The UPC has published a landmark decision on the doctrine of equivalents, in which it not only formulated the UPC’s test for equivalents but also found infringement on this basis for the first time.
BACKGROUND
European Patent EP2137782 (the “Patent”), the subject of the decision, concerns technology in which light energy is converted into electricity using living plants. The Patent acknowledges microbial fuel cells (MFCs) as prior art. In short, the invention is based on the idea that a living plant can be used to provide the necessary fuel for an MFC.
The Patent is owned by Plant-e B.V, a Dutch start-up. Arkyne Technologies S.L (referred to in the decision as “Bioo”) is a Spanish start-up which specialises in biofuel cells. Plant-e asserted that Bioo’s BioPanel system infringes the independent method claim of the Patent. Bioo subsequently filed a counterclaim for revocation.
DECISION
The case was heard by the Hague Local Division (the “Court”).
Given that the assessment of infringement and validity both depend on claim construction (which was in dispute between the parties), this was considered first in some depth. The Court followed the approach to claim construction set out by the Court of Appeal in Nanostring v 10x Genomics.
Having done so, the Court then applied the following two-step test for assessing infringement (in accordance with Article 69 EPC and the Protocol to the EPC):
- evaluate ‘literal’ infringement of the features of the Patent in view of the claim construction; and
- if the Patent is found not to have been literally infringed, assess infringement on the basis of equivalents.
The Court decided that the BioPanel system, literally, satisfied all features of the claim asserted save for the location of the plant and its roots in a specific compartment. As such, the Court moved onto assessing equivalents in respect of this differing feature.
The Court acknowledged that neither the UPC Agreement nor the Rules of Procedure address the doctrine of equivalents. Asides from the Protocol (which makes clear that equivalents must be considered when assessing the scope of protection afforded by a patent claim), no further guidance is provided under the applicable sources of law. As such, the Court declared that an equivalents test which takes into account the practice and case law in various national jurisdictions should be applied.
It then proceeded to set out its four-part test for assessing equivalents:
- Technical equivalence: Does the variation solve (essentially) the same problem and perform (essentially) the same function in this context, as the patent claim?
- Fair protection: Is extending protection proportionate to the patentee’s contribution to the art, and is it obvious to the skilled person how to apply the equivalent?
- 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 and there is, in the eyes of the skilled person, no good reason to limit the scope of protection to that claimed?
- Novelty and inventiveness: Is the allegedly infringing product novel and inventive over the prior art?
The Court proceeded to apply each of these questions to the case:
- With respect to the first question, it determined that the plant in the BioPanel system had (essentially) the same function as the claim and solves the same problem, on the basis that the nutrients generated by the plant trickled down to the relevant micro-organisms in a similar way to that claimed in the Patent.
- The Court ruled that a broad scope of protection was appropriate in this case, in line with the contribution to the art. In its assessment, the Court took into account that the invention was considered groundbreaking at the time and that it would be obvious to the skilled person how to apply the equivalent element. As such, the Court determined that it was appropriate and proportionate that the protection afforded by the claim extends through equivalence to the BioPanel system.
- The Court framed the third question as whether the skilled person would understand from the Patent that the scope of the invention is broader than what is claimed literally. The Court decided that the teaching of the Patent, namely to add a plant to a MFC to provide a source of fuel, clearly went beyond the strict wording of the claim. As such, the skilled person would understand that the BioPanel system variant provides a similar way of obtaining this result.
- Lastly, the Court quickly determined that, at the priority date, the BioPanel system would have been novel and inventive over the prior art. This was due to the introduction of a plant as a supplier of additional fuel for the battery/reactor. This was in any case not in dispute between the parties.
CONSIDERATIONS
Overall, the Court appears to have set a sensible test for assessing equivalents. This includes incorporating appropriate checks for fairness in both directions (i.e. for third parties and patentees), albeit not surprising given this mirrors the principles set out in the Protocol.
It would have been insightful for the Court to identify, in its decision, the different national sources it indicated it had relied upon in order to devise its test for equivalents. However, perhaps unsurprisingly, the test aligns closely with the test currently applied in the Netherlands. As such, the Court appears to have relied predominantly on its own national practice.
Whilst both based on the Protocol principles, there are some notable differences between the test devised by the Hague Local Division and the UK test for equivalents set out in Actavis v Eli Lilly [2017] UKSC 48. For instance, there is no express requirement to identify the “inventive concept” which has become the crux of the UK equivalents test. That said, the Court effectively undertook this exercise when it identified the teaching of the Patent as adding a plant to a MFC to provide a source of fuel.
The built-in ‘check’ in respect of the availability of a Formstein / Gillette defence formally brings in validity analysis into the assessment of infringement. However, this is interestingly at odds with the recent decision in SodaStream v Aarke, which determined that the Gillette defence could not be applied, at least in respect of claims of literal infringement.
We await to see whether the decision will be appealed. Authoritative guidance from the Court of Appeal on the test to be applied across all UPC divisions would be welcome. Regardless, we can expect the wording to be expanded on and clarified in months to come.
Although beyond the scope of this article, this decision is also noteworthy as the Hague Local Division expressly adopted the EPO’s problem-solution approach for assessing inventive step. This is different to that applied in revocation decisions rendered by the UPC Central Division, where they have endorsed an inventive step test more in line with national practice (notably, that adopted in Germany and the UK).
