Applicant:
SES-Imagotag SA, Nanterre, France
Defendant:
Hanshow Technology Co. Ltd, Jiaxing City, China
Hanshow Germany GmbH, Düsseldorf Germany,
Hanshow France SAS, Boulogne-Billancourt, France
Hanshow Netherlands B.V., Amsterdam, Netherlands
Patent at issue:
EP 3 883 277 – EP’ 277
Language of the patent:
French
Language of the Proceedings:
German
Summary of Facts
EP ‘277 was granted on a divisional application on 9 August 2023, with the filing date of the parent application being 11 April 2012. An opt-out declaration was filed on 28 April 2023 and withdrawn on 29 August 2023. The unitary effect of the patent was requested on the same day and registered on 1 September 2023.
The patent relates to an electronic label for a sales area with many such labels, each label being uniquely identified. The following images show two such labels – the one on the left is from the applicant, the one on the right is from the defendant (the images are taken from the parties' websites):
In detail, EP ‘277 teaches to arrange a printed circuit board on which a radio frequency communication module is mounted inside the housing of the electronic label on the side of the rear surface of the housing and on which an antenna is mounted on or inside the housing on the side of the front surface of the electronic label.
On 4 September 2023, the applicant requested a provisional order against the defendants for them to refrain from offering, placing on the market, etc., electronic labels according to the wording of claim 1 and claim 3 of EP '277.
The defendants requested that the application for provisional measures be dismissed and contested the competence of the Munich Local Division. They further argued that there had been no act of infringement after the grant of the patent, that the offending offer was made by the Chinese parent company and was not directed to the territory of the contracting states of the UPC, that they did not infringe the patent and that the patent was not valid as shown by the revocation action of 6 October 2023, file number UPC_CFI_360/2023.
Furthermore, they argued there were no grounds for ordering provisional measures from a temporal and a material perspective and that the damage to the defendant would be irreparable, which would have to be taken into account when weighing up the interests at stake.
Reasons for the decision
On 28 November 2023, the court held an oral hearing and by decision of 20 December 2023 denied the request for provisional measures. The court was not convinced with a sufficient degree of certainty that the defendants infringed the patent at issue.
The court affirmed the competence of the Munich Local Division, as the applicant’s submission conclusively substantiated acts of infringement in Germany. As in the case of 10x Genomics vs. Nanostring (Decision of 19 September 2023, UPC CFI 2/2023, p.38 of the official English translation), the court took the view that the conclusively substantiated submission was sufficient for the examination of competence.
The court then discussed the subject-matter of the patent and the interpretation of the features relevant to the assessment of infringement and in particular the features:
7. a printed circuit board accommodated inside the housing on the side of the rear surface of the housing, and
8.4 the antenna of the radio-frequency device disposed on or in the housing on the side of the front surface of the electronic label.
According to the applicant, feature 7 is understood by the person skilled in the art to mean that the printed circuit board is located in the rear part of the housing, but does not have to be fixed to the rear wall of the housing. Feature 8.4 is understood by the person skilled in the art to mean that the antenna must be located in the front part of the housing.
The defendants took the view that the printed circuit board must be positioned on the side of the rear surface of the housing and the antenna must be positioned in such a way that there are no components between the front surface and the antenna.
In the court's view, the two features discussed must be considered in combination and the interaction between the components must be taken into account. This interaction is highlighted in paragraphs 34, 38 and 39 of EP’277. The patent claim teaches the control of the interaction between chip and antenna by the spatial arrangement of the two components.
To confirm its view, the court referred to the claim as originally filed. This claim already included the distance between the chip and the antenna as a feature, which was amended during prosecution as follows:
In the view of the court, this means that the chip and the antenna must be diametrically opposed. In the contested embodiment, for which the court inserts the following figure in the decision:
at least a substantial part of the antenna rests, according to the court, on the upper part of the inner side of the rear surface of the housing. Since at least a significant part of the antenna is on the back of the label, it cannot be on the side of the front of the label. This means that no infringement can be found. Since the court was therefore unable to conclude with sufficient certainty that the products offered by the defendants infringed the patent, it was not necessary to consider the question of validity.
The court further found that the applicant, as the losing party, must pay the costs of the proceedings pursuant to Art. 69(1) UPCA, including the costs of filing the protective brief, as it had become part of the proceedings pursuant to Rule 207.8 RoP.
Conclusions
At first glance, this decision is not particularly groundbreaking: When examining the request for provisional measures, the court merely concluded that there was no infringement according to its interpretation of the claim. Possibly somewhat surprising is that the court did not consider the question of equivalence under Art. 69 (2) EPC. However, it is possible that the applicant did not put forward any arguments on this point, as they considered the chances of success to be too low.
For observers familiar with German national case law, however, the decision is very significant. According to established German case law, the prosecution history cannot be used to interpret the patent claim. In its landmark decision "Weichvorrichtung" (GRUR 1993, 886) the German Federal Court of Justice (BGH) denied the generally binding nature of statements made during prosecution proceedings.
The BGH holds that declarations made by the applicant are only binding with regard to the patent office during prosecution but not with regard to the general public. In opposition or nullity proceedings, declarations made are not only binding with regard to the office or the court, but also with regard to the other party to the proceedings.
In the decision “Kunststoffrohrteil” (GRUR 2002, 511), the BGH again expressly confirmed that events in the grant procedure should not be taken into account for the interpretation of the claims. This is not required since the grant procedure is not mentioned in Art. 69 EPC. It would also be contrary to the requirement of legal certainty.
The previously strict rejection of the use of prosecution history in the interpretation of patent claims has been softened somewhat in recent years. In its decision “Okklusionsvorrichtung” (GRUR 2011, 701), the BGH expressly left the question open, on whether it is legitimate to use the claim version of the original application and later amendments for claim construction. This question is also expressly left open in the Pemetrexed decision (BGH, Dec. of 14 June 2016 - X ZR 29/15, p. 22).
This German case law, which is in contrast to the American doctrine of file wrapper estoppel, exacerbates what is known in patent law as the angora cat effect. For example, if the examiner objects to the broad meaning of a term in the claim, either for clarity or for novelty or inventive step, the applicant can insist in his reply that the term is to be understood much more narrowly from a technical point of view. However, that does not prevent him from asserting the very broad meaning attributed to it by the examiner in subsequent infringement proceedings.
This situation can be made worse by the German principle of bifurcation or separation. Revocation proceedings do not deal with the embodiment attacked in infringement proceedings, but only with the subject-matter of the patent claim. Whether or not its scope pf protection includes the embodiment attacked in the infringement proceedings cannot be determined in revocation proceedings.
Although the Munich Local Division did not generally comment on the question of taking into account the prosecution history in the interpretation of the patent claim (there was obviously no reason to do so in the present case), the decision represents a significant departure from the doctrine of the interpretation of patent claims in German national case law.
Some patent blogs have recently expressed concern that the higher proportion of proceedings in German local divisions would mean that German case law would dominate UPC case law. This case is a good example of the opposite being the case. Here, a medium-sized company based west of Paris, France, with a European patent granted in French, instructed a US law firm with offices in London and Munich to file an application before the Munich Local Division for a provisional measure in German against a Chinese company and its European subsidiaries, who were represented by a UK-based international law firm. The court included a legally qualified Dutch judge and decided on the application following Dutch and not German legal practice.
The court has allowed the appeal of the case. If the appeal is lodged, it will be interesting to see, whether or not the Court of Appeal follows the opinion of the Munich Local Division.
