In a first for the UPC, a ruling by the Hague Local Division has found infringement of a European patent claim by way of equivalence. The decision offers the first indications of how the UPC may implement a so-called doctrine of equivalents when dealing with the question of infringement.
Background
A “doctrine of equivalents” is an established principle found in many patent systems which aims to strike a fair balance between ensuring legal certainty for third parties while providing just protection for the patentee. In short, it dictates that a product or process which does not fall within the literal interpretation of a claim may still infringe if the product or process is an immaterial variant of the claimed invention.
For European patents, legal basis for the consideration of equivalents is provided by Article 2 of the Protocol on the Interpretation of Article 69 EPC, which states: “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims”. National courts of the EPC contracting states have adopted myriad tests for applying a doctrine of equivalents.
In the recent UPC decision discussed here - Plant-e v Arkyne Technologies - the Hague local Division adopted a four-point test derived from Dutch case law to arrive at a decision of infringement by way equivalence.
The Case
The patent at issue, EP2137782, relates to devices and methods for converting light energy into electrical energy and/or hydrogen. Specifically, the invention related to a “Microbial Fuel Cell (MFC)”, a device which typically utilises a microorganism to oxidise organic electron donor compounds for supplying electrons to an anode. Typically, MFCs require a supply of additional organic material to maintain the generation of electricity, a process often involving CO2 emissions. The claimed invention, however, offered a more sustainable solution by incorporating a living plant or part thereof into the device as a supplier of organic material.
The decision focused on claim 11, an independent method claim, which recited the following:
11. [A] method for converting light energy into electrical energy and/or hydrogen, wherein a feedstock is introduced into a device that comprises a reactor, where the reactor comprises an anode compartment and a cathode compartment and wherein the anode compartment comprises a) an anodophilic micro- organism capable of oxidizing an electron donor compound, and b) a living plant or part thereof, capable of converting light energy by means of photosynthesis into the electron donor compound, wherein the microorganism lives around the root zone of the plant or part thereof.
Notably, claim 11 requires the specified living plant or part thereof to be comprised within the anode compartment. The question of infringement hinged on this particular feature.
When considering a literal interpretation of the claim, the court held that Arkyne’s method did not fall literally within the scope of the claim because the plant and roots comprised within their device were separated from the anode compartment by a filter.
Subsequently, however, the court decided to assess infringement on the basis of a doctrine of equivalents via a four-point test to determine whether Arkyne infringed by way of equivalence.
UPC’s doctrine of equivalents
The Local Division applied a test that was purportedly based on the practise of various national jurisdictions, however, in reality, the test follows closely with that which was formulated by the Dutch court (Eli Lily v Fresenius Kabi). The test can be summarised as follows:
i. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
ii. Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
iii. 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?
iv. Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence)
In applying the questions to the case at hand, the Local Division came to the following conclusions:
Regarding question (i), the court determined that the main teaching of the patent is that a plant can be used as part of an MFC cell to provide a source of additional organic material for the battery, the effect being that the device is substantially independent of external fuel for the generation of electricity. Although the device used by Arkyne comprised a plant situated in a different compartment, and thus did not literally infringe, it was shown in evidence submitted by Plant-e that organic material could travel into the anode containing compartment though the filter. The plant was thus deemed to provide the same function as in the claim and solve the same problem in a similar way.
Regarding question (ii), it was noted by the court that the Patentee’s invention had contributed a new class of MFC’s to the art, which had since been given its own name, the “P-MFC”. A broad scope of protection was therefore justified and in line with the Patentee’s contribution. Regarding whether, at the time of infringement, it was obvious to the skilled person how to apply the equivalent element in view of the published patent, the court decided that the variation applied by Arkyne was indeed obvious to apply in view of the teaching of the patent. This was held to be the case irrespective of the variant providing certain advantages.
Regarding question (iii), the court commented legal certainty is met if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is broader than the wording of the claim and there is, in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a method using a device as claimed. The court held this requirement was met, stating that the teaching of the patent is to add a plant to an MFC to provide feedstock to make the MFC independent of externally provided feedstock and that the skilled person would understand that the variation utilised was another way to obtain this result in a similar way.
Regarding question (iv), the court held that the allegedly infringing process would have been novel and inventive by virtue of utilising a plant as part of the device as a supplier of additional fuel.
Thus, the answer to all four questions of the test were answered in the affirmative. Accordingly, the court held that Alkyne infringed claim 11 of EP2137782 by way of equivalence.
Implications
It remains to be seen whether the UPC Court of Appeal will endorse the Local Division’s four-point test of equivalence. Nonetheless, the decision highlights the importance of the need to clearly define the purpose and scope of an invention when drafting patent specifications. The decision also underscores the need to prepare well drafted patent claims with an eye on future developments and potential design arounds.
For potential infringers, the decision highlights the need to consider not only the literal meaning of claim terms, but also whether a given product or process could infringe by way of equivalence; an exercise which requires a thorough examination of the patent, prior art, and the claimed invention’s technical features.
If you would like any further information regarding infringement or proceedings before the UPC, please contact one of the Secerna attorneys docketing@secerna.com
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