UPC Weekly - UPC finds infringement using a doctrine of equivalents

2024 Week 47

Back in June 2024 (UPC Weekly 2024 week 23), we set out a few “known unknowns” – important developments in UPC case law that we expected to come in due course.

New UPC decision Plant-e v Arkyne gives guidance on one of these issues – the doctrine of equivalents at the UPC. The UPC Local Division The Hague decided that Arkyne did not infringe the patent on a normal interpretation of the claims, but did infringe on the basis of equivalence.

To understand the decision, it is worth explaining the technology briefly. In terms of the contested features of the claim, it’s not too complex.

Background

The patent EP 2137782 B1 acknowledges microbial fuel cells (MFCs) as prior art. One example of a prior art MFC has an anode compartment, a cathode compartment and a membrane separating the anode compartment and the cathode compartment from each other. The anode compartment contains micro-organisms capable of oxidizing what we can call here “fuel”. The fuel can be various compounds such as glucose or compounds found in various effluents. The oxidation provides electrons to the anode.

The invention is based on the idea that a living plant can be used to provide the necessary fuel for the MFC. This is based on the rhizodeposition effect – photosynthesis in the plant leads to compounds being released from the roots into the soil.

The claim at issue was claim 11, an independent method claim. Here it is, broken down into different lines:

11. Method for converting light energy into electrical energy and/or hydrogen, 
wherein a feedstock is introduced into a device that comprises a reactor, 
where the reactor comprises an anode compartment (2) and a cathode compartment (3) and wherein the anode compartment (2) comprises 
a) an anodophilic micro-organism capable of oxidizing an electron donor compound, and 
b) a living plant (7) or part thereof, capable of converting light energy (11) by means of photosynthesis into the electron donor compound, wherein the microorganism lives around the root (8) zone of the plant or part thereof.

The reference numbers in red have been added by us to help understand the claim. Additionally, Fig. 1 of the patent shows anode (4), cathode (5), membrane (6) and electrical connections (13) to form a circuit. A schematic view of the alleged infringement is also shown below.

The Bioo Panel has the anode and cathode in a bottom compartment, separated by soil, and an upper compartment which contains soil, the plant and plant roots. A filter is located between the upper compartment and the lower compartment. Note that the reference numbers used for the Bioo Panel do not map onto the claim’s reference numbers.

Literal infringement? No

After careful interpretation of the claim, the court decided that the “compartments” of the claim could be conceptual and there need not be physically separate compartments. Instead, having the anode and cathode separated by soil would suffice.

The court decided that the Bioo Panel literally meets all of the features of the claim except for the location of the plant and its roots in the anode compartment. In the Bioo Panel the roots of the plant are in an upper compartment, whereas the anode compartment (with the anode and the micro-organisms) is located at the bottom of the lower compartment.  

Therefore, the court decided to roll out its analysis of the scope of protection of the patent on the basis of a doctrine of equivalents, for the first time at the UPC.

UPC doctrine of equivalents

Bioo provided various experimental reports aiming to show that the incorporation of plants into its system was not essential for it to operate satisfactorily. The court was not convinced by the evidence and concluded the Bioo Panel did comprise a plant as required by the claim.

With respect to the location of the plant roots with respect to the anode compartment, Bioo argued that their arrangement was an improvement over the patent. This is because they found that having the roots in the anode compartment could lead to damage of the anode and disruption of the anaerobic conditions at the anode.

The Hague Local Division set out a test for equivalence based on what they referred to as the approach of “several national jurisdictions”. In fact, what they set out is based on a Hague Court of Appeal decision in the wide-ranging pemetrexed litigation involving Eli Lilly. To be an infringement, all of the following four questions must be answered “yes”:

1. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
2. Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
3. Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
4. Is the allegedly infringing product novel and inventive over the prior art?

In the view of the LD, the answer to all of these questions was yes in this case.  So, how did they get to that conclusion?

Question 1) Technical equivalence

Plant-e had carried out some experiments on the Bioo Panel and showed that water in the upper compartment will carry relevant compounds generated by the plant roots into the lower compartment, through the filter separating the compartments. The court therefore decided that the set-up of the Bioo Panel was technically equivalent to the teaching of the patent – the plant had the same function and solved the same problem. The additional compartment did not affect the function of the plant.

Question 2) Fair protection for patentee

The court applied this question by considering the extent of the invention’s contribution to the art. In the view of the court, the invention provided a new category of MFCs and therefore it was fair to afford it a broad scope of protection.

Additionally under this question, the court considered whether, at the time of infringement, it was obvious to the skilled person how to apply the equivalent element, based on the disclosure of the patent. Bioo argued that their solution was itself inventive, avoiding damage to the anode from the roots of the plant. However, the court dismissed this argument – it is possible for the infringement to have technical advantages but still to be an infringement by equivalence.

Question 3) Reasonable legal certainty for third parties

The court framed this question as whether the skilled person understands from the patent that the scope of the invention is broader than what is claimed literally. Here, the court decided that the teaching of the patent is clearly broader than the wording of the claim. The court considered that the teaching of the patent was to add a plant to a MFC to provide a source of fuel for the MFC. 

Question 4) Novelty and inventive step of the alleged infringing product

This question is built into the test in order to check for a Gillette or Formstein defence. That is, if the alleged infringement is not patentable over the prior art available to attack the claim, then the patentee should not be allowed to assert infringement under the doctrine of equivalents. The court swiftly answered this question, although their acknowledgement that a Gillette defence is available at the UPC is at odds with the recent decision in SodaStream v Aarke that we reported on here.

What will the UPC Court of Appeal say?

One note of caution here. This is a first instance decision from a Local Division that appears to be applying its own national law. The test for equivalence is not unreasonable, but it is subtly different from other jurisdictions such as Germany. Assuming that this case is appealed, it is possible that the UPC Court of Appeal will take the opportunity to re-state a UPC doctrine of equivalents, even if it leads to the same outcome on the facts of this case.

Hague Local Division prefers EPO’s problem-solution for inventive step

In recent weeks we have reported a steady stream of UPC cases in which inventive step was judged based on a consistent test that seems different from the EPO’s problem and solution approach. But in this Plant-e v Arkyne case. the court explicitly said:

In order to assess whether or not a claimed invention was obvious to a skilled person, the court will follow the problem and solution approach as suggested by the parties and as also used by the EPO, as a tool to assess obviousness. [Emphasis added]

Without using the expression “formulating the objective technical problem”, the court in effect considered the technical effect provided by the novel features of the claim over the closest prior art when stating:

Furthermore, the teaching of the patent is to reduce non-sustainable and non-renewable energy in an MFC, which is achieved by incorporating a living plant or part thereof into the device as a continuous supplier of fuel for the process, whereby light energy/photosynthesis is used, without the need for ex-situ replenishment of organic matter. [Emphasis added]

The bold text would be a reasonable statement of the objective technical problem, because it needs to capture the technical effect of the invention but be general enough that it does not contain a pointer towards the invention. The court also observed:

There has to be an incentive for the skilled person to combine two items of prior art. If this incentive is lacking, the combination is almost invariably not obvious for the skilled person, which in this case makes the patent inventive over all prior art.

All of this will feel very comfortable and familiar to those representing clients before the EPO.

Where next?

This decision is groundbreaking in the sense that it is the first to deploy a doctrine of equivalents. The comments on inventive step may get fewer headlines but are also interesting. If the first instance decision is appealed, we will be watching carefully to see whether the Court of Appeal takes this chance to state its definitive view on equivalents and the test for inventive step.