EP 3 388 490 B1 relates to decorating natural leather. It has not been opposed at the EPO.
Brief outline of the case
The proprietor, Agfa NV, sued for infringement of EP 3 388 490 B1 by a group of companies all belonging to the Gucci group before the LD Hamburg of the UPC.
Gucci requested to dismiss the infringement action and filed a counterclaim for revocation.
The LD Hamburg came to the following decision, UPC_CFI_278/2023:
I. The infringement action is dismissed.
II. The counterclaim for revocation is dismissed.
III. Agfa shall bear 40% and the Gucci shall bear 60% of the costs of the proceedings.
IV. The value of the proceedings is set in total at € 2.500.000, of which € 1 Mio is attributable to the infringement action and € 1.5 Mio to the counterclaim for revocation.
The case is interesting in that the LD Hamburg found that parts of the description in the patent were not any longer in accordance with the claimed subject-matter.
The disputed facts between the parties
The parties disagreed on the interpretation of the feature “achromatic colour different from black” of the base coat in the independent claims 1 and 10.
According to para [0021] of the description, white, grey and black were achromatic colours and achromatic colours had no dominant hue, meaning that all wavelengths would be present in approximately equal amounts.
Such a colour might be obtained, e.g. through the use of a white pigment such as titanium dioxide, but also by adding additional pigments for slightly altering the colour of the base coat.
Agfa’s point of view
Agfa was of the opinion that adding a small amount of chromatic pigment to a large amount of achromatic pigment would generally still result in an achromatic base coat. It argued that the patent did not only seek protection for “perfect” achromatic colours or indistinguishable variants thereof.
Rather, the patent also sought protection for base coats with a small amount of chromatic pigments, which include off-white or ivory white colour. Agfa relied, in particular, on para [0029] and example 3 of the patent.
Gucci’s point of view
Gucci interpreted para [0021] of the patent in a way that it would teach that a colour is achromatic within the meaning of the patent if it had a flat spectral response or, if the spectral response was not perfectly flat, if the deviations from the perfectly flat spectrum were such that the difference between the colour in question and the nearest reference achromatic colour with a perfectly flat spectrum line would not be perceptible to the average observer.
The LD’s interpretation of the claim
As a starting point the LD had to decide whether the term “achromatic” referred to the pigment or the base coat as a whole. The LD came to the conclusion that the base coat as a whole had to have an achromatic colour which ought to be different from black.
The Court construed the feature “achromatic” according to the definition given in the description in para. [0021] of the patent, based on the principle that a patent may be used as its “own lexicon” (for instance, UPC_CFI_14/2023, 16.07.2024, CD Munich, Regeneron v Amgen).
The LD noted that in reply to the search opinion, Agfa deleted “chromatic colour” from the wording of original claim 1, in order to overcome an objection of lack of N based on US 2010/233441.
One important question was then whether an ivory base coat could be considered achromatic. Such a base coat was disclosed in para [0029]
According to para [0029], the base coat contains both a pigment for providing a chromatic colour and a pigment for providing an achromatic colour different from black. For example, one could compose a base coat containing a white pigment and one or more colour pigments to provide e.g. an off-white or a pale clay colour, i.e. an ivory base coat.
Example 3, para [0170] to [0178], disclosed a method for decorating natural leather with a decorative image according to the invention wherein the base coat contains a pigment providing a chromatic colour to the base coat applied on a chrome tanned ’wet blue’ leather.
The LD held that in view of the definition of achromatic given in para. [0021], para [0029] and Example 3 were not any longer falling within the scope of the granted claim.
For the LD Hamburg, an “achromatic colour different from black”, meant a colour with no dominant hue, where all wavelengths were present in approximately equal amounts, i.e. white or grey.
Base coats with even a chromatic tinge, ivory, pale clay, were excluded from the claim scope.
The LD held that specifications in the description that are not consistent with the granted claims cannot
serve as a basis of a broad interpretation of a claim.
Comments
The present case before the UPC illustrates the necessity of adapting the description to bring it in alignment with the claimed subject-matter. Para [0029] and Example 3, disclose a base coat having a definite hue, and hence do not correspond to the definition of achromatic given in para [0021].
When specifications in the description that are not consistent with the granted claims cannot
serve as a basis of a broad interpretation of a claim, it implies directly and unambiguously that the description has to be aligned with the claims. This simplifies the work of any post-grant judicial authority having to decide on validity and/or infringement.
This does however not mean that para [0029] and Example 3 should have been deleted, they should at least having been marked as defining embodiments not falling under the claims as granted.
Following the filing of amended claims, in which chromatic was deleted in original claim 1, the ED proceeded directly to grant. The ED never checked whether claim 1 as granted would be supported by the description as originally filed.
One could also consider that Agfa wanted to build a kind of Angora cat. Although the granted claim was limited to achromatic base coats, it still wanted to claim that some chromatic pigment could still be present in the base coat.
This case before the UPC shows that it is important for the EPO to ensure that, at grant, description and claims are aligned on one another.
We will have to wait for the publication of G 1/24, to see whether at the EPO, the patent can be its own lexicon.
Acknowledgement
My thanks go to Mr Schilling, LQJ at the Hamburg LD, judge-rapporteur in the Agfa/Gucci case. My attention was drawn to this case during a seminar organised on 05.06.2025 by CEIPI for the two years of the UPC. His presentation was about claim construction, inventive step and added subject-matter.
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