Background

The decision relates to an infringement action brought by Plant-e BV against Arkyne Technologies SL (referred to in the decision and this article as ”Bioo”), and a counterclaim of invalidity in respect of European patent EP2137782 B1.

The EP2137782 B1 relates to a device and a method. In particular, the technology relates to a plant-based -microbial fuel cell (P-MFC). Such devices use a living plant or part thereof to supply fuel for anodophilic microorganisms capable of oxidising organic electron donor compounds. According to EP2137782 B1, such P-MFCs may be used to produce electrical energy and/or hydrogen.

Bioo had several products, including a large biofuel cell with lighting that can be buried in the ground for use in gardens and parks (the “Bioo Panel”).

Plant-e alleged that Bioo’s products, including the Bioo Panel, literally infringed method claims 11-16 of the EP2137782 B1 and, in the alternative, by equivalence.

Literal infringement

The court construed the claims at issue as requiring the roots of the plant to be in a specific “compartment” of the fuel cell. Bioo was successful in arguing that the Bioo Panel product had a different spatial arrangement of the plant and fuel cell compartments, such that the court found that there was no literal infringement by the Bioo Panel.

Infringement by equivalence

Turning to equivalence, the court noted that the Unified Patent Court Agreement (UPCA) contains no provision on the doctrine of equivalents, but that Article 2 of the Protocol on the Interpretation of Article 69 of the European Patent Convention (EPC) makes clear that equivalence must be considered when assessing the scope of protection.

In the absence of guidance as to the form of the legal test for equivalence before the UPC, the court applied a test that was “based on the practice in various national jurisdictions.” The court established that a variant would be equivalent to an element specified in the claim if the following four questions were answered in the affirmative:

1. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
2. Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of their contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
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 patent novel and inventive over the prior art? (no successful Gillette/Formstein defence)

Interestingly, the test set out by the court closely resembles the Dutch test set out in Eli Lilly v Fresenius Kabi (Court of Appeal of The Hague).

Moreover, the Dutch test is somewhat different to the German approach. Indeed, while there has been some alignment of national approaches to the doctrine of equivalents in Europe, there have been notable differences in application between national courts, as can be seen from Eli Lilly’s pemetrexed litigation.

The reference to a Gillette defence is also interesting in view of the Düsseldorf Local Division’s apparent rejection of such a defence in Sodastream v Aarke (UPC_CFI_373/2023), albeit in the context of literal infringement.

Finding of infringement by equivalence

In Plant-e Knowledge BV & Plant-e BV v Arkyne, the court ruled that the Bioo Panel was designed to achieve the same result as EP2137782 B1, (to create a microbial fuel cell that is independent of externally furnished fuel, and which is achieved in the same way) by introducing a living plant into the system as a supplier for the reactor. The first question was thus ruled to be answered in the affirmative.

The court regarded Plant-e’s invention (the P-MFC) to be a significant contribution to the art, and that a fairly broad scope of protection was in line with this contribution. The court considered it obvious to the skilled person how to apply the equivalent element to the Bioo Panel, thus also answering the second question in the affirmative.

The court considered the requirement for legal certainty to be met “if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is (clearly) broader than the wording of the claim and there is, still in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a (method using a) device as claimed”. The court was of the view that that the teaching of EP2137782 B1 was to add a plant to an MFC to provide (additional) feedstock to make the MFC independent of externally provided feedstock, and that a skilled person would understand that the variant of the Bioo Panel was another way to obtain this result in a similar way. Therefore, the third answer was also answered in the affirmative.

Finally, the court was convinced that the Bioo Panel would have been novel and inventive over the prior art at the priority date, and the parties are stated to have not contested this view. Consequently, the fourth answer was also answered in the affirmative.

In a UPC first, the Bioo Panel was therefore found to infringe EP2137782 B1 by equivalence.

Further points of interest

When evaluating the validity of EP2137782 B1, the court referred to the EPO’s so-called “gold standard” (see, for example, EPO Enlarged Board of Appeal decision G2/98) as applying equally to the consideration of “same invention” for priority claims, added subject matter and novelty, an approach that will be uncontroversial to European practitioners.

With respect to inventive step the court notably stated that it was applying the EPO problem and solution approach as a tool to assess obviousness. The court stated that a “realistic starting point” in the state of the art must first be established, mirroring terminology used in, for example, Sanofi v Amgen before the Munich Central Division. This was to be done in the same manner as before the EPO, in that such a starting point must be directed to a similar purpose or effect as the invention or at least belong to the same or closely related field, and which in practice generally corresponds to a similar use requiring minimal structural and functional modifications to arrive at the claimed invention.

Although not explicitly stated as such, certain elements of the reasoning might arguably be read as a definition of the technical effect and a formulation of the objective technical problem. Nonetheless, the court’s approach appears to be significantly abbreviated compared to the extensive and explicitly structured approach usually seen before the EPO.

Final thoughts

This decision is the first insight into the application of the doctrine of equivalence at the UPC, and will therefore understandably receive close attention. Indeed, this is the first decision from the UPC where a test for applying the doctrine of equivalents has been set out.

Nonetheless, given the apparent reliance on local practice in the present decision, and the variations in application and outcomes seen before national courts, we will be watching all the more closely to see how the case law develops at the UPC. In particular, we will be interested to see whether the Court of Appeal takes the opportunity to set out a harmonised and definitive position on how the doctrine of equivalents is to be applied by the UPC.