The facts: The company 10x Genomics filed an infringement action against the company NanoString in Preliminary Injunction proceedings based on its European Patent EP. Nanostring filed as counterclaim a revocation action with the local chamber in Munich (Munich court). During the discussion, it turned out that the parties disagreed with regard to the interpretation of some features within the claim at issue.
The decision: The Munich court, as the 1st instance venue, ruled that for the interpretation of features within a patent claim, the description and (if present) the drawing need mandatorily to be taken into consideration. This ruling based on Art. 69 EPC, which regulates the scope of protection of European patents. Interestingly, the Munich court ruled that only the features at dispute need to be interpreted in line with Art. 69 EPC.
The decision of the Court of Appeal (CoA) confirmed the application of Art. 69 EPC for the interpretation of claim features. It, however, went a step further compared to the Munich court in that it ruled that each and every feature of a claim needs mandatorily be interpreted and its meaning needs to be determined by the court and not only features in dispute.
As to the rational behind this decision the court set out that it is of utmost importance that in court proceedings the exact scope of a patent claim is to be determined as exactly as possible in order to come to well-reasoned rulings on both validity and patent infringement.
Comment: it is not to be overestimated that in its first decision on material patent law the CoA of the UPC clarified one of the most important aspects, namely how claims are to be interpreted. This is an important achievement with regard to legal certainty. The clarification of this aspect by the UPC is the more astonishing when taking into account that the EPO did not clarify/harmonize this topic in over 40 years of existence2. However, the EPO already reacted in decision T439/22, where the question of claim interpretation was referred to the Enlarged Board of Appeal.
For the prosecution before the EPO it becomes even more important to carefully study the text intended for grant, which often contains amendments by the Examining Division (ED) and to make sure that the description is appropriately adapted to the claims to be granted “with an eye towards litigation”. In particular phrases such as “not belonging to the invention” or “not part of the invention”, which are often used by the EDs to express its understanding that certain embodiments do no longer fall under the literal meaning of the claim should be avoided. At first, such phrases are inherently unclear. In addition, it is to be ruled out with almost 100% certainty that the ED has interpreted the claims to be granted in line with Art. 69 EPC before introducing such phrases.
Dr. Mathias Ricker & Thomas Schachl
1 Decision UPC CFI 2/23 and UPC CoA 335/23; for a detailed summary of this decision, see i.a. Peter Meier-Beck in GRUR Patent 2024, 178 seq. as well as our partner Dr. Michael Wallinger in Mitteilungen 2024, 266 seq. Einheitliches Patentgericht - die nächsten Monate, both contributions being in German language.
2 The respective referral was made with the EboA (case number G1/24), which has not yet decided on admissibility of same.
