UPC Munich Local Division takes a novel approach to claim interpretation (SES vs Hanshow, UPC-CFI-292/2023)

http://ipkitten.blogspot.com/2024/01/upc-munich-local-division-takes-novel.html

The decision of the Munich Local Division of the UPC in SES vs. Hanshow provides a first indication of how the nascent UPC will approach patent claim interpretation. Initial decisions from the UPC have been light on analysis of the relevant substantive legal provisions. The Munich Local Division in SES vs Hanshow took a rather peculiar approach to claim interpretation, for which this Kat struggles to find basis in either EPO or national case law. 

SES vs. Hanshow: Case background

The case (UPC-CFI-292/2023) heard by the Munich Local Division of the UPC, related to the alleged infringement of SES’s patent EP 3883277 by Hanshow. The patent related to an electronic label for providing pricing information about a product to a consumer. SES submitted that Hanshow were offering for sale electronic labels falling under the scope of the granted patent. SES applied for a preliminary injunction at the UPC against Hanshow.

The Munich Local Division of the UPC were not convinced that the defendants were infringing the patent, and thus dismissed SES’s application for interim measures. Key to the court’s decision was the question of how the claims should be interpreted. 

The decision in SES vs. Hanshow does not indicate what law was applied for the purposes of claim interpretation. However, under Article 24 UPCA, the applicable laws for the UPC include the EPC and the national law of the contracting states.  

Claim 1 as granted claimed an electronic label comprising a printed circuit board (PCB) and an antenna (English translation). The parties disputed the way in which the location of the PCB and antenna should be interpreted from the claim. The claim required that:

• The PCB was located in housing, “on the side of the rear surface of the housing”. 
• The antenna was located “on or in the housing on the side of the front surface of the electronic tag“. 

The Patentee argued that a skilled person would understand both of these features in view of the disclosure of the patent as a whole. In particular, the Patentee argued that the skilled person would understand from the description and figures that the claims did not require the PCB to be in contact with or mounted directly on the housing. Instead, the PCB could be located slightly away from the housing, e.g. because of other components mounted on the housing. The defendants, by contrast, argued that the wording of the claim clearly required the PCB to be technically and functionally aligned with the rear side of the housing. 

With regards to the location of the antenna, the Patentee argued that it would be clear to a skilled person from the description and figures that the antenna had to be arranged in the front area of the electronic label in order to enable a reliable data connection. However, the Patentee argued that a skilled person would not infer from this that the antenna had to be arranged in front of all the other features, e.g. the display screen. The defendants argued by contrast that it would be clear to a skilled person that it was a core aspect of the invention that additional elements between the front surface and the antenna should be avoided as a matter of principle in order to achieve an optimal wireless connection. As such the antenna had to be positioned in front of the display screen. 

The Munich Local Division was of the view that the two features in questions had to be interpreted together. As explained throughout the description, both components were intended to interact technically. To the Munich Local Division, the claim was thus obviously an attempt to regulate the technically existing interaction between the PCB and antenna by the spatial arrangement of both components. 

Use of the application as filed and prosecution history in the claim interpretation

It is at this juncture that things start getting interesting. In order to guide its interpretation of the claims, the UPC Local Division looked to prosecution history. In particular, The Local Division, in order to elucidate the meaning of the granted claims, considered it appropriate to compare the granted claims with those as originally filed: “The original version of the claim, […] can be used as an aid to interpretation in connection with amendments made during the grant procedure”.

The original claims specified that the PCB and the antenna should be “at a distance” from each other. During prosecution, the claims were amended to further clarify this feature, by specifying that the PCB was located on the side of the rear surface of the housing, whilst the antenna was located on or in the housing at the front side. In view of these amendments, and the technical purpose of the features explained in the description, the UPC Local Division concluded that the antenna had to be arranged “without restriction and thus as a whole” on the side of the front surface of the electronic label. Similarly, the PCB had to be arranged in its entirety on the side of the rear surface of the housing. For the UPC Local Division, it remained an open question whether or not the antenna could be located behind the display screen, given that the claim did not establish an explicit spatial relationship between the screen and the antenna. 

The UPC Local Division were not convinced that the alleged infringing items fell under the scope of the claims as they had interpreted them. Importantly, in the alleged infringing product, a significant part of the antenna was allocated to the surface of the rear side of the housing. As such, the Local Division was of the opinion that the antenna could not concurrently be said to be “arranged on the side of the front surface of the electronic label”. The Local Division thus dismissed SES’s application for interim measures. 

The UPC adopts a novel approach to claim interpretation

Use of the original claims and prosecution history is not how the Boards of Appeal of the EPO generally interpret the claims of a granted patent. On the contrary, recent Board of Appeals have ignored everything other than the patent as granted (T 450/20, IPKat). 

Admittedly, however, there is currently disagreement among the Boards of Appeal as to the correct approach to claim interpretation. As recently reported on IPKat, a EPO Board of Appeal is currently poised on the brink of referring on this very question to the Enlarged Board of Appeal (EBA) (T 439/22, IPKat). Notably, in its preliminary opinion, the Board of Appeal in T 439/22 argued that a referral was needed given that a point of law of fundamental importance had arisen (Article 112(1) EPC): “a narrow interpretation of the claim language ignoring a definition giving [sic] in the description would […] conflict with a broader interpretation by national courts or the UPC when having to deal with the granted claim later during the live [sic] of the patent”. Interestingly, if the UPC routinely begins to use the application as filed and the original claims to aid claim interpretation, this would also greatly undermine the EPO’s insistence that alignment between the description and the granted claims is needed in order for the granted claims to be clear (IPKat). 

However, even though the correct way to interpret claims at the EPO requires some clarity, this Kat is not aware of Boards of Appeal case law supporting the use of the original claims as a guide to claim interpretation. This approach to claim interpretation taken by the Local Division is not only out of step with the EPO. The Munich Local Division of the UPC in SES vs. Hanshow also departs from the general approach to claim interpretation taken by the national courts of UPC states. In Germany, for example, prosecution history should not used for claim interpretation, i.e. there is no file wrapper estoppel (Kunststoffrohrteil, X ZR 43/01) (although prosecution claim amendments may possibly be taken into account for consideration of infringement by equivalence). For further analysis of the contrast between SES vs. Hanshow and the German national courts’ approach to claim interpretation see Dr Michael Wallinger’s EPLIT blog. 

The decision of the Munich Local Division of the UPC in SES vs. Hanshow therefore appears to ignore the normal principles of claim interpretation under the EPC and national law, even taking into account the current uncertainty about claim interpretation at the EPO. 

Final thoughts

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