EP 2 137 782 B1 relates to a device (claim 1) and a method (claim 11) for converting light energy into electrical energy and/or hydrogen by using a living plant for converting light energy into a feedstock for a microbial fuel cell.
The infringing device
Brief outline of the case
The patent was granted by the EPO and no opposition was filed.
The proprietor filed for infringement at the LD The Hague CFI UPC.
The alleged infringer, Bioo, sold in The Netherlands a device which, according to the proprietor, infringed directly and indirectly, claim 11 of the patent.
Bioo filed a counterclaim for revocation of the patent, arguing that the patent was invalid for a series of reasons.
The LD-CFI decided that none of the objections against the validity of the patent were persuasive.
The LD-CFI held the patent infringed by equivalence and ordered to cease and desist with immediate effect from infringing directly and/or indirectly EP 2 137 782 B1.
The LD-CFI also ordered a specific wording for a letter to be sent to customers or to be published on the website of the infringer based on Art. 64 UPCA and Union law.
What is the patent about?
The teaching of the patent is to create a Microbial Fuel Cell (MPC) that is independent of externally furnished fuel. This is achieved by introducing a living plant into the system as a constant supplier of organic material to the reactor, thus creating a Plant-based-Microbial Fuel Cell (“P-MFC”).
The organic material, produced by the plant through photosynthesis, is used as feedstock to the fuel cell for the anodophilic micro-organisms in the reactor.
Interpretation of the claim
The LD-CFI referred to the Order of the CoA of 11.03.2024 in case CoA 335/2023, Nanostring/10 x Genomics, page 24.
The CoA also clarified
(i) that the principles for interpreting a patent claim apply equally to the assessment of the infringement and to the validity of a European patent and
(ii) that a patent must be interpreted from the point of view of the average person skilled in the art.
The LD-CFI added that prosecution file is generally not part of common general knowledge of the skilled person.
Skilled person
The LD-CFI defined the skilled person as to be an individual (or a team) with a scientific background (PhD) in biochemistry, electrochemistry, and possibly microbiology or environmental engineering and about 3 to 4 years of working experience in the technical field of microbial fuel cells.
The teaching from the description
The description teaches the skilled person that a ”feedstock” may, optionally, contain electron donor compounds, and preferably does.
The living plant is part of the process as generator/supplier of electron donor compounds. That the plant is part of the “reactor” follows from claim 11, because the anode compartment is taught to comprise a living plant and the anode compartment is in turn part of the reactor.
The feature “compartment”, means according the LD-CFI, that the anode and cathode should be positioned such that they are functionally separate to avoid short-circuiting. The skilled person knows the purpose of separation and understands that this can be achieved either by a membrane or by other means, such as e.g. soil, as found in the description.
Infringement
The LD-CFI held that the scope of protection in the case of infringement is assessed in two steps, applying Art. 69 EPC and the Protocol.
The first step evaluates ‘literal’ infringement of the features of the patent in view of the claim construction is evaluated. In a second step, if the patent is not judged to have been literally infringed, equivalence is assessed.
The LD-CFI held that the Bioo Panel literally applies all features of the claim except for the location of the plant and its roots, together with the micro-organisms, in the anode department. In the Bioo Panel the roots of the plant are in an upper compartment, whereas the anode, with the microorganism, and thus the anode compartment, is located at the bottom of the lower compartment.
To decide on infringement of claim 11 by equivalence, it needed to be established whether the setup of the Bioo Panel, with its two compartments, is equivalent to the method claimed which requires the plant and its roots to be in the anode compartment, with the microorganism.
The LD-CFI referred to Art 2 of the Protocol.
The test applied to the assessment of infringement by equivalence is based on the case law in various national jurisdictions.
The LD-CFI came to the conclusion that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative:
1) Technical equivalence: does the variation solve, essentially, the same problem that the patented invention solves and perform, essentially, the same function in this context?
2) Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
3) Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
4) Is the allegedly infringing product novel and inventive over the prior art?
