2025 Week 15
Another first from the UPC this week – how to go about deciding on infringement and validity of product-by-process claims at the UPC? Yellow Sphere Innovations v. Knaus Tabbert is a decision from the Düsseldorf Local Division on infringement and validity of EP 3356109 B1. What’s great about the decision is that everyone will be able to understand the technology and the claims.
The tech
The invention is for a structural frame for a vehicle such as a caravan. The patent itself makes clear that various structural parts for vehicle construction are known from the prior art. For example, filling elements having a plate-like construction that form walls of vehicles are known, as are frame parts formed by extrusion to form the load-bearing part of the vehicle. In the invention, the parts of the frame are formed by moulding using an expanding foam. Claim 1 of the patent (in English translation) is set out below:
- Frame (11) for a vehicle (10) with at least one structural part (15), wherein
the structural part (15) is produced as a casting (52) in a mould (50), and
the mould (50) reproduces the three-dimensional outer shape of the structural part (15),
characterized in that the structural part (15) is formed by a self-swelling foam resin (20), the structural part (15) being at least partially coated from the outside with a protective layer (19),
wherein at least two existing structural parts (15) form a supporting part of the frame (11).
Figures 4 and 5 of the patent are reproduced below, showing frame 15 for a caravan.
Construing process features in a product claim
The Court started out by referring to a now-familiar set of principles for interpreting the scope of protection. But then with an eye to the process features in the claim, the Court emphasised that claim 1 is to a product (not a process or method).
In addition to being formed by moulding, the structural part of the frame is at least partially coated on the outside with a protective layer. Contrary to the defendant’s view, and in view of the description stating that the protective layer can be reworked, the Court decided that protective layer need not be the outermost layer and does not have to be visible from the outside. The Court emphasised that embodiments in the description should not be used to read into the claim limitations that are not there. This is sensible, and in line with previous UPC decisions.
The Court then highlighted that as claim 1 also defines that the structural part is produced as a casting in a casting mould and the mould reproduces the three-dimensional outer shape of the structural part, it is a product-by-process claim. In this decision, the UPC explicitly refers to the EPO Guidelines in order to explain how product-by-process claims should be interpreted at the UPC. The Court adopted this approach:
“Such claims are characterised by the fact that the technical content of the invention regularly does not consist in the process as such, but in the technical properties imparted to the product by the process.”
The decision also refers to a Court of Appeal decision in Abbot v. Sibio, which we commented on in UPCW 2025 Week 8. This earlier Court of Appeal decision appears more focussed on means-plus-function language (which is to be interpreted by the UPC as any feature suitable for carrying out the function), rather than product-by-process features. Nevertheless, it is a nod to the UPC consistently interpreting method or process features in a device claim such that the invention is not necessarily in the method or process itself, but in the structural features that could perform that method, or resulting from that method being performed.
The Düsseldorf Local Division built on the EPO’s guidelines for interpreting product-by-process claims, stating (emphasis added):
In principle, the procedure serves solely to define the product. It is not itself the object of protection and does not restrict it. The process feature typically has the task of further specifying the product, which is not yet distinctively defined by the other physical and spatial features, in that the process feature included in the claim leads to a certain additional configuration of the product, which distinguishes the product from the known and characterises it. The decisive factor is therefore how the person skilled in the art understands the information on the manufacturing process and what conclusions he draws from this with regard to the nature of the product according to the invention. However, if the manufacturing process leads to properties in the product which can only be achieved by this route and the presence of which can be determined in the finish product, the patent is ultimately limited to products which can be manufactured by this route.
Returning to caravans…
The question was therefore which physical properties of the structural part the skilled person derives from the fact that the structural part is to be produced as a cast part in a mould which reproduces the three-dimensional outer shape of the structural part. It did not matter that during prosecution, claim 1 had been amended from the structural part being producible as a cast part in a mould, to being produced as a cast part in a mould. It was clear that the Local Division did not want to comment on that until the UPC Court of Appeal has decided the extent to which the prosecution file wrapper can be used to interpret the claims. Instead, they said such consideration was unnecessary, and the decisive factor was whether there were any indications in the patent specification which justify the conclusion that the use of the process is mandatory in order to achieve certain features of the product.
The Court found that there were no such indications and so the specified moulding process was not mandatory. Instead, they decided that the skilled person would consider the prior art disclosed in the patent (plate-like filling elements that are not structurally strong, and extruded bar profiles made from plastic or metal for forming the frame, as discussed above), and understand that the claimed product-by-process feature requires the structural parts to be formed from self-swelling foam resin to form a load-bearing part of the frame, whereby the structural parts not only provide the necessary tensile strength, but also have their design adaptable to the respective needs of the vehicle in question.
The Court’s conclusion was that the patent is valid and infringed. It was valid because, although the prior art disclosed filling a mould with self-swelling foam resin, none of the prior art documents disclosed that they could be used to form a load-bearing part of a frame for a vehicle. It was infringed because the infringing articles were formed by self-swelling resin to form a load-bearing part of the frame, and therefore providing the necessarily tensile strength, and because the defendant themselves advertised their fibre frame technology as enabling the design to be adaptable to the respective needs of different vehicles. It was irrelevant that more than one mould is used in the manufacture of the infringing frame, and that the mould used to produce the foam core did not reproduce the entire outer shape of the structure.
Product-by-process in other European jurisdictions
The UPC have essentially stated that they will interpret “obtained by” as “obtainable by” for both infringement and validity, similarly to Germany and, at least for validity, the EPO.
This contrasts to the situation in the UK courts, where the validity of product-by-process claims is assessed in the same way as at the EPO, but a different, narrower scope of protection for product-by-process claims can be taken for the assessment of infringement.
In the UK, for a product-by-process claim which uses “obtained by” language to be infringed, the product must be obtained by that recited process. It is only when the language “obtainable by” is used that a broader interpretation will be used (see Hospira v. Genentech). In effect, the UK courts interpret “obtained by” product-by-process features asymmetrically for infringement and validity, with a narrower interpretation for infringement than for validity.
Back to the UPC
We read the UPC approach in this case as sticking to the guidance of the UPC Court of Appeal in 10x v. NanoString so that the same scope should be given to the claims when assessing validity and infringement. This symmetry of claim interpretation goes to the clear mission of the UPC to be a predictable and efficient venue for European patent litigation.
