The Court of Appeal of the Unified Patent Court (CoA) refines the principles set out in decision CoA_UPC_335/23 in a recent further order CoA_UPC 1/24. In the headnote of this order it sets out that “claim features must always be interpreted in the light of the claim as a whole.”
The patent claim at issue related to an electronic label for sales areas, i.e. a display used in supermarkets to display product information. The relevant features of the independent claim read as follows:
Electronic label for sales areas comprising …
Feature 7: a printed circuit board (35) housed in the case (30) on the side of the back of the case;
Feature 8.3: the electronic chip (37) of the radio frequency device being disposed on the printed circuit board (35);
Feature 8.4: the antenna (38) of the radio frequency device being disposed on or in the housing on the side of the front of said electronic label.
According to the CoA the combined interpretation of these features teaches the skilled person that the chip and antenna of the radio frequency device should not be placed in the same location in or on the case. The person skilled in the art will understand that feature 8.4 requires that the antenna is disposed on or in the case at a location more to the front of the electronic label than the printed circuit board with the chip on it.
In (again) applying Art. 69 EPC and consulting the description, the CoA found several passages ([0034] to [0040] of the specification) confirming this interpretation.
Based on this principle, the CoA denied patent infringement of an electronic label, wherein the antenna for receiving signals and a printed circuit board (PCB) are arranged on opposite sides of the housing. In particular, it rejected plaintiffs interpretation that feature 8.4 only stipulates that the antenna cannot be placed behind the PCB, i.e. applying a very broad interpretation of the term “on the side of the front …”.
In item 37. of its order, the CoA summarizes its decision as follows: “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”.
COMMENT:
With this order the CoA refines its jurisdiction on claim interpretation by ruling that features within a patent claim have always to be interpreted in light of the claim as a whole. Interestingly, this order is again against the standard applied by the EPO, which generally interprets claims by taking out individual features and interpreting same “in their broadest possible meaning” (see e.g. decision T1473/19).
Additionally, the CoA made clear the interpretation is to be made without consulting the prosecution history, denying the file wrapper estoppel approach.
Finally, a detailed read of the decision makes it clear that a too detailed description of details as to the functioning and interaction of constituents within a system may have a significant impact on the scope of protection of a claim. Thus, it appears that statements and explanations of effects and interactions which could give rise to a narrow(er) interpretation of a patent claim should be avoided in the specification of a patent. Based on the present attitude towards the prosecution history as a tool for claim interpretation, it appears more appropriate to provide such statements/explanations during prosecution, if at all needed.
Dr. Mathias Ricker, Patent Attorney, Partner
Thomas Schachl, LL.M., Attorney-at-law, Partner
