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 This opt-out was rescinded on 29.08.2023 under Art 83(4) UPCA, after mention of the grant on 09.08.2023 in Bulletin 2023/32.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  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.
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.