2024 Week 42
Last week we did a deep dive into some LED technology to explain the decision of the UPC Local Division Düsseldorf in Seoul Viosys v Expert Klein. In that decision, the Local Division decided that the patent was valid and infringed. We explained that we thought that the patent proprietor had been given a bit of an easy ride on added matter in particular, compared with how the issue would be addressed in an EPO opposition.
The same Local Division have issued their decision on another patent in the same family. This second decision between the same parties came out a few days after the first, and it reaches a starkly different conclusion: that this patent is invalid due to added subject matter. Although not mentioned in the decision, it’s the type of added matter objection that leads to the “black hole” between Articles 76 / 123(2) EPC (don’t add matter compared with the original application) and Article 123(3) EPC (don’t extend the scope of protection of the patent after grant).
The change in subject matter
The patent is EP 3223320 B1, granted from a divisional application of EP 2757598 A2. It’s important to note that the original parent application was actually filed in the Korean language (published as WO 2013/039344 A2) but that the divisional application itself was filed in English.
Original claim 1 of the parent application started with these features:
- A light emitting diode comprising:
a first conductive type semiconductor layer;
a plurality of mesas separated from each other on the first conductive type semiconductor layer and each comprising an active layer and a second conductive type semiconductor layer;
reflective electrodes each disposed on the corresponding mesa area and in ohmic contact with the second conductive type semiconductor layer; and ...
The words in bold are important in the decision.
Claim 1 of the patent (EP 3223320 B1) as granted included these amendments:
- A light emitting diode, comprising:
a first conductivity type semiconductor layer (110) formed on a substrate (100);
a mesa disposed on the first conductivity type semiconductor layer (110), the mesa comprising an active layer (120) and a second conductivity type semiconductor layer (130);
a reflective electrode (140) disposed on the mesa and configured to be in ohmic-contact with the second conductivity type semiconductor layer (130); ...
As you can see, the amendments here were to change the plural to the singular, for the mesa and reflective electrode.
Interpretation by the Local Division
The original application includes several embodiments and lots of description. The description refers in many places to plural mesas and plural reflective electrodes. This is also the case in the granted patent – these are referred to as embodiments of the invention.
The UPC Local Division reached a view that claim 1 as granted required that there is only a single mesa and only a single reflective electrode. That is, they consider that granted claim 1 excludes embodiments with plural mesas and plural reflective electrodes.
At first (and indeed second) sight, this seems surprising. The established UPC Court of Appeal case law on claim interpretation is that the description must be used to interpret the claims. The description seems to make it clear that LEDs with multiple mesas and reflective electrodes are intended to be embodiments of the invention. So it is unusual to see that these embodiments are judged to be outside the scope of protection of the granted claims.
The court decided that this scope for granted claim 1 added subject matter compared with the original application.
The patent proprietor attempted to argue that there were peculiarities of the Korean language at play here. For the patent granted from the original parent application, such arguments could possibly work, because the authentic text of that application as filed would be the Korean language PCT application. However, this divisional application was filed in English, meaning that the original Korean text could not be called upon to resolve translation difficulties.
EPO file wrapper
The EPO examiner raised a similar added matter objection during prosecution. The applicant overcame this by arguing that there was some disclosure of single mesa embodiments in the original application, and that anyway the technical effect of the invention did not rely on the number of mesas. The EPO examiner granted the application without raising the objection again.
EPO opposition practice comparison
As we mentioned in last week’s UPC Weekly, the way that an EPO opposition division would consider an added matter objection is to consider whether the combination of features in granted claim 1 is directly and unambiguously derivable by the skilled person, using common general knowledge, from the original parent application. To be fair to the UPC Local Division, we think that the outcome in an opposition would also be that granted claim 1 is invalid due to added matter. However, in an EPO opposition it seems likely that there would be a way out if the EPO considered that the claim covers both single and plural mesas.
Where’s the back hole?
The key issue here is claim interpretation. Because the UPC Local Division decided that claim 1 is limited to only a single mesa, and does not cover plural mesas, then it would not be possible for the patent proprietor to amend the claim to define, say, “at least one” mesa. Although this would have a chance of being allowable under Article 123(2) EPC, it would offend against Article 123(3) EPC, which prohibits amendments after grant that extend the scope of protection of the patent.
As it turns out, the patent proprietor did not try to amend to plural mesas because it was clear that the alleged infringement had only one mesa.
Where next?
Considering the two Seoul Viosys v Expert Klein cases together, perhaps this second case restores a bit of balance, But the key surprising point is the interpretation of the scope of claim 1. Assuming that these cases are appealed, it will be very interesting to see the UPC Court of Appeal’s view on this, and how added matter at the UPC should be judged compared with the EPO.
