.
Furthermore, the spatial arrangement of the PCB with the electronic chip on the one hand and the antenna on the other, as discussed by the parties, should not be considered separately but in context.
The Munich local division held that the original claims of a European patent application may be taken into account when interpreting the claims as granted. The amendments made during the grant procedure play a role in this interpretation.
The original version of the claim had already established a direct connection between the chip arranged on the PCB and the antenna. It was formulated there that the chip arranged on the PCB and the antenna should be spaced apart from each other (“…à distance de…”). Technical purpose of the distance provided in spatial terms was to limit interference.
According to the wording of the granted claim, the antenna and the PCB are thus to be, so to speak, arranged diametrically from each other. The PCB should be arranged in the housing on the side of the rear surface of the housing and the antenna on or in the housing on the side of the front surface of the electronic label.
In the allegedly counterfeiting devices the antenna is manifestly positioned near the rear side of the electronic label and behind the display. A potential infringement is thus not discernible and the request for PI was rejected.
Comments
The conclusions of the local division can be followed from a technical point of view. in the patent as granted, the antenna cannot be placed behind the display. The description is very clear in this respect.
Legal basis of the interpretation of the claims
What is surprising is that the local division did not use Art 69 as legal basis for interpreting the claim and its scope of protection, but rather the file history.
This is a rather infrequent way of interpretation , not to say quasi unknown until now in Europe, and the Munich local division was quite innovative in this respect.
It will have to be seen whether this decision will be appealed and what the legal basis of claim interpretation will be used by the Court of Appeal of the UPC.
The Court of Appeal of the UPC will probably have hard job in unifying various tendencies of clam interpretation or of interpretation of the EPC which might emerge from various divisions. The VCLT should be applied in last resort. This is also done at times by the EBA.
It should not be left to local divisions to dispense with the normal rules of interpretation of claims or of the EPC, and certainly not allow developing rules which might please one or the other head of a local division.
Further procedures ongoing
A look in the European patent register shows that, following the request for a PI at the Munich local division, the patent has been opposed by Hanshow, requesting revocation in totality.
In its opposition, Hanshow mentions the request for PI before the Munich local division of the UPC. The proprietor has not yet replied.
Hanshow has also filed a claimed for nullity before the UPC on 06.10.2023 (UPC_CFI_360/2023; ACT_578871/2023).
It will be interesting to see the outcome of the opposition before the EPO and of the nullity action before the UPC, and especially which legal basis will be used in interpreting the claims. Will there be bifurcation at the UPC?
The Court of Appeal of the UPC will probably have hard job in unifying various tendencies of clam interpretation or of interpretation of the EPC which might emerge from various first instance divisions. The VCLT should be applied in last resort. This is regularly done by the EBA.
It should not be left to local divisions to dispense with the normal rules of interpretation of claims or of the EPC, and certainly not allow the development of rules which might please one or the other head of a local division.
A fundamental problem with an opt-out followed by an opt-in
When a European patent is opted out, a potential infringer can only be expected to be held liable before a national court in a member state of the EPC.
Once the opt-out is rescinded, a potential infringer might be confronted with a totally different situation. The potential infringer may be brought before a court with a much greater territorial jurisdiction and much higher costs, all this at the whim of a proprietor.
One could consider this change, opt-out and later opt-in, equivalent to a retroactive application of the UPCA. It is not sure that this is an agreement with the postulate of non-retroactivity of legal texts. This is a question which has never been discussed during the ratification process in the different national parliaments.
In a publication on the present blog, I mentioned further legal problems facing the UPCA following the “withdrawal” of the UK.
The present decision having been taken by a statutory division of the UPC, this decision is not at stake.
The question will however occur once a decision has been taken by the Paris or Munich local section of the Central Division, and later by the Milan local section of the Central Division. Where is it possible and acceptable that the Presidium of a Court decide to blatantly deviate from the clear wording of an international treaty having created the same court? In my opinion, the Administrative Committee of the UPC has also blatantly misused Art 87(2) UPCA.
In a more recent publication on the present blog, I compared oppositions at the EPO with nullity actions before the UPC. A further procedural problem was also brought forward.
I
Comments
11 replies on “Decision UPC-CFI-292/2023 – PI on patent EP 3 883 277 refused”
I agree it is surprising that the decision does not refer to Art 69 EPC. But I would say it is implicit, the issue before the court is clearly to determine the extent of protection of the patent.
As to the influence of the prosecution history, there has not been a consensus between European courts. Some have excluded it for the reason that it is not explicit in Art 69, others such as the French courts agree to take it into account when the claims have been amended to overcome the prior art (which is the case in the SES patent). This is also the position of AIPPI in the 2023 Q284 resolution on the assessment of equivalents.
It is noteworthy that the German case law is reluctant to consider the prosecution history doctrine, as explained in the Q284 report of the German AIPPI Group. The panel of the UPC Munich Local Court for the case included leading German judges : Matthias Zigann (former Presiding Judge of the Higher Regional Court in Munich) and Tobias Pilchmaier (former Presiding Judge of the District Court in Munich). It appears that in their decision, they have clearly departed from the German doctrine and asserted their independence vis-à-vis their national tradition.
