2024 Week 39
Outdoor equipment makers Ortovox and Mammut are locked in a UPC battle about avalanche rescue devices and so far Mammut are the ones who look like they need rescuing. This week saw the UPC Court of Appeal uphold the Düsseldorf Local Division preliminary injunction (PI), restraining offers for sale of Mammut’s Barryvox S2 in Germany and Austria due to infringement of Ortovox’s EP 3466498 B1.
The UPC Court of Appeal decision is lengthy but clear, covering plenty of ground. Some of the points from the decision don’t need an understanding of the technology, but to take a view on the approach to validity it’s useful to see that the invention is not particularly complex, at least at the conceptual level.
Technical background
Avalanche rescue devices are known – these are devices that look a bit like walkie-talkies and provide information to a rescuer about where a similar device (hopefully attached to a person to be rescued) is buried under the snow due to an avalanche. The rescuer’s device sounds an audio signal which can be a series of bleeps and can change in pitch or repetition rate as the searcher comes closer to the buried device. You know the sort of thing from the movies. The invention supplements this with voice messages to help further guide the rescuer, the key part being that the bleeps are suppressed or reduced in volume when a voice message is being output from the same loudspeaker.
The outcome of the UPC PI proceedings can be deduced from the Mammut website, explaining the capabilities of the Barryvox S2 [emphasis added]:
Voice guidance: your Barryvox® assists you with additional instructions in all search phases. This feature is currently not available in Germany, Austria and Switzerland and the US.
Claim interpretation – still no guidance on use of the file wrapper
The UPC Court of Appeal once again set out their stall on claim interpretation, further emphasising their own case law from 10x v. Nanostring that the description must be used to interpret the claims, but that the claims as interpreted define the scope of protection.
The Local Division had said that the file wrapper should generally not be used in claim interpretation. The Court of Appeal were more circumspect and said that this was another case where they would not give a view on this issue. They said something similar in VusionGroup v. Hanshow earlier this year. This is a point that needs clearing up, but probably the UPC Court of Appeal is waiting for the right case to come along.
Claim interpretation – voice message
The UPC Court of Appeal engaged much more enthusiastically with the question of what distinguishes an audio signal from a voice message. Mammut had pointed out that there are certain languages in the world (e.g. Khoisan languages in Africa, and whistled languages such as Turkish bird language) that could be considered to use sound in place of speech. The Court of Appeal disagreed – in their view, these languages directly reproduce words rather than merely providing sound patterns that represent words.
Validity – novelty and inventive step
The Court of Appeal considered four prior art documents in detail and explained why the independent claims were considered novel over each of them. In particular, for one prior art document, their view was that there was no direct and unambiguous disclosure of the feature of suppression of an audio signal during the output of a voice message.
They then turned to the question of inventive step. Once again there was no mention or implicit following of the EPO’s problem and solution approach.
The court decided that one prior art document (EP’679) led the skilled person away from the use of sound signals and therefore the invention would be considered inventive when starting from that prior art.
Mammut argued that the claim was a mere juxtaposition of sound and voice guidance and so not inventive. For another prior art document (WO’721), sound and voice guidance were disclosed as alternatives to each other. The court decided that the invention was not a mere juxtaposition – there was a technical effect going beyond the individual features in terms of additional support to the search guided by the audio signal. However, it is interesting to see that the court did not engage in any detailed discussion of why the claimed solution would not be obvious to the skilled person starting from this prior art.
On the facts of the case, it may be that there was no available secondary reference disclosing the required combination of audio signals and voice messages with the audio signal being suppressed or reduced in volume during the voice message. Without such a reference, it would have been difficult for Mammut to argue that the skilled person would find motivation to modify the closest prior art with that solution. So probably even using the problem and solution approach explicitly would have led to the court reaching the same result – that the independent claims were inventive.
One caveat to all of this analysis is that, despite the detailed consideration of novelty and inventive step, this is intended to be a summary assessment only for the purposes of an interim remedy. There is an ongoing main action between Ortovox and Mammut for infringement and revocation and so it will be interesting to see whether the evidence and arguments are significantly expanded for the consideration of validity in those proceedings.
Procedural – auxiliary requests from patent proprietor
Possibly mirroring amendments proposed in the main proceedings, Ortovox submitted auxiliary requests in the PI appeal, narrowing the proposed substantive scope of the injunction. As it turned out, these were not considered by the Court of Appeal, but it seems clear that they would have been admitted if needed.
Procedural – late filed documents and arguments
At first instance, Mammut had filed a prior art document the day before the PI review hearing. The Düsseldorf Local Division had refused to admit it, as late filed. However, they also had some obiter dictum comments on its lack of relevance.
The UPC Court of Appeal did not say that the Local Division was wrong not to admit this document, but exercised its own discretion and admitted it into the appeal proceedings.
Mammut also attempted to file its own submissions from the main infringement and revocation action. However, these were only filed in the PI appeal proceedings rather than at the first instance PI proceedings and the Court of Appeal refused to admit them.
The clear lesson here is to submit documents and arguments at first instance even if late. If the first instance refuses to admit them, it is still possible that the Court of Appeal will allow them into the proceedings. However, filing such documents only in the appeal will mean that they are unlikely to be admitted.
Weighing of interests
When deciding whether to grant a PI, and having reached the view that the patent is probably infringed and probably valid, the court considered various factors:
No unreasonable delay – some Local Divisions have said that there should be a clear safe harbour period of time for a patent proprietor to start a PI action. 1 month or 2 months has been proposed. The UPC Court of Appeal declined here to give a fixed number of weeks or months. However, they did say that the patentee could only realistically start a PI action when they have enough evidence of likely infringement. Therefore, the start of any “delay” period is not necessarily the very first indication of possible infringement. On the facts, Ortovox acted quickly – filing a PI application within a few days.
No requirement for irreparable harm – the UPC Court of Appeal commented that it is not sufficient for the defendant to argue that damages would be an adequate compensation for infringement. There is no need for the patentee to demonstrate a risk of irreparable harm if the infringement is allowed to proceed. The court commented that Mammut is depriving Ortovox of the market opportunity associated with patent protection by at least threatening to sell a competing product that infringes the patent. That seems a fairly low bar for a PI to be granted.
Public interest – Mammut argued that there is a public interest in potentially life-saving devices being allowed onto the market. The court gave this argument short shrift in this case, saying that there are other devices available, including an Ortovox device.
What next?
This is not the end. There is the main action for infringement and revocation, still to be decided by the Local Division. Given the detailed consideration of infringement and validity carried out by the UPC Court of Appeal in the PI proceedings, it will be particularly interesting to see whether the Local Division feels bound, or persuaded, by the Court of Appeal’s reasoning on the same or similar facts.
