The UPC has been issuing orders and decisions dealing with patent validity for over a year. The Court’s first substantive, albeit summary, decision on patent validity was provided by the Munich LD when it granted an application for provisional measures in 10x Genomics v Nanostring. Since then, the Court has issued numerous decisions and orders dealing with numerous aspects of patent validity. With the number of substantive decisions issued by the Court expected to accelerate over the coming months, we look at some themes on how the Court has approached various issues of patent validity thus far, and contrast this with the approach taken at the EPO and national courts.
In this series of articles, we are looking at a number of emerging themes in UPC case law. In the previous article we looked at the role of expert evidence, and in our next article we will look at the significance of added matter. Here we will look at how the Court is approaching claim interpretation, and the role that the description and drawings and the prosecution history of the patent might play.
Using the description and drawings to interpret the claims
The Court of Appeal addressed the issue of claim interpretation in its very first decision on substantive patent law. Specifically, in 10x v Nanostring (Court of Appeal, UPC_CoA_335/2023, 26 February 2024), the Court of Appeal considered the question of what can be used to interpret the claims. It provided the following:
“The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.”
“These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.”
This might not necessarily sound at all controversial to patent practitioners in national courts where, both in the UK and elsewhere in Europe, claim interpretation is typically with reference to the wider disclosure of the patent. Indeed, the Court of Appeal dicta on claim interpretation reflect the wording of Art 69 EPC and the Protocol on Interpretation, which relate to the scope of protection conferred by a European patent.
Art. 69(1) EPC states:
“The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”
Whilst Art 1 of Protocol on the Interpretation of Article 69 EPC provides that
“Article 69 should not be interpreted as meaning that the extent of the protection … is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. …”
The reason that the Court’s approach has garnered so much attention, however, is that the Court of Appeal has specifically said that these principles of interpretation apply equally to validity as well as infringement. This has given rise to a perceived tension with established case law at the EPO on claim interpretation.
According to Art 84 EPC “matter for which protection is sought” (which relates to validity) is defined by the claims, which should be clear. Art. 84 EPC requires that the description and drawings should support the claims but makes no requirement that the description and drawings be used to interpret the claims.
Indeed, in one line of case law at the EPO, the Boards of Appeal have decided that the description and drawings should only be used where there is ambiguity in the claim or when looking at whether an amendment has extended the scope of protection in a post-grant amendment (in which case Art. 69 EPC may become relevant).
However, there is another line of case law that applies Art 69 also in the context of validity so that the description and drawings are used to interpret the claim even when there is no ambiguity. In fact, two recent TBA decisions have cited the UPC Court of Appeal on this point (T 177/22 and T 439/22). We have looked at the possible divergence between the EPO’s approach and that of the UPC in a previous article, and the UPC’s approach has been cited in the decision which referred the question of claim interpretation to the Enlarged Board of Appeal (EBA) in G1/24.
Before the EBA has had its say on the matter, the Boards of Appeal in T 56/21 recently addressed the question of claim interpretation in the EPO as a prelude to its decision that there is no requirement to amend the description to conform to the claims. The Board held that the extent of protection and Art 69 EPC are not relevant in grant proceedings (though notably this argument does not apply to opposition proceedings):
“Applying the guidance of the Protocol in grant proceedings would amount to putting the cart before the horse. Indeed, the purpose of the grant proceedings is to arrive at an allowable definition in one or more claims of the matter for which protection is sought, rather than to establish before grant what the appropriate protection derived from such wording might be.”
The Board also drew a sharp distinction between “literal interpretation” under Art 84 EPC and a broader interpretation under Art 69 EPC. This distinction puts the decision in tension with the UPC’s approach that the principles for claim interpretation apply equally for infringement and validity.
It will be interesting to see how the EBA will resolve the question of claim interpretation especially in light of UPC case law and T 56/21.
Using the prosecution file history to interpret the claims
Another aspect which has arisen in decisions at the UPC, and which may hint at future tension with some national case law, is on the use of the prosecution file for interpretation.
In SES v Hanshow (Munich LD, UPC_CFI_292/2023, 20 December 2023) the Munich LD interpreted the claims using the description but then also referred to the claims as originally filed, stating that they can be used for interpretation:
“The original version of the claim, which can be used as an aid to interpretation in connection with amendments made during the grant procedure, had already established a direct connection between the chip arranged on the printed circuit board and the antenna.”
In effect, the Munich LD suggested that the pre-grant prosecution history of the patent could be used to interpret the intended meaning of its claim language post-grant.
The decision was subject to appeal and, perhaps frustratingly, the Court of Appeal avoided addressing the question of when prosecution file history may be used for interpretation.
