As was noted in our previous article, the reasoning for deciding that Ballino had not acted with sufficient urgency and the reasoning for deciding that claim 1 was not infringed was awaited.

Sufficient urgency

Prior to commencing the suit earlier this year the previous owner of the patent wrote to Kinexon in October 2023 alleging infringement. This was known to Ballino. Kinexon responded in November 2023, explaining that it did not infringe as no sound sensor was used and this is required by claim 1. A further letter was sent by Ballino in February 2024, and in response Kinexon filed a protective letter with the Unified Patent Court (UPC) in March 2024.

Ballino filed proceedings for preliminary relief preventing direct, indirect and equivalent infringement of the patent in Germany and the Netherlands. There were various other requests from all sides.

The Hamburg Local Division applied the approach to urgency used in Curio Bioscience Inc v 10x Genomics Inc and held that the application for preliminary relief lacked urgency. The Local Division held that given Kinexon had responded in November 2023 denying infringement, the claimant would have known that judicial recourse was necessary to determine the matter. As far as the Local Division was aware no further steps had been taken by the claimant to investigate the facts or technology, nor contact UEFA in advance of issuing proceedings. Therefore, the claimant did not diligently initiate and complete the required steps at an early stage and thus lacked the required urgency.

Infringement

On the point of infringement, the Local Division was not convinced with sufficient certainty that the defendants infringed the patent as, on summary examination, there was no direct/indirect literal infringement and the argument of infringement by equivalent means was not sufficiently demonstrated.

The Local Division construed the claims using the standard set out in NanoString Technologies Inc v 10x Genomics Inc at the UPC Court of Appeal. With this construction, and as anticipated in our previous article, the Local Division held that the claims required the sensing of acoustic sound waves in air rather than the broader vibrations. Moreover, they found that the patent’s own dictionary differentiated between sound produced by the ball and vibrations in the ball, and that the claims of the patent relate only to sound signals produced by the ball. Therefore, the Local Division held there was no direct infringement.

The Local Division also considered the infringement by equivalent means and found that it is not enough to reduce the question of equivalence to just the effect, but rather how the effect is achieved. Therefore, processing sound as required by the claim is not equivalent to processing acceleration as done by the product and so there was no infringement by equivalents.

Conclusions

It was interesting to read how the Local Division handled the question of infringement by equivalence. While the point in this case was only cursory, it does seem to suggest that the UPC may require a consideration of how an effect is achieved, rather than just that the integer achieves the same effect.