A recent decision by a Court of First Instance of the Unified Patent Court (UPC) has set out a four-step test for assessing infringement by equivalence for situations where a patent is not judged to have been infringed under a normal (i.e., literal) interpretation.
The decision states that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative:
- 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 dispute
The decision concerns European patent No. 2137782 entitled “Device and Method for Converting Light Energy into Electrical Energy”. The patent is owned by Plant-e Knowledge B.V. who, together with related company Plant-e B.V. (referred to collectively as “Plant-e”), launched infringement proceedings in the UPC against Arkyne Technologies S.L. (referred to as “Bioo”). Specifically, Plant-e alleged that Bioo’s product literally infringed method claim 11 or, alternatively, if it was found that claim 11 was not deemed to be literally infringed, that the claim was infringed by equivalence.
Bioo requested that Plant-e’s allegation of infringement be dismissed and that the patent be revoked.
The proceedings took place before The Hague Local Division of the Court of First Instance.
In essence, the patent covers a method for converting light energy into electrical energy using a living plant. By utilising photosynthesis, the living plant converts light energy into a feedstock for a microbial fuel cell (MFC). MFCs for generating electrical energy were already known in the art. However, the prior MFCs required externally provided feedstock, which is said by the patent to be non-sustainable and non-renewable. The purpose of the patent is therefore to provide a device/method that generates or regenerates energy in sustainable or renewable ways by utilising a living plant to produce the feedstock.
The method claim in question was divided by the Court into the following features:
- 11.1 Method for converting light energy into electrical energy and/or hydrogen
- 11.2 wherein a feedstock is introduced into a device that comprises a reactor
- 11.3 where the reactor comprises an anode compartment (2) and a cathode compartment
- 11.4 and wherein the anode compartment comprises a) an anodophilic micro-organism capable of oxidizing an electron donor compound
- 11.5 and b) a living plant (7) or part thereof, capable of converting light energy by means of photosynthesis into the electron donor compound
- 11.6 wherein the microorganism lives around the root (8) zone of the plant or part thereof”.
Plant-e’s product comprises a reactor having a single compartment which contains the anode, the cathode, a living plant and its roots, and also the microorganisms.
Bioo’s product differs from Plant-e’s product in that it contains two compartments: an upper compartment containing a living plant and its roots and a lower compartment containing the anode and the microorganisms.
Prior to the dispute Bioo had agreed a non-exclusive licence of the patent to commercialise a version of a fuel cell device. However, Bioo terminated the licence agreement, in its own words due to “disappointing sales”. Bioo stated that the method according to claim 11 “does not work well, e.g. because the roots as they grow tend to damage the anode and also disrupt the anaerobic conditions”. It was at this point that Bioo allegedly improved the setup with the two-compartment version, for which it had filed its own patent application.
Literal infringement
The Court found that features 11.1 – 11.4 were all present on Bioo’s product, but that features 11.5 and 11.6 were not because the living plant and its roots were separated from the anode and the microorganisms. Accordingly, the Court found no literal infringement.
Infringement by equivalence
The UPC Agreement contains no specific provisions on the doctrine of equivalence. However, the Court turned to Article 2 of the Protocol to Article 69 EPC, which makes it clear that equivalence must be considered when assessing the scope of protection, as basis for considering whether the claim scope could be extended.
As set out above, the Court applied a four-step test to establish infringement by equivalence. Interestingly, in the absence of any guidance from UPC case law on the actual test to be used for taking equivalent elements into account, the Court applied a test that had been used in various national jurisdictions, notably the Dutch courts, in line with what both parties proposed.
- Technical equivalence: the Court determined that the teaching of the patent is to create an MFC that is independent of externally furnished fuel, and this is achieved by introducing a living plant into the system as a constant supplier of organic material to the reactor. The Court found that Bioo’s product is considered technically equivalent to the teaching of the patent as the plant is part of the reactor and is a source of additional organic material for the battery. The plant in Bioo’s product has the same function as in the claim and solves the same problem. It does this in a similar way, the only difference being an extra compartment which does not affect the function of the plant and is deemed equivalent.
- Fair protection for patentee: the Court found that the patent claims a new category of MFCs by introducing a plant to the reactor and obtaining electricity from organic material originating from the photosynthesis by that plant. Plant-e’s invention has since been given its own name, the Plant-based-Microbial Fuel Cell (“P-MFC”). It was stated by the Court that a fairly broad scope of protection is therefore inline with the contribution to the art and that it is appropriate and proportionate that protection be extended through equivalence to cover Bioo’s product, in which exactly the same principle is implemented.
- Reasonable legal certainty for third parties: the Court stated that this requirement is met if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is clearly broader than the wording of the claims and there is – in the eyes of the skilled person – no good reason to limit the scope of protection to the strict wording of the claims. This question was answered in the affirmative because it was found that the skilled person will understand that Bioo’s product is another way to obtain the result in a similar way.
- Is the allegedly infringing product novel and inventive over the prior art? This question was also answered in the affirmative because at the priority date of the patent Bioo’s product would have been novel and inventive due to the provision of the living plant as part of the device to supply fuel to the battery.
Our comments
This decision is a continuing reminder that it is important to consider whether the scope of a claim can be extended beyond its normal interpretation when faced with a patent or published application that presents a potential infringement risk. Bioo ostensibly considered it had redesigned its product in such a way that it avoided infringement by implementing a two-compartment design, whereas, in fact, it had not.
The decision is welcome as it demonstrates how the UPC might assess similar patent infringement scenarios going forward. However, as this is an isolated decision by The Hague Local Division, it is not clear how Local Divisions in other countries, notably Germany, would have approached the same set of facts.
Furthermore, the decision was not appealed, so it is unclear if the Court of Appeal of the UPC will uphold the four-step test.
It is noted that the four-step test differs from the test used in the UK as set out in the Actavis v. Eli Lilly case. That said, it is likely, in our view, that the same conclusion would have been reached had the UK test been applied.
Representation by Forresters
We have a team of experienced UPC representatives (who also have significant EPO opposition experience) ready to handle your UPC litigation as well as opt-out strategies. We can coordinate your UPC litigation with parallel opposition proceedings before the EPO and any national litigation.
We also have considerable experience in providing freedom-to-operate opinions and supporting national litigation where the doctrine of equivalence has been a key part of the dispute.
Please get in touch if you have any questions.