Technical equivalence
The LD-CFI was convinced that organic material can travel from the upper compartment of the Bioo Panel into the lower compartment, where it reaches the anode and where the anodophilic microorganisms are present.
The set up of the Bioo Panel is thus considered technically equivalent to the teaching of the patent as the plant is part of the reactor and is a source of additional organic material for the battery. The plant in the Bioo Panel has the same function as in the claim and solves the same problem and does this in a similar way.
Fair protection for the patentee
The patent claims a new category of microbial fuel cells, by introducing a plant into the device/reactor and to obtain electricity from organic material originating from the photosynthesis by that plant and thus from light energy.
A fairly broad scope of protection is therefore in line with the contribution to the art.
Reasonable legal certainty
The requirement of legal certainty is met if the skilled person understands that the patent claim leaves room for equivalents.
The teaching of the patent is to add a plant to a an MFC to provide additional feedstock to make the MFC independent of externally provided feedstock. The skilled person will understand that the variation of the Bioo Panel is another way to obtain this result in a similar way.
Bioo Panel novel and inventive?
At the priority date, the Bioo Panel would have been novel and inventive over the prior art because of the introduction of a plant as part of the device as a supplier of additional fuel for the battery/reactor.
Comments
It is interesting to note that the infringement related to the method claim of EP 2 137 782 B1 and not to the device claim.
Definition of the skilled person
For the LD-CFI the skilled person has a PhD level of knowledge. This is in clear contrast with T 1832/14 according to which a doctoral thesis is not representative of common general knowledge.
Same criterion of interpretation for validity and infringement
Unless G 1/24 is issued, this view might be theoretically possible, but is presently not applicable at the EPO for lack of competence in infringement by the EPO.
If the EPO where to adopt this stance, it would mean that claiming non-disclosed equivalents would have to be accepted. The direct consequence is that non-disclosed equivalents could not represent any more added matter should they be claimed.
Conditions for infringement by equivalence
It will have to be seen whether the CoA upholds the four criteria set up by the LD-CFI.
Criteria 1, technical equivalence, seems the one that matters, and the other three criteria are variation around the same theme. Whether they are necessary remains to be seen.
Criteria 4 seems, at a glance, a kind of inversed “Gilette defence”.
Relations between proprietor and infringer
Bioo was a licensee of the proprietor, but ended the license agreement as it found that the method claimed 11 of the patent did not work.
Bioo came up with a different, allegedly improved, design with two compartments, see EP 20382828 = EP 3 972 021 A1. This application is deemed withdrawn for non-payment of the examination and renewal fee.
Claiming the priority of EP 20382828, a new application was filed under the PCT, published as WO/2022/058500 A1 = EP 4 214 785 A1. This application should proceed to grant.
WO 500’ was mentioned a few times in the decision, but also EP 20382828
UPC_CFI_239/2023 App_549536/2023 CC_588768/2023
Comments
2 replies on “UPC LD The Hague – Infringement by equivalence of EP 2 137 782 B1”
So, if I see it right, the emerging jurisprudence of the UPC tells us that i) the scope of protection given by a claim is one thing, whereas the “meaning” of that claim is quite another, ii) that meaning is the same, whether for literal infringement or for novelty iii) the EPO Gold Standard lives iv) but NOT the mantra that if what infringes comes instead before, then by definition it prejudices novelty, that mantra being now dead and buried v) national law doctrines that are a “squeeze” between validity and infringement, variously dubbed “Formstein” or “Gillette”, are being adopted by the UPC?
Long ago, the UK Supreme Court explained that to divine the meaning of a claim one must ask oneself “What was the patentee using the language of the claim to mean (to the skilled rechnical reader”. Is not the UPC now on the same track?
What’s not to like, in all of this?
Max, I must congratulate you on summarising very concisely points that I have struggled to convey in comments on a different post. With regard to the “meaning” of the claim, I would instead term that the “normal” claim scope. I agree that this should be determined by reference to both cgk and the description / drawings – though good luck persuading Mr Thomas on this point!