Lucy Coe
2024 Week 38
On 13 September 2024, the UPC Munich Local Division handed down its decision in the Philips v. Belkin case in relation to infringement and validity of Philip’s patent EP 2 867 997 B1. The patent had been declared to be SEP (standard essential patent) in relation to the Qi wireless charging standard.
The UPC Local Division decided that the patent was valid and infringed, and granted an injunction for a number of European countries. However, this UPC decision is in direct conflict with a previous German national judgement, in which the German national court ruled that the patent was not infringed. The UPC dealt with this by carving out Germany from the injunction for the overlapping defendants.
There are many interesting points raised by the decision. We go into them in more detail below, but the key issues are:
- Infringement and validity turned on a single point of claim construction – the UPC decided this in exactly the opposite way to the German national proceedings. We explain how.
- The file wrapper can be used to understand the amendments made to the claims.
- Although the patent is a declared SEP, no FRAND defence was raised because the patent did not confer market power.
- No stay of proceedings in view of the German national proceedings.
- Flexible carve-outs of territory and defendants from scope of injunction.
- Directors of the defendant can be personally subject to a UPC injunction and liable for penalty payments to the court for breaches of the injunction.
Claim interpretation: to accept or to reject
Philips asserted claim 20 only – directed to a power transmitter (e.g., a wireless charging station) for an inductive power transmission system supporting two-way communication between the power transmitter and a power receiver (e.g., an end device). Put simply, claim 20 requires bi-directional communication, including a “negotiation phase” between the power transmitter and power receiver, which is essentially started as follows:
The contested features were:
“… means for acknowledging the request to enter a requested negotiation phase by transmitting an acknowledgement to the power receiver; the acknowledgement being indicative of an acceptance or rejection of the request to enter the requested negotiation phase; …”
In effect, the court decided that these features could be understood as
“… means for acknowledging the request to enter a requested negotiation phase by transmitting an acknowledgement to the power receiver; the acknowledgement being indicative of an acceptance and optionally a rejection of the request to enter the requested negotiation phase; …”
Use of the prosecution history to aid claim interpretation
In their decision, the court expressly refers to the prosecution history of the application. They noted that the claims had been amended to add the purpose of the acknowledgement (as an acceptance or rejection of the request). The court even included a portion of the applicant’s letter during examination in their decision, as means to understand the purpose of the amendment.
The acknowledgement by the court that the file wrapper can be used to understand the patent had only a minor impact in this case, but, in our view, the principle has much bigger implications for UPC litigation in general.
UPC disagrees with German national court on key claim interpretation
Philips interpreted the contested features as meaning that a power transmitter that always responds to the request with an acceptance, and never a rejection, still falls within the scope of the claim. They said that the word “or” expresses alternatives, with general acceptance being one of those alternatives.
Belkin’s view was that the power transmitter must be able to indicate both an acceptance and a rejection with the confirmation. This meant that always indicating an acceptance would not fall within the scope of the claim.
It is important to note that the German national courts considering infringement and validity in bifurcated national proceedings also both interpreted claim 20 in Belkin’s way. In the German national proceedings, this was why the claim was deemed not to be infringed.
In considering which interpretation was correct, the UPC Munich Local Division considered that two questions arise:
- Does the description describe an embodiment in which a declaration of acceptance is always transmitted to the recipient as confirmation?
- If so, is this embodiment also reflected in the wording of the claim?
They answered “yes” to the first question. Paragraph [0046] disclosed an embodiment which always transmitted an acceptance.
For the second question, the court stated (in machine translation from German):
“The patent specification must be read in a meaningful context and, in case of doubt, the patent claim must be understood in such a way that there are no contradictions with the statements in the description and the pictorial representations in the drawings. However, a patent claim may not be interpreted in accordance with a broader description if the description is not reflected in the patent claim. If and to the extent that the teaching of the patent claim is consistent with the description and drawings cannot be reconciled and an irresolvable contradiction remains, those elements of the description that are not reflected in the patent claim may not be used to determine the subject matter of the patent. In this respect, the patent claim takes precedence over the description. If several embodiments are presented in the description as being in accordance with the invention, the terms used in the patent claim are, in case of doubt, to be understood in such a way that all embodiments can be used to fulfil them.”
They considered that the description gave no indication that a rejection must also be possible in the negotiation phase, stating:
“There is no apparent technical reason why a power transmitter must be able to respond to a request with a rejection. Although this may be useful in individual cases, which is why this possibility has been included in the patent claim, it is not necessary or functionally intended according to the patent.”
Based on this interpretation, the UPC Munich Local Division found claim 20 to be valid and infringed.
Key takeaways on claim interpretation
We think it’s important to see that this is not just the UPC being over-literal in their interpretation of the word “or” in the claim. For example, it is clear that the UPC do not intend that the claim covers a power transmitter that is incapable of accepting a request to enter the negotiation phase (and so would always reject such a request). This is because there is no suggestion in the description that this is intended to be inside the invention.
The detailed analysis of the interaction of the description and the claims in this case should give all European patent attorneys pause, too. It shows the effects that the wording and amendment of the description can have on the ultimate enforceability of the patent. Deciding to delete an original embodiment, or marking it as outside the scope of the invention, can have meaningful effects later at the UPC.
No stays
The court refused requests to stay the UPC proceedings in view of the German national proceedings. The German infringement proceedings were finished but the validity proceedings were potentially still ongoing. Since the UPC had discretion on whether to impose a stay, the court decided that its wider jurisdiction (covering not just Germany) meant that it should not stay the proceedings.
Injunction tailored to reflect result of German national proceedings
As mentioned above, in Germany there had been previous proceedings, the result of which was that the patent was deemed not infringed.
There were three Belkin corporate defendants: Belkin DE, Belkin UK and Belkin International.
Belkin DE and Belkin UK were the defendants in the German national infringement proceedings, the final result of which was that the patent was not infringed. Belkin International was not a party to the German national infringement proceedings.
The effect of all this was that the injunction excluded Belkin DE and Belkin UK in Germany, but not Belkin International. This was to avoid a res judicata conflict between the German national court and the UPC in respect of the overlapping defendants.
Directors in the line of fire
Philips had included the three corporate defendants mentioned above, and also three individuals, one identified as the managing director of Belkin DE and two identified as directors of Belkin UK.
The court decided that these directors were not “infringers” of the patent. However, they did decide that these directors could be classed as “intermediaries” and therefore could be covered by the injunction. This comes from Article 63 of the UPC Agreement:
- Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent.
- Where appropriate, non-compliance with the injunction referred to in paragraph 1 shall be subject to a recurring penalty payment payable to the Court.
Because the directors themselves were not deemed to be infringers of the patent, they were not liable for damages. However, they were made subject to the injunction including, as a key point, liability for recurring penalty payments to the court for breaches of the injunction.
We can expect more UPC cases to name individual executives as defendants in future patent litigation cases, in order to bring additional pressure to bear.
This blog was co-authored by Lucy Coe and Matthew Naylor.
Lucy is a Senior Associate and Patent Attorney at Mewburn Ellis. She works primarily in the computer software, electrical engineering, transport, and mechanical engineering sectors. She is involved with all stages of the patent process, particularly in the drafting and prosecuting of applications in the UK and at the EPO. She also has experience in oppositions and opinion work.
Email: lucy.coe@mewburn.com