Dear Mr Hagel,
I thank you for your comments.
It happens that the third legal member of the panel was from the Netherlands. From what I read in IPKat, it is not uncommon in the Netherlands to use the file history in order to interpret a claim.
I would rather see here the reason for taking into account file history.
The two German legal members might have clearly departed from the German doctrine and asserted their independence vis-à-vis their national tradition. I am not sure that they wanted to assert their independence, I would rather think that they tried something to get more cases to the Munich LD.
In any case, the case law of the UPC will eventually be decided by the Court of Appeal of the UPC and only then, we will know whether Art 69 can be ignored an replaced by file history.
I am of the opinion that it is not the role of a local panel to take over some national practice from another contracting state of the UPCA, the more so since it represent a practice which is not common in most of the European jurisdictions.
After all Art 69 and its protocol are there for good reasons. Blatantly ignoring Art 69 is not what should be expected from a local division.
Relying on file history and setting aside Art 69 might be acceptable at national level, but not at a supranational court and certainly not at the beginning of its working.
Dear Mr Thomas,
I think your suspicion that the Munich LD’s decision is aimed at drumming up business is not founded. The German courts’ reluctance to consider the file history reflects their patentee-friendly attitude, the consideration of the file history being seen as patentee-unfriendly. If the objective was to attract more cases, the Munich LD’ reliance on the file history would be utterly counter-productive since the choice of the forum belongs to the patentee.
In addition, there is no need for the Munich LD to increase its docket, which is quite sizable. As explained by Miquel Montaña in his post published on the Kluwer patent blog, as of December 11 2023 the Munich LD alone was entrusted with one half of the 78 outstanding UPC cases, the Hamburg LD with 7 cases and the Düsseldorf LD with 6 cases. The comment on this post authored by « C. « sheds light on the reasons why German judges are in high regard.
That being said, I would have preferred the choice of the Paris LD. This choice would have made sense since the patentee (SES) is a French company and the defendant Hanshow a Chinese company, and the patent is in the French language.
As to the elements used by the court in the interpretation of the claims, I note that they were not limited to the original claims and the claim amendments. The description of the patent was also cited by the court (para [0007] ff ; Figure 3 and para [0018 ; para [0035] three times).
Let us wait now for the outcome of the appeal case and of the related pending cases, revocation before the UPC and opposition before the EPO.
It needs to be remembered that this is a PI case, not a full decision on the facts. Accordingly, it is quite reasonable to apply a claim interpretation taking into account the file history as this indicates that the EPO considered claims having that meaning to be patentable. Whether the claims can be interpreted to have another meaning which does not affect the patentability is for the court in the full hearing to decide upon.
Dear Kant,
Thanks for your comments.
I agree with you that it was only a PI and we do not yet know what the final outcome will be after the nullity action at the UPC and the opposition at the EPO.
As far as the validity of patents granted by the EPO is concerned and the rate of decisions of ODs set aside by the boards of appeal, some reasonable doubts are permitted about the validity of the patent. I refer to a recent publication of mine on this blog.
As far as the procedure be fore the EPO is concerned, the original claims were relating to a communication process between a terminal and an electronic label and have been amended to an electronic label as such. Following some amendments suggested by the examiner in charge, the patent EP3883277 was granted. The proprietor assumed that the search was also carried out for an electronic label, but nothing is less certain.
Needless to say that the opponent has brought up Art 100(a) and Art 100(c) as grounds of opposition, as well as a lot of prior art not found in the original search report.
It will be interesting to see the outcome of the opposition and nullity actions.
Interesting, Daniel? That’s for sure. It seems that patent litigation in Europe is going through a paradym change, where “early mover” cases will shape the jurisprudence for everybody following. Not only is there a race to be first amongst the litigating parties but also a race between jurisdictions and a race between judges. We are all in for a bracing but bumpy ride, I suspect, in which it is not just blockbuster drugs but also humble little labels on bags of sweets, crisps or other retail product items which will be the subject matter fought over, pan-European.
Dear MaxDrei,
I agree, except the humble little bags you refer to have become pervasive and this has grown into a big market.
I am no expert in this field but it seems the defendant, a Chinese group, is the giant of the sector, much bigger than the French plaintiff. The PI request before the UPC was perhaps a way for the patentee to force the defendant to settle by way of a wordwide license agreement. I note in this respect that the patent in suit has equivalents in many countries incl. the US. This makes sense if the French patentee is not present in markets outside Europe.
You know Clausewitz’s principle : war is merely the continuation of policy by other means. In our area, this can be transposed as : litigation is merely the continuation of business by other means. A court action exerts pressure on the defendant by creating business uncertainties and risks, it gives the plaintiff a bargaining power (assuming the threat is credible). It may withdraw the request for some commercial consideration such as a license or cross-license agreement.
