In the meantime the proprietor changed its name, but the parties dispute remain the same.
Brief outline of the case
The Munich LD of the UPC had refused a PI based on EP 3 883 277. Decision UPC-CFI-292/2023 was commented on this blog.
The Munich LD 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 proprietor appealed the decision of the Munich LD.
The CoA confirmed the decision of the Munich LD and rejected again the PI.
For the CoA, the contested products are not within scope of protection of the patent.
The proprietor has to bear the cost of the litigation in first instance and in appeal. .
The CoA’s decision
Interpretation of claims according to Art 69 EPC and its Protocol on Interpretation.
The CoA did not agree with thie approach taken by the Munich LD. .
The key issues for the CoA are the following:
- The CoA proceeds from the following principles in accordance with Art. 69 EPC and the Protocol on its Interpretation.
- The patent claim is not only the starting point, but the decisive basis for determining the protective scope of the European patent.
- These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the 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.
When interpreting the claim under Art 69 and its protocol, the CoA came to the conclusion that the claim was not infringed by the allegedly counterfeiting products.
Application to the present instance
For the CoA, paragraph [0038] teaches that the antenna should not transmit and receive through the electromagnetic disturbances induced by the printed circuit board. Those electromagnetic disturbances are not limited to the outline of the printed circuit board.
A person skilled in the art will know, on the basis of their common general knowledge, that the mere presence of a printed circuit board in the vicinity of the antenna will have an adverse effect on the operation of the antenna (D. Ciudad, P. Cobos Arribas, P. Sanchez and C. Aroca, RFID in Metal Environments: An Overview on Low (LF) and Ultra Low (ULF) Frequency Systems, In: C. Turcu, Radio Frequency Identification Fundamentals and Applications, Design Methods and Solutions, 2010, Exhibit TW 41, §2.2.2).
This is because the metal parts of the printed circuit board will interfere with the magnetic field and cause not only a shielding effect but also a “detuning effect”, i.e. the metal will produce a drift of the working frequency. That detuning effect will also occur if the antenna and the printed circuit board are placed next to each other in the
same plane. The effect can be avoided or reduced by positioning the two elements on different sides of the case of the electronic label. For that reason, the claim should be interpreted to mean that the antenna is positioned more to the front of the electronic label than the printed circuit board.
The CoA further rejected the proprietors/appellant’s assertion that the patent at issue presents the position of the antenna in relation to the display screen as merely a preferred embodiment.
Comments
Common general knowledge
It is interesting to note that the CoA has mentioned a book which can be considered as representing coomin general knowledge. It does however not mean that the same view will be generally adopted by the UPC.
Interpretation of claims
It will thus have to be seen whether another LD, or the CD, will indulge with file prosecution history, but without saying so, as happened here, when it comes to interpreting a claim.
For the CoA, Art 69 EPC applies equally to the assessment of the infringement and the validity of a European patent.
By saying so, the CoA ignores the primacy of the claims as can be deduced from the cae law of the boards, even if some have been adopting the attitude of the German Federal Court (BGH) which always interprets the claim before deciding on infringement or validity.
According to the CoA, the rights of the patent proprietor in the designated Contracting States under Art. 64 EPC, should take into account the conditions for patentability under Art. 52 to 57 EPC.
The problem with this statement is that validity is to be assessed not only under Art 52 to 57 EPC , but Art 83 and 123(2) EPC also play a role.
Under Art 138(1) EPC the grounds for revocation of European patents are the same as the grounds of opposition, cf. Art 138(1,a-c) EPC with two further grounds:
- the protection conferred by the European patent has been extended, cf. Art 138(1,d) EPC;
- the proprietor of the European patent is not entitled under Art 60(1) EPC, cf. Art 138(1e) EPC.
The only point at which there is a relation with Art 69 EPC during prosecution before the EPO, is when the scope of protection has been extended and the amended patent infringes Art 123(3). This is a limited contact. The boards of appeal of the EPO have consistently held that Art 69 EPC falls primarily within the jurisdiction of national courts in post grant proceedings. It is only in recent times that some boards of appeal want Art 69 EPC to be used in prosecution before the EPO.
The UPC would like to see the EPO adopted its way of interpretation. This was apparently insisted upon by the Chair of the Second Chamber of the CoA in recent discussions.
This position disregards what the founders of the EPC have established, that is a granting system, with an influence on validity through oppositions.
In order to avoid national courts to adopt either the usually lenient position of German courts or the usually limiting litteral approach of British courts, Art 69 EPC and its Protocol on Interpretation have been devised. Those two legal rules apply when assessing the scope of protection, when it comes to infringement, but should not have an effect on the granting procedure.
The upcoming referral on the application of Art 69 EPC in procedures before the EPO becomes even more important.
Should Art 69 EPC and its Protocol make inroads in procedures before the EPO, all the body of case law of the EBA on N, identity of invention and added matter might become obsolete. For instance, when it comes to added matter, equivalents could be accepted, and yet in European procedure equivalents belong to IS and not N. The Protocol might mention equivalents in its Art 2, but equivalents have never been defined in the protocol. The proposal on an Art 3 of the protocol suggested by the EPO during the revision of 2000 has been rejected by
Comments
4 replies on “Decision UPC_CoA_1/2024 – Interpretation of claims by the CoA of the UPC -Confirmation of the refusal of a PI on patent EP 3 883 277”
Let us say that less than one in a hundred patents that are granted get litigated, in court. For the judges and the litigation community, however, they are the only patents in view, the only ones that “count”. The other 99% are not in their field of view at all.