For the Court of Appeal, in this particular case, the claim could be interpreted in light of the description and drawings without recourse to the prosecution file history. Therefore, there was no need to address the question of when prosecution history can be taken into account (UPC_CoA_1/2024, 13 May 2024):
“The interpretation of claim feature 8.4 given above is based on the wording of the claim, read in the light of the description and drawings from the perspective of a person skilled in the art based on their common general knowledge, without having regard to the prosecution history of the patent. The parts of the European Patent Office examination file cited by the parties do not shed any new light on this interpretation. Therefore, the Court of Appeal in this case does not need to address the question whether the prosecution history can be taken into account when determining the scope of protection of a European patent.”
Düsseldorf LD has, on the hand, has taken a stricter approach to introduction of prosecution file history for claim interpretation. In Ortovox v Mammut (UPC_CFI_452/2023, 9 April 2024), it held that:
“… statements made by the applicant in the grant proceedings in the context of the patent interpretation […] are in principle not admissible material for interpretation. They are therefore not to be taken into account in the context of patent interpretation from the outset.”
In a separate case, the Düsseldorf LD also found that the formulation of the two-part form over a particular prior art document cited during prosecution could not be used to make an inference about how a particular claim feature should be construed. The Court held that the two-part form “does not have any implication for the interpretation of the claim with respect to the scope of protection regarding infringement issues” and that “[a]s the claim must be interpreted as a whole, generally every feature – no matter where in the claim structure it appears – has to be taken into account” (SodaStream Industries Ltd. v Aarke AB, ORD_598499/2023, 31 October 2024).
It is likely that the Court of Appeal will need to address the role of prosecution history in claim interpretation sooner rather later given that there are different tests in Europe for when prosecution history can be used. For example, in France and the Netherlands it is easier to use prosecution history for claim interpretation than in the UK and Germany.
Moreover, it remains to be seen how the Court will approach inconsistencies between the claims, the description and the prosecution history of case.
Contradictions between prosecution history and the description
A recent decision from the Munich LD, would suggest that for that Division at least, in the case of inconsistency, primacy should be given to the description and drawings. In Philips v Belkin (Munich LD, UPC_CFI_390/2024, 13 September 2024, discussed in our previous article), the question of infringement hinged on whether a claim directed to a power transmitter, which is required to send an “accept” or “reject” message during a negotiation phase, is infringed by a device that only ever responds with an “accept” message.
The Local Division noted, based on letters from the applicant to the EPO during prosecution, that the feature in question was added during prosecution to clarify that the acknowledgement performed by the transmitted, was not “merely to confirm receipt of the messages” but to respond to the request for negotiation.
Thus, the Court concluded that the prosecution history would suggest that a mere acknowledgement of receipt did not “correspond to the teaching of the patent” (Decision, B.II.2.a.bb.(5)).
On the other hand, however, the Court followed the Patentee’s arguments that the description of the patent identified embodiments of the invention where it was not a requirement that the power transmitters are able to reject a request for a negotiation phase.
Thus, there was an apparent contradiction between how the claim would be interpreted from the prosecution history, and how it would be interpreted in light of the description and drawings of the patent as granted. In this particular case, the Court elected to apply the claim interpretation which was consistent with the description. In reaching its conclusion, the Court noted that the claim “must be understood in such a way that there are no contradictions with the statements in the description” (Decision, B.II.2.a.bb.(5)(f)(bb)).
Specifically, the Local Division noted that an interpretation where an embodiment in the description is not covered by the patent claim “could only be considered if other possible interpretations leading to the inclusion of at least a part of the [embodiment is] necessarily ruled out or if the patent claim provides sufficiently clear indications that something is actually claimed that deviates from the description”. Thus, the Local Division concluded that the language of the claim should be interpreted such that it covered the embodiment identified as part of the invention in the description.
For the Munich LD at least, then, it is willing to consider the content of the prosecution history, but ultimately the interpretation of the claims must be consistent with the description and drawings and, if there are discrepancies between the prosecution history and the description, then the prosecution history can be disregarded.
In the UK, according to the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48, prosecution history is only relevant if:
- the point at issue was truly unclear if confined to the specification and claims of the patent, and
- the contents of the file unambiguously resolved the point;
or it would be contrary to the public interest for the contents of the file to be ignored.
The approach of the UPC in Philips v Belkin is arguably consistent with the UK approach because the claims could be interpreted with the description and the contents of file did not unambiguously resolve the point. However, from the decision it is not entirely clear whether the prosecution history was admissible but not helpful or inadmissible. In a UK approach, given that the point was not unclear if confined to the specification and claims there would no need to even consider the prosecution history.
Conclusion
It will be interesting to see how the UPC’s approach to claim interpretation develops, particularly if and when the Court of Appeal is prompted to provide guidance on the extent to which the prosecution history can be used, and any interplay this may have with the use of the description and drawings.