Dear Max Drei,
Thanks for your comments.
I agree with you that litigation might change in Europe, but it is too early to be sure that we have a change of paradigm. It will all depend on the way the UPC will act. We are in a running up phase, and we will have to see how it develops.
There might be a kind of race between parties , jurisdictions and judges at least in the beginning. On the other hand, I think that the Court of Appeal will have quite a job to try to unify what will come out of first instance divisions.
It will take quite a while to see a blockbuster drug ending before the UPC, the risk is too high that the result might not be what is wished.
The cost aspect will also play a role when it boils down to “humble little labels on bags of sweets, crisps or other retail product items”. The legal problems created by the Brexit have been swept under the carpet and this might backfire.
It is to be hoped that we do not have too many contradicting decisions on validity between the UPC and the EPO and the BA/EBA. The success of the UPC also depends to a large extent on the robustness of the patents granted by the EPO. When looking at the result of appeals after opposition, see my recent publication, this is not really acquired. A few year ago, I would have taken a different position.
Last but not least, it should not be forgotten that, at the end of the day, the granting authority is subject to the EPC and its interpretation by the BA/EBA. That the EBA takes into account national case law is not at stake. I am however not certain at all that the BA/EBA will follow the, yet to create, caselaw of the UPC. Jurisdictions ae too independent from each other for one to follow another.
Somebody like Sir Robin Jacob would like to see the EPO and its BA/EBA following the caselaw of the UPC. In a recent discussion on the relation between the UPC and the EPO, also commented on my blog, the chair of the legal board of appeal firmly resisted to give an answer. The only answer Sir Robin Jacob got was: it depends!
Dear Mr Hagel,
We will not haggle whether the Munich LD wants to increase its docket or not.
As the Munich LD quoted part of the description why did it then not come up with Art 69 EPC and came up with a way of interpretation which is rather uncommon and mainly applied in The Netherlands? As there are no gratuitous acts in life, the Munich LD must have had its reasons. There is nothing more to add on this topic.
The UPC allows forum shopping and the plaintiff went to the LD were it apparently thought it could get the best treatment. As we can see, it was not successful.
One reason for choosing the Munich LD is probably to be seen in the fact that the representative of the plaintiff is working for the Munich branch of a large firm of lawyers and patent attorneys heaving its seat in the US. That a French company, with a EP granted in French, chooses a German lawyer based in Munich to defend its case before the Munich LD is certainly not pure coincidence. This conclusion can be drawn from the opposition file in which the opponent/EPO=defendant/UPC filed a copy of the request for a PI.
The French company must have had good reasons to act as it did. The proprietor could easily have stayed with the French firm which represented it before the EPO. This is the more so since this firm entered a partnership with a well-known French lawyer’s firm specialised in litigation.
I can however agree with you that it is best to wait “for the outcome of the appeal case and of the related pending cases, revocation before the UPC and opposition before the EPO”.
Dear Mr Thomas,
There is an obvious reason for a French patentee to bring the case before the Munich LD, it is the German courts’ reputation of being patentee-friendly. As to the connection between the French firm which had handled the prosecution before the EPO and a Munich-based firm, please keep in mind that patentees are free to hire an attorney for the court proceedings independent from the firm having handled the EPO proceedings. There may be good reasons for such a choice.
In the present case, this backfired on the patentee because the Munich LD’s decision departs from the German doctrine. I understand this could come as an unpleasant surprise to German firms. I expect there to be many more surprises in the future UPC decisions – and many opportunities for you to report and comments in your blog. Don’t you look forward to that ?
Dear Mr Hagel,
I am too long in the business for not knowing that German court are, in principle, patent friendly. Some users of the patent system even nickname the German Federal Court (BGH) as the “patent repair shop”. It is not pure hazard that the highest number of cases before the UPC are presently with German LDs.
From my contacts in the profession, it seems however that certain chambers (Senate) of the German Federal Patent Court have become much tougher. There is still the corrective of the BGH, but there is apparently a tougher stance at this level.
That a proprietor is free to choose its representative depending on the forum, has also not escaped my attention. In opposition, I often saw that the proprietor changed its representative, or when it came to OP, a representative much better versed in OP appeared on the day. The same can be observed when it goes to appeal.
When you look at the case at hand, I found it personally quite daring to have seeked a PI. Independently from the way the claim has actually been interpreted, when you compare the alleged infringing product and the description + the granted claims, the difference is immediately apparent. Just look at the photograph in the decision of the Munich LD and the figure of the patent in the same.
I am certainly looking forward to looking at decisions of the UPC, especially in matters of validity. It will be interesting to see possible differences with the case law of the BA/EBA. There are presently too few decisions in first instance on the validity of the patents used in procedures before the UPC. Real caselaw will start with decisions of the Court of Appeal, as only then it will be possible to see what is the real state of affairs. It is to be hoped for the users of the system that we do not end up with too many divergent decisions on validity.