The Munich Local Division (MLD) of the UPC has taken an unexpected approach to claim interpretation in their first foray into substantive claim construction, which could have wide-reaching ramifications for the future of the UPC.
The case involves an infringement action brought by SES-imagotag SA (SES) against Hanshow Technology Co. Ltd. (Hanshow) in relation to SES’s European patent EP3883277. SES applied for a preliminary injunction prior to the case being heard fully – the MLD were unconvinced that Hanshow was infringing EP’277 and rejected the application for interim measures.
Key to this decision was an analysis of the claim language of EP’277. EP’277 relates to electronic labels, for use in a retail outlet, that communicate with a central server and to present information on a display (e.g. for a customer browsing).
The elements of the claim that were considered in detail were:
- “a printed circuit board (PCB) housed in the case on the side of the back of the case”, and
- an “antenna …being disposed on or in the housing on the side of the front of the electronic label”.
Between SES and Hanshow there were differing assessments of how these two features should be interpreted. In essence, is the PCB required to be in contact with or mounted to the back of the case or could it be spaced from the back (but still in the “back region”)? And, should the antenna be directly behind the front case of the label or can other components be placed in front of the antenna (i.e. between the antenna and the front face)?
Essentially, should the wording of the claim be taken at face value or should the description be used to infer some functional relationship that is imparted by the spatial configuration of the PCB and antenna?
At this point, the MLD decided to consider the file wrapper from prosecution – this included the original wording of the claim in the application as filed and the ascribed functional relationship between the components. The original claims included wording indicating that the PCB and the antenna should be spaced apart and the discussed technical purpose of doing so was to limit interference.
This feeds in to the MLDs construction which outlines that “the spacing between the PCB and antenna, which is considered necessary for technical reasons, means that a clear assignment can and must be made…” and also that “the antenna…should be arranged unrestricted and therefore entirely on the side of the front surface of the electronic label”.
Hanshow’s alleged infringing product includes a part of the antenna that lies along an upper section at the rear of the case. Thus, the MLD was unconvinced that there was infringement.
Novel approach and implications
The EPO has a well-established practice in claim interpretation in which the file wrapper and original claim wording is not relevant when interpreting the granted claims. Sometimes, the description is used to clarify terms but not to impart additional limitations on claim wording that is not evident from the claims themselves. The German Courts also have a well-established process that does not involve referring to the file wrapper.
Instead, the decision appears to be much more similar to Dutch practice (and may also be familiar to US patent practitioners). However, the MLD’s decision does not explain the foundation for taking this approach for claim interpretation, or alternative options that may have been considered.
From a UK perspective, this is not what we are used to, since UK court decisions tend to outline the clear basis found by the judge in reaching a particular decision. Further, from a German perspective, it may be perplexing as the MLD board included three German legally qualified judges (one of whom being the presiding judge and another being the rapporteur) and a legally qualified judge from the Netherlands. However, this decision does not appear to be rooted in German legal tradition of claim construction.
This is an early indication that the UPC will diverge from EPO (and German) practice. Of course, the newly set-up UPC is a chance for judges who are not happy with the legal tradition they come from to break fresh ground and lay new foundations. However, one would expect a new court to make clear the precise basis on which decisions are reached. As stated above, not much of such basis and foundations can be found in the present decision. Explaining basis for decisions is vital for establishing where errors may have occurred when considering lodging appeals against judgements, and to encourage harmonisation across different divisions and levels of the court.
In our view, this decision indicates that it is now up to the Court of Appeal of the UPC to settle on a single harmonised practice for considering such issues.
