Background

In NanoString Technologies (Inc, Germany GmbH & Netherlands BV) v 10x Genomics Inc (UPC_CoA_335/2023) the UPC Court of Appeal set out the principles of claim interpretation that have been applied in subsequent first instance decisions. In particular, the UPC Court of Appeal stated that the description and drawings must always be used as explanatory aids for interpretation, not just to resolve any ambiguities in the claim language, such that only after examination of the description and drawings does the scope of the claims become apparent.

Koninklijke Philips NV v Belkin GmbH

On 13 September 2024 the UPC Munich Local Division delivered its decision in the Philips v Belkin case in relation to infringement and validity of Philips’ patent, which had been declared to be a standard essential patent (SEP) in relation to the Qi wireless charging standard.

The claimed power transmitter receives a request to enter a negotiation phase and confirms the request by transmitting a confirmation “where the confirmation indicates an acceptance or rejection of the request to enter the requested negotiation phase”.

The parties disputed whether always accepting the request would satisfy this claim feature. In the corresponding German litigation, the Düsseldorf Regional Court and the Federal Patent Court decided from the wording of the claim that the service sender must be capable of indicating both an acceptance and a rejection. The Munich Local Division of the UPC, however, considered that the summary of invention section of the description disclosed an embodiment where an acceptance is always transmitted, and decided this embodiment was clearly supported by the wording of the claim. Linguistically, because of the “or” wording, the Munich Local Division considered it difficult to justify that the power transmitter must be able to reject a request. Equally, from a technical point of view the court considered the aim of the invention to enable entry into the negotiation phase, not to prevent it, and concluded this embodiment where requests are always accepted to be an optimal realisation of the objective of the patent.

NanoString Technologies Europe Limited v President and Fellows of Harvard College

On 17 October 2024, the Munich Central Division delivered its decision concerning the revocation action brought by NanoString Technologies against Harvard College’s patent directed to a method for detecting a plurality of analytes in a sample.

The parties differed in their definition of the skilled person, with Harvard College arguing the skilled person would only have experience with in situ techniques for detecting biomolecules.

The court did not share this view, deciding that not only did the patent make no fundamental distinction between in vitro and in situ techniques but also that the term “sample” is defined broadly in the patent, and therefore the skilled person would be familiar with both “in vitro” and “in situ” techniques for detecting biomolecules.

NanoString Technologies argued that the description supported the interpretation that “a plurality of predetermined sequences” could comprise one predetermined sequence: the relevant paragraph of the description stating “[i]n some embodiments, the nucleic acid label or nucleic acid tag can comprise any number of the pre-determined nucleic acid subsequences, e.g., ranging from about 1...”.

The Central Division was not convinced by this argument, and considered this interpretation to be at odds with the wording of the claim and the description as a whole, as well as the prior art.

Equally, the parties were divided as to whether or not a detection reagent stays bound to an analyte throughout the claimed method. The Central Division considered there was nothing in the claimed method or the description, when read in their technical functional context, to require the detection reagent to remain bound throughout the detection or to exclude the same detection reagent to be added before another round of detection is carried out.

SodaStream Industries Ltd v Aarke AB

On 31 October 2024 the Düsseldorf Local Division delivered its decision concerning the infringement claim brought by SodaStream against Aarke’s “Carbonator Pro” product. The patent in suit related to a device for carbonating a liquid contained in a container with a pressurized gas.

The court reiterated multiple times that the claim is not limited by preferred embodiments, either illustrated in a drawing or from the description, and that these are merely examples provided to give the skilled person context. Rather, the court referred to the description as support for its conclusions on claim interpretation, rather than limitations on the scope of protection.

Aarke argued the term “flask” was limited to a bottle-like receiving unit fulfilling the intended function of effective anti-burst protection, and had a literal meaning as a small container, usually with a wide base and a narrow neck. The court ruled the skilled person doesn’t consider the literal meaning of the claimed terms, but rather uses the context of the patent claim as a whole.

The court’s interpretation of the disputed claim features was based largely on the technical function each feature performs. For example, “flask” was construed as a component that fulfils the objective of receiving a container containing liquid, rather than limited to any particular shape. Equally, the court found the skilled person would interpret the interlocking connection between the filling head and the receiving flask as being part of the solution to overcoming the identified limitations of the prior art, namely that the prior art locking mechanism may not be sufficiently strong to protect the components of the device in the event of an empty bottle failure.

Discussion

Each of these decisions use the principles set out by the UPC Court of Appeal as the starting point for considering claim interpretation. Further, each decision begins with a detailed discussion on the technical background and knowledge of the skilled person, as the skilled person’s understanding of the objective of the invention was critical in all three judgments to determining the scope of the claims.

While the Munich Local Division considered the claims should be interpreted so as to include all the embodiments presented in the description as forming part of the claimed invention, the Munich Central Division discounted one embodiment in the description from its claim interpretation as being contradictory to the claim wording. The Munich Local Division did consider this point, stating that elements of the description and the drawings that provide an irresolvable contradiction with the claims should not be used to determine the subject matter of the patent. Equally, if elements of the description are presented as not being in accordance with the invention, they are not to be used to determine the subject matter of the patent.

The Düsseldorf Local Division seemingly took a broader interpretation that the claim features should be interpreted based on their technical function, and that the embodiments in the description are used for context and to provide support for the claim interpretation.

Interestingly, there was no technically qualified judge on the panel and the invention was in the mechanical field. We wait to see whether this is an approach more broadly applied in other fields and/or UPC divisions.

As seen in these decisions, the content of the description is critical to understanding the scope of the claims at the UPC.

Adaptation of the description to the subject matter of the granted claims has been a hot topic at the European Patent Office (EPO) in recent years. In October 2024 the EPO Board of Appeal, in T56/21, stated that not only should the granted claims be clear in themselves, adapting the description to match the subject matter of claims reduces the reservoir of technical information that could be used in national courts to determine the protection conferred by the patent. The EPO Board of Appeal also decided there was no legal basis for requiring the description be adapted to match allowable claims of more limited subject matter.

In view of these recent UPC and EPO decisions applicants should consider that, unless elements of the description are explicitly presented as not forming part of the claimed invention or are contradictory to the subject matter of the claims, such elements are likely to be used to determine the subject matter of the patent in the event of court proceedings at the UPC.

Case details at a glance

Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_335/2023
Parties: Nanostring Technologies (Inc, Germany GmbH and Netherlands BV) v President and Fellows of Harvard College and 10x Genomics Inc
Date: 26 February 2024 & 11 March 2024
Decision: dycip.com/nanostring-10x-coa

Decision level: Dusseldorf Local Division
Case: UPC_CFI_373/2023
Parties: SodaStream Industries Ltd v Aarke AB
Date: 31 October 2024
Decision: dycip.com/sodastream-aarke

Decision level: Munich Central Division
Case: UPC_CFI_252/2023
Parties: NanoString Technologies Europe Limited v President and Fellows of Harvard College
Date: 17 October 2024
Decision: dycip.com/nanostring-harvard-college

Decision level: Munich Local Division
Case: UPC_CFI_390/2023
Parties: Koninklijke Philips NV v Belkin (Limited and International)
Date: 13 September 2024
Decision: dycip.com/koninklijke-philips-belkin

Jurisdiction: European Union
Decision level: EPO
Party: F Hoffmann-La Roche AG
Citation: T56/21
Date: 04 October 2024
Decision: dycip.com/hoffmann-laroche-t5621