2025 Week 37
Various divisions of the UPC have been notably reluctant to set out their vision for a structured test for how infringement by equivalence should be assessed. Except the Local Division in The Hague. In preliminary injunction order Washtower v. BEGA, this UPC division had an extremely clear situation of no literal infringement. So they were able to reach for a DoE test that they had handily prepared earlier in Plant-e v. Arkyne, and it worked a treat for the patentee.
The backstory – the patent
The patent is EP 3522755 B1 and it has an unusual file history. The EPO examining division refused the application for lack of inventive step and for added subject matter. The applicant appealed this. Without needing to hold a hearing, the EPO Board of Appeal agreed with the applicant that the amendments made to the claims did not amount to an undisclosed intermediate generalisation. They also decided inventive step in favour of the applicant.
So what’s the invention? It’s a cabinet (1) for holding a washing machine in an elevated position, so that there is some storage space below and so that the user does not need to bend down so far to use the machine. The washing machine (2) sits on a carrier shelf (6) which is supported by side walls. Compared with the prior art, the claims defined two main additional features. Firstly, one or more side plates to help to support the carrier shelf. Secondly, an “L-shaped metal strip” at the front of the carrier shelf (at 6 in the drawing below), with the horizontal part fixed to the underside of the carrier shelf and the vertical part extending up from the front of the carrier shelf. The effect of this strip is to prevent the washing machine from falling off the front of the shelf.
This is not complex stuff.
The backstory – the parties
The parties had some history together. There had been a previous licence arrangement between them. However, the licence ended on 1 August 2024. There was an agreed sell-out period (during which the defendants could carry on selling stock) but this ended on 1 February 2025.
From the patentee’s perspective, from this date, further sales of the defendants’ products amounted to infringement. An example of an alleged infringement is shown below:
The PI application
The patent was granted on 2 April 2025 and an application for a preliminary injunction (PI) was filed on 28 May 2025. The defendants countered the PI application with an invalidity attack and with arguments against infringement.
On validity, the defendants essentially re-ran the EPO examining division arguments about added matter. The court looked at the objection but found no reason to think that the EPO Board of Appeal was wrong. Given that, if anything, the EPO Boards of Appeal are typically stricter than the UPC on added matter, this outcome was not a surprise.
On inventive step, given the two clear differences between the main claim and the closest prior art, the defendants tried to run a “partial problems” attack, so that the obviousness of each difference could be assessed separately. The court rejected this, saying that the two differences cooperated to resist the heavy vibratory loads imposed by the washing machine when operating.
Interestingly, the defendants have filed a UPC Central Division revocation action against the patent. This may not be wise because it will lead to a hard bifurcation between an assessment of infringement and validity in the decisions on the merits, which may not be to the defendants’ advantage. We explained all about that procedural wrinkle here.
So what about infringement by equivalence?
In the end, everything turned on the strip used in the alleged infringing products at the front of the carrier shelf. The claim defines that this is an L-shaped metal strip. The alleged infringements each used an L-shaped plastic strip.
This is classic territory for an assessment of infringement by equivalence. And you’d hope that any self-respecting doctrine of equivalence would end up with a finding of infringement here. But bear in mind that in PI proceedings there is only intended to be a summary assessment of infringement. Should the court get into the DoE? They had no problem with that. However, the court was at pains to acknowledge that the UPC Court of Appeal has not yet given any guidance on which DoE test the UPC should adopt. Nevertheless, the court here (with the agreement of the parties) used the same DoE test as had been used by the same Local Division in a previous case on the merits: Plant-e v. Arkyne. That test in turn corresponds to the Dutch national DoE. We discussed it in detail in UPCW 2025 w24.
- 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 court stepped through the questions and answered them:
- Technical equivalence: Yes, the L-shaped plastic strip also prevents the washing machine from falling off the front of the carrier shelf.
- Fair protection for patentee: It is fair to extend the protection to a plastic strip? Yes, because the specific material of the strip is unimportant.
- Reasonable legal certainty for third parties: Although the patent description also identifies the strip as metal, it does not attach particular importance to this. There is no explanation of why metal is used, and no indication that only metal can be used. As the court said: Absent such indications, a third party can not genuinely believe that he/she can take advantage of the claimed invention, by simply using a non-metal strip to circumvent literal infringement.
- Is the allegedly infringing product novel and inventive over the prior art? Yes – the court had decided that the patent is probably valid, but this did not turn on the material used for the L-shaped strip.
Other factors to consider for PI
In order to grant a PI, the court also needs to see that the PI is necessary, that the patentee has not unduly delayed and that the interests of the patentee outweigh those of the defendants. The court considered that there was a risk of price erosion and irreparable harm to the patentee. A delay of 2 months between the date of grant and the filing of the PI application was acceptable in the circumstances, although the time gap is closer to 4 month from the end of the sell-out period to the filing of the PI application.
So the PI was ordered, contingent on the patentee providing security for enforcement, and costs were awarded against the defendants.
