2024 Week 35
Last week saw two decisions handed down from the UPC Local Divisions as part of Avago’s litigation campaign against Tesla. Tesla have won the race in both cases. In the first judgment, which was handed down by the UPC Local Division Hamburg, Avago’s patent EP 1612910 B1 was narrowed to such an extent that there was found to be no infringement of the amended patent. In the second judgement, the UPC Local Division Munich revoked Avago’s patent EP 1838002 B1 in Germany. So, what have we learned from these two cases?
Should claims be interpreted functionally?
Both the Hamburg Local Division and the Munich Local Division referred to the UPC Court of Appeal decision in the NanoString/10X Genomics case when considering claim interpretation:
“The patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense…Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim”.
Building on this when considering how to interpret the terms “power supply circuit”, “integrated circuit” and “third electrical device” in claim 1, the Hamburg local division looked to the description to decide whether these terms should be interpreted functionally, or whether there are any spatial-physical requirements for these features. As the description did not imply such spatial-physical requirements, these terms were interpreted purely functionally.
A “power supply circuit” was not limited to a single circuit as distinct from several independent and merely interacting circuits, but could comprise several modules with independent outputs.
As the patent did not specify the position of the “third electrical device”, there was no requirement that the “third electrical device” must be distinct from the “integrated circuit”, and as such that “third electrical device” could form part of the “integrated circuit”.
In our view, the EPO would likely interpret these terms consistently with this approach.
How are lists of features interpreted?
The Munich Local Division needed to interpret the feature:
“to convert the outbound data into at least one of: a normalized complex signal, offset information, and transmit property information when the programmable hybrid transmitted is in a second mode” (emphasis added)
They considered that based purely on the language of the claim alone this should be interpreted as: “at least one of A, and at least one of B, and at least one of C”, meaning that the elements are to be understood cumulatively such that all three elements are required by the claim. The Munich Local Division emphasised that this would be in contrast to the situation where the word “or” was used, which they noted would require “at least one of A, or at least one of B, or at least one of C” (i.e., only one of the three elements).
The Munich Local Division also emphasized this:
“Nothing else results from the understanding conveyed to the person skilled in the art by the description and the embodiments of the hybrid transmitted according to the patent in suit”
… essentially, the patent consistently required the outbound data to be converted into all three elements in the second mode, and as such, this reinforced the interpretation that all three elements are required by the claim.
Although perhaps not unexpected in context, this reading of what is in effect a Markush grouping would be totally unexpected in other technical areas. A normal Markush grouping would have been interpreted as requiring at least one element from a list comprising A, B, and C. This would be the expected interpretation applied by the EPO, for example.
This decision really emphasises how much weight the UPC are putting on disclosures in the description when interpreting the claims. If the description had disclosed embodiments in which the outbound data was converted into only one or two elements of the three in the second mode, would this feature have been interpreted more broadly?
Is prosecution history relevant for the interpretation of the claim?
The Hamburg Local Division stated that:
“it does not matter under what conditions and to what extend the grant history is relevant for the interpretation of the claim before the UPC” [as translated from the DE decision by DeepL machine translation].
This related to whether it was material that the following sentence was deleted during prosecution:
"Accordingly, the scope of various aspects of the present invention should not be limited by characteristics of a particular location or level of integration for the electrical device 630”
… on the basis that there was at least argument that this sentence might otherwise lead to a different interpretation of the claim. The court’s view seems to be that in fact the deletion of this sentence did not change their view on the relevant interpretation of the claim in this case. It does not seem that the court intended to make a more general proclamation that the prosecution history can never be relevant to claim interpretation. The UPC Court of Appeal has also notably avoided this issue, and so we wait for further UPC guidance on this.
And finally, what is “partial invalidity”?
In the case heard by the Hamburg Local Division , Auxiliary Request 1 included two independent claims. Independent claim 3 was found to be invalid, whereas amended independent claim 1 was found to be valid. The Hamburg Local Division decided that in view of Art. 65(3) UPCA:
“a patent can therefore also only be revoked in nullity proceedings before the UPC to the extent that the grounds for revocation are sufficient, so that a patent can also remain (partially) valid to the extent of individual independent patent claims within the scope of the complete set of claims filed as a main or auxiliary request, if this corresponds to the procedural concerns of the patent proprietor.”
Therefore, simply because claim 3 was found to be invalid, did not mean that the patent had to be revoked in its entirety. The proprietor (Avago) did not even need an auxiliary request on file deleting the invalid claim 3 to maintain the patent in amended form. Avago did actually file such an auxiliary request (called auxiliary request 1bis) very late in the proceedings (during the oral hearing, we understand), but the court stated:
“the alternative maintenance of claim 1 in the version of auxiliary request 1 with deletion of claim 3 is to be carried out independently of the admission of auxiliary request 1bis since such a result was part of the plaintiff’s defence against the action for annulment from the outset”.
Those familiar with EPO oppositions will realise that this is a divergence from how the EPO would handle such a situation, at least in terms of procedure. During an EPO opposition, there would need to be a completely valid claim request on file (e.g., here, deleting claim 3) in order to avoid revocation of the patent.