It seems to me a matter of regret that the tiny litigation community gets to decide on the everyday matters of novelty and obviousness which Patent Offices address, in hundreds of thousands of cases, in a never-ending (one hopes) procession of filed patent applications.
One has the feeling that we are at the end of a Golden Era, when the specialist judges at the EPO laid down over a generation of time a jurisprudence of patentability which worked ever more efficiently, ever more fairly, with ever more legal certainty. The litigation community thrives on uncertainty and, it seems to me, is seizing the UPC opportunity, relishing the fun, the intellectual pleasure (and the attendant profit) of creating as much uncertainty as it can. The more voluminous the “file wrapper history”, for example, the more they rub their hands with joy, irrespective whether or not their business client has a deeper pocket than the one available to their adversary in litigation. The mind boggles at the number of conferences we are set to be offered, where litigators and UPC judges will be debating with each other, fawning over each other and generally patting each other on the back, at their flights of intellectual imagination and elegance as they busy themselves re-writing established EPC case law.
So, one supposes, let society decide, how to optimise the patent system, how to make it fair, how to help it to do its job of stimulating technological innovation (rather than shut down irksome new kids on the block). OK in theory, but in practice our elected representatives have no time to spare, to reach even a faint and fuzzy idea of what an optimal patent system looks like, so are the gullible victims of a lobby system which results in a patent system tailor-made to suit the interests of international mega-conglomerate industry. But perhaps that is best for us all, following the logic of “What’s good for General Motors is good for the USA”. Who knows?
Dear Max Drei,
I would allow myself to say that at best the patents ending on the market, be it for an entity or for an action, are the emerged part of the iceberg representing granted patents. The patents ending in litigation before a court are then the top of the iceberg of all patents actually ending on the market.
It is possible to regret that the tiny litigation community gets to decide on the everyday matters of novelty and obviousness which Patent Offices address, but that’s life.
I do however agree with you that the litigation community thrives on uncertainty and is seizing the UPC opportunity, of creating as much uncertainty as it can. I agree also that we have numerous conferences where litigators and UPC judges will be debating with each other, fawning over each other and generally patting each other on the back, at their flights of intellectual imagination and elegance as they busy themselves re-writing established EPC case law.
The case law of the EBA on novelty, added matter and identity of invention is crystal clear, This is certainly not to the liking of many litigators who would like to have those notions become much more fuzzy.
On the other hand, there is, in my opinion a fundamental difference. What is valid for infringement is not necessary what should prevail for grant and validity when both are separate. We should not forget that in the present European system we have a grant procedure dealt with at the EPO, and a post-grant procedure dealt with in front of national courts or now of the UPC.
It is clear that all the proponents of the UPC, e.g. Sir Robin Jacob, and recently a judge of the CoA of the UPC, want to impose the views of the UPC on the boards of appeal of the EPO.
The wolf will be introduced into the sheepfold, the day when, not so much Art 69 as such, but its protocol of interpretation will be is used in proceedings before the EPO. Then uncertainty will be complete. There is a long line of case of the boards of appeal that makes clear that Art 69 is for national courts, or now the UPC.
In view of the high number of legal members of the boards having studied in the German system, it is no surprise that the way applied by the German Federal Court (BGH) to first interpret the claims in the light of the description, the famous “Auslegung”, makes inroads in procedures before the EPO. If for instance, Art 123(2) is to to be applied under Art 69 and its protocol on interpretation will render the whole case law of the EBA on novelty, added matter and identity of invention obsolete.
I just hope that the boards of appeal will resist this pressure and the upcoming referral on Art 69 will clarify the matter. This depends however on the formulation of the questions and whether or not the EBA will rewrite those in order to be able to bring in a dynamic interpretation of the EPC.
In principle society at large should decide how to to optimise the patent system. This should be done by MPs, but as you say, they are the gullible victims of a lobby system which results in a patent system tailor-made to suit the interests of international mega-conglomerate industry. The way the UPCA has been pushed down the throat of all the parliaments having ratified the latter is a perfect illustration of the situation.
I am not convinced at all that is best for us all, “What’s good for the big industry is good for us”. This is the more so, since the rule of law has been trodden on at the UPC.
“By saying so, the CoA ignores the primacy of the claims as can be deduced from the cae law of the boards”.
I think that this is looking at things backwards. The “principle of the primacy of the claims” does not come out of thin air. It derives from Art 69(1) EPC … albeit via a strained interpretation of that article.
The question should therefore be: why should the UPC adopt such a strained interpretation of the EPC? In particular, why should they not interpret Art 69 EPC in accordance with its Protocol and the provisions of the VCLT?
It is also an interesting question whether the Boards of the EPO should do the same. However, that is a question for another day.
@ Doubting Thomas
I can agree with you that “the “principle of the primacy of the claims” does not come out of thin air. It [indeed] derives from Art 69(1) EPC … albeit via a strained interpretation of that article”.
That the UPC, like any national court can interpret Art 69 in accordance with its protocol of interpretation is not at all at stake. What is at stake is the systematic application of Art 69 suggested by some boards of appeal of the EPO in procedures before the EPO. In this respect, see my reply to Max Drei.
Up to now; I have not seen any decision of the UPC or of its Administrative Committee referring, even indirectly to the VCLT. Should they have done so, they would have realised that the interpretation of Art 7(2) UPCA by the presidium of the UPC and the amendment of Art 7(2) UPCA under Art 87(2) UPCA by creating the Milan Section is contrary to all the interpretation principles of the VCLT. It is simply ultra vires!
The last time I have seen a reference to the VCLT was in a paper of the Interim Committee and the explanatory note to the German parliament before the second ratification vote.