Business as usual in UPC equivalence decision
3 December 2024
The Netherlands Local Division of the Court of First Instance of the Unified Patent Court (UPC) has recently issued the first UPC decision involving infringement by “equivalence”. Infringement by equivalence occurs when an alleged infringing product or process does not fall within the literal scope of a patent claim, but nevertheless constitutes an infringement because it is said to be an “equivalent” of the claimed invention.
The Court explained that the Agreement on a Unified Patent Court (UPCA) does not contain any provisions on the scope of protection conferred by a patent, but referred to Article 69 of the European Patent Convention (EPC), and the Protocol on the interpretation of Article 69 EPC. In the Court’s view, Article 2 of the Protocol on the interpretation of Article 69 EPC makes clear that equivalence must be considered when assessing the scope of protection.
The case in question concerned a European patent EP2137782 B1 owned by a Dutch start-up, Plant-e Knowledge B.V. The patent relates to a microbial fuel cell which can convert light energy into electricity using a living plant. The plant acts a supplier of organic material to micro-organisms in the reactor, avoiding the need to provide an external source of fuel. A key point in the question of infringement was the location of the living plant within the fuel cell.
The infringer, Arkyne Technologies S.L. (referred to as “Bioo”), is a Spanish start-up which was selling several types of biofuel cell. One of these, the “Bioo Panel” was marketed as “a biological battery capable of producing electricity by feeding on natural soil and using plants to maintain the ecosystem without damaging it”. The panel includes a plant layer in an upper compartment, separate from the anode of the cell, which is in a lower compartment. The independent claims of the patent are limited to the living plant being in an anode compartment of the cell, and so the court found that the Bioo Panel fell outside the literal scope of the claim, since it does not meet the requirement of having the living plant in the anode compartment.
The court then went on to consider whether the Bioo Panel was an equivalent. To do this, the court applied a test which involved answering the four questions set out below. These questions are similar to those applied by Dutch courts when considering the issue of infringement by equivalence.
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
- 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?
- Is the allegedly infringing product novel and inventive over the prior art?
The court found that all of these questions should be answered “yes” and thus concluded that the Bioo panel was an infringement.
In particular, regarding the first question, the court found that the Bioo Panel was considered to be an equivalent as the plant is part of the reactor and is a source of additional organic material for the battery. The difference relating to the compartment did not affect the function of the plant and was deemed to be an equivalent.
This decision clarifies that the concept of equivalence will be applied by the UPC when considering infringement. Further, the approach to equivalence taken in this case does not appear to represent a significant departure from the approach adopted previously in the national courts of EPC states when considering infringement by equivalence.
It is clear from this decision and other recent UPC decisions that, in its early life, the court is taking a “business as usual” approach to questions put before it. Inspiring confidence in the patent community and providing predictability as to the likely approach to making decisions will be important in establishing the UPC as the court of choice for European based patent litigation.
It remains to be seen whether this decision is appealed, and if so whether the UPC Court of Appeal agrees that this is the correct test to apply for infringement by equivalence but for now, at least, it’s business as usual.
Chris Hunter
Electronics, Computing & Physics group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP December 2024
