Celebrating the UPC’s 1st anniversary: 2 important decisions of the UPC Court of Appeal

In some of its very first decisions, the UPC Court of Appeal gives its first guidance on the standard of proof in preliminary injunction cases and how claim features should be interpreted.

The Unified Patent Court (“UPC”) has been up and running since the 1^st of June 2023. Naturally, it took a while before cases covering substantive patent law were brought before the UPC Court of Appeal (“CoA”). We are very glad to be able to present you now with two recent decisions in which the CoA gives guidance on the interpretation of patent claims and the burden of proof to be applied in patent matters. These cases represent the first steps towards a new, more uniform patent law application throughout Europe.

 

1. NanoString Technologies 10x Genomics (26 February 2024)

In the case NanoString Technologies v. 10x Genomics,[1] the CoA set out that the burden of proof in preliminary injunction cases is to be based upon “the balance of probabilities”. This entails that a sufficient degree of certainty is required that the claimant is entitled to initiate proceedings and the patent is infringed, at least more likely than not. On the other hand, the injunction will be rejected if the UPC considers the patent – based upon the balance of probabilities – to be more likely than not invalid.

In the same decision, the CoA also gave guidance on the interpretation of patent claims. Under the European Patent Convention, patent claims serve to define the scope of protection of the patent and thus the rights of the patent proprietor. To combine adequate protection for the patent proprietor with sufficient legal certainty for third parties, the court set forth the following interpretation rules:

• The patent claim is not only the starting point but the decisive basis for determining the protective scope of the European patent.

• 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.

• However, this does not mean that the patent claim serves only as a guideline and that its subject-matter may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated.

• The patent claim is to be interpreted from the point of view of a person skilled in the art.

These principles for the interpretation of patent claims equally apply to the assessment of the infringement and the validity of a European patent.

 

2. VusionGroup Hanshow Technologies (13 May 2024)

In its decision VusionGroup v. Hanshow Technologies,[2] the CoA repeated the above standard of proof and claim interpretation laid down in NanoString Technologies v. 10x Genomics.

Following the first instance decision of the Munich Local Division, the CoA decided that based upon the balance of probabilities, there was not a sufficient degree of certainty that the defendant’s products infringed upon the patent at stake. The request for a preliminary injunction of the claimant was therefore again rejected.

Interestingly, the parties submitted documents from the patent’s prosecution history before the European Patent Office to argue their case, raising the question of whether it is allowed to use documents from the prosecution file. However, the CoA decided that these documents did not bring anything new to the table, and in doing so, left the question unanswered of whether the prosecution history may be taken into account when determining the extent of protection of a European Patent before the UPC.

 

3. Conclusion

These two decisions illustrate that the UPC is adopting its own approach to European patent law issues that is not necessarily the same as the standards maintained in the established national case law or at the EPO, especially concerning the interpretation of patent claims. In this regard, the UPC is now forging a new unified patent law practice for Europe while establishing a new, enlarged level playing field for European patent holders.

For its 1^st anniversary, the UPC seems in an excellent shape, and is even celebrating further expansion by welcoming Romania as a new member as from the 1^st of September 2024.

 

CAPE IP

7 June 2024

 

Picture: Court of Appeal Luxembourg (UPC website – https://www.unified-patent-court.org/en/court/locations).

[1] Order of 26 February 2024 (https://www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023%20AnordnungEN.final_.pdf) in case UPC_CoA_335/2023; App_576355/2023.

[2] Order of 13 May 2024 (https://www.unified-patent-court.org/sites/default/files/files/api_order/Anordnung%20SES%20Hanshow%20fin%20EN.pdf) in case UPC_CoA_1/2024; APL_8/2024.