UPC Weekly - UPC Court of Appeal confirms their own case law on claim interpretation but sidesteps question of file wrapper estoppel

2024 Week 20

The UPC Court of Appeal have issued another decision on a preliminary injunction – this time in the case of VusionGroup v. Hanshow on 13 May 2024. The Court of Appeal agreed with the first instance court that the preliminary injunction should not be awarded, but based on different reasoning that avoids reliance on the prosecution history. The judgment of the Court of Appeal shows the limits of preliminary injunction hearings in particular because no consideration was given to infringement via any doctrine of equivalents.

The patent at issue was EP 3883277 B1.  This is a recent European Unitary patent, making things nice and simple because there can be no question of the jurisdiction of the UPC – no other court has jurisdiction over European Unitary patents.

This case relates to electronic labels of the type used on supermarket shelves, where the price displayed can be updated from a remote central computer. Additionally, the claims define that the electronic label can communicate with a customer’s mobile device via an antenna in the electronic label. This can provide additional information about the product on the shelf. The key point for interpretation was to what extent should the antenna of the electronic label device be spatially separated from a printed circuit board (PCB) of the same device.

The UPC Court of Appeal followed its own uncontroversial guidance to determining the scope of protection that it had set out previously in another preliminary injunction case (10x v. NanoString).

However, here, the Court of Appeal relied heavily on the discussion of the embodiments presented in the description to arrive at two case-determining limitations on the scope of claim 1.

The first of these case-determining requirements was that the PCB and the antenna cannot be positioned in the same plane of the device and that the antenna should be located forwardly of the PCB. On the facts of the case, this seems about right. 

The second case-determining requirement was that the antenna cannot be placed behind the display screen of the electronic label.  The Court of Appeal relied heavily on discussions of the embodiments in the description for this interpretation. However, this aspect of the decision is open to question because there do not seem to be technical reasons why the antenna could not be placed behind the display (but in front of the PCB) and still perform its technical function. This is particularly the case since the alleged infringements used arrangements of thin displays and lenses of about 2.5mm thickness, whereas the patent discusses potential problems with RF reading through thickness of about 1cm.

Using these two conclusions, the Court of Appeal decided that the alleged infringements did not infringe, on the balance of probabilities.  The alleged infringements had the PCB located in a back corner of the device and the antenna either co-planar with the PCB or slightly forward of it, but clearly directly behind the display and laterally offset from the PCB.

Of particular note, the Court did not consider at all the question of infringement using a doctrine of equivalents. Depending on the prior art, it seems possible that the claimant could assert that the defendant’s products place the antenna and PCB in locations that provide equivalent technical effects to the literal scope of the claim. If the case proceeds to full trial, it seems likely that this issue will come up. But it is probably right that if you need to argue a doctrine of equivalents for infringement, then a preliminary injunction is probably out of reach given that a preliminary injunction should be decided only on a summary assessment of the merits of the case.

In the first instance decision, the UPC Local Division had interpreted the scope of protection of the patent by taking into account the wording of claim 1 of the original application. Parts of that wording had been considered to be unclear by the EPO examiner and had been deleted and replaced in order for the patent to be granted. The relevant wording therefore did not appear in the granted claims. To this extent, the decision at first instance was considered controversial for its use of discarded wording from the original claims to interpret the scope of the amended claims as granted.

There are divergent practices before national courts in Europe to the use of the file wrapper in determining the scope of protection, and therefore this is a sensitive topic.

In this decision, the UPC Court of Appeal have adroitly avoided the question of whether amendments made during prosecution, or the contents of the file wrapper in general, should be used in determining the scope of protection of the patent. This topic is clearly being left open for a future, and perhaps better-suited, case. Where the patentee has made a clear statement on the prosecution file as to their understanding of the scope of protection, this question of prosecution history estoppel is likely to be aired again.