2025 Week 24
It’s often the thorniest substantive question in patent litigation, and by extension also in freedom to operate analyses. You are happy with your interpretation of claim 1 of the patent and you can see that there is no literal infringement. But what about infringement on the basis of equivalence?
Under the European Patent Convention, the scope of protection is determined by the claims, as interpreted using the description and drawings. Additionally, “due account” is to be taken of any element which is equivalent to an element specified in the claims. So it is clear that the European patent system demands that there is a doctrine of equivalents (DoE), as part of the assessment of patent infringement. This means that the UPC needs to work out its approach to equivalents – should it adopt a doctrine based on one of the UPC member states’ national approaches, or should it develop its own?
The last major news on this was in November 2024 when the UPC Local Division The Hague issued its decision in Plant-e v. Arkyne. In that case, the court found that the patent was infringed on the basis of equivalence. There have been some developments, so it’s a good time for an update.
UPC LD The Hague DoE
In Plant-e v. Arkyne, having decided that there was no literal infringement, the court set out this approach to DoE:
- 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?
In fact, the court was deploying a DoE test according to national practice in the Netherlands, rather than attempting to formulate a new UPC DoE. But that’s not to say that the test is wrong – it is sensible on many levels.
Here we will concentrate on the intention behind questions 1 and 4 and see how these issues have been addressed in other cases.
Question 1 speaks for itself. In Plant-e v. Arkyne, the court decided on the evidence that the variant had the same function and solved the same problem as in the claim.
Question 4 is included in the test in order to check for a Gillette or Formstein defence. If the alleged infringement is not patentable over the prior art, then the patentee should not be allowed to assert infringement under the DoE.
With the case nicely set up from the decision at first instance, we were interested to see that an appeal was filed, with grounds of appeal lodged in March 2025. However, based on the information in the UPC case management system, it appears that the case was settled in May 2025. This is disappointing – we will now have to wait for the CoA to get a different infringement case to set out their view on the UPC DoE.
DoE in preliminary injunction proceedings?
A reasonable starting assumption might be that if you need to show infringement under DoE, it is probably not best done via a summary assessment. Preliminary injunction (PI) proceedings at the UPC are intended to be summary proceedings, with the court trying to assess whether it is more likely than not that the patent is valid and infringed.
However, we are seeing the UPC divisions going into significant detail to assess infringement and also validity in PI cases.
In Ballinno v. UEFA (reviewed here), the patent related to football technology for helping referees to decide offside decisions. The claims aimed to detect a contact between a player and a ball by sensing a sound signal and then processing that signal by comparing against known signals. The key question was whether an accelerometer could be, or was equivalent to, “sound sensing means”. Infringement by equivalence was considered only briefly, with the court noting that the patent additionally suggested including an acceleration sensor. Although the alleged infringement might lead to the same overall technical effect as the patent (detecting contact between player and ball), this was not enough. It was also necessary to consider how this effect is achieved. The court decided that the alleged infringement did not make use of an equivalent task to the patented teaching. The separate mention in the patent of acceleration sensing as being useful in addition to sound sensing itself indicated that the two were not equivalent.
In VusionGroup v. Hanshow, the UPC Court of Appeal (CoA) upheld the first instance decision not to grant a PI for a patent for electronic labels of the type used on supermarket shelves. We noted that neither the LD nor the CoA considered infringement using a DoE. Depending on the prior art, it seems possible that the claimant could have asserted that the defendant’s products provided equivalent technical effects by positioning an antenna outside the literal scope of the claim. In contrast with the Ballinno decision above, perhaps the patentee thought that relying on infringement by DoE would not be feasible at least in the context of a summary assessment in PI proceedings.
Question 4: Gillette and Formstein
In a full infringement case on the merits, the UPC LD Düsseldorf decided in SodaStream v. Aarke that there was infringement, without needing to rely on a DoE. But what was interesting about that case was that there was no counterclaim for revocation. In view of this, the LD decided that Aarke could not rely on a Gillette defence (arguing that the alleged infringement was not novel or was obvious over the prior art).
Probably, though, the main lesson to take from SodaStream v. Aarke, as we explained here, is simply that the defendant should file a counterclaim for revocation when the relevance of the prior art (on any interpretation of the scope of protection) needs to be put in question. Question 4 in the Plant-e v. Arkyne formulation for a UPC DoE clearly shows that a Formstein defence should be available. A Formstein defence is where the alleged infringer shows that the alleged infringing equivalent would have been obvious at the priority date, meaning that the patentee cannot rely on the DoE.
More hints towards the shape of a UPC DoE
In Edwards v Meril, the comparison between the alleged infringement and the claims was not straightforward. The patentee invited the court to consider infringement via a DoE, but the court decided that this was not necessary. The court in effect used a purposive interpretation of various features of the claim, commenting that “the term ‘in parallel’ must not be understood in a strictly mathematical sense” in view of the drawings and the intended technical effect of the feature.
Nelissen v. Orthoapnea was an action for infringement of EP 2331036 B1 at the Brussels Local Division. The patent was for a mechanical device for treating breathing problems such as sleep apnoea to guide and limit the movement of a user’s lower jaw. The alleged infringement differed from the claim in two main respects. For one of these differences, there would have been a strong argument for infringement by equivalence because it was in effect the mechanical inverse of what was claimed. However, the decision turned on the other difference. In the view of the court, this difference went against part of the teaching of the patent, and they decided there was no infringement.
The court would not be drawn on the specific test that should be used for DoE. The decision was written after the Plant-e v Arkyne decision and does refer to it briefly. The court said that in any conceivable DoE at the UPC, infringement would require there to be technical functional equivalence between the alleged infringement and the claim. We read this as pointing to question 1 (or something like it) in the Plant-e v. Arkyne decision.
The most recent case to discuss DoE is Dish v. Aylo, an action for infringement of EP 2479680 B1 for video streaming technology. The LD Mannheim decided that there was no infringement on a normal interpretation of the claims and then turned to equivalence. At least for alleged acts of infringement occurring after the date the UPC came into force (1 June 2023), the court said it would be necessary for there to be a unified DoE developed by the UPC. The court noted that Plant-e v. Arkyne used a DoE that was basically the Dutch national approach, and did not endorse this specific test.
However, the court explained that in all DoE tests used in UPC states, there is no infringement if there is no “technical-functional equivalence” of the variant. In other words, the variant must fulfil essentially the same function in order to achieve essentially the same effect. The court decided that in the case at hand, the alleged infringement did not fulfil the same function and did not achieve essentially the same effect as the invention. So, without expounding a full DoE test, the court here decided that there could not be any infringement on the basis of equivalence.
The value of the Dish v. Aylo case was set by the LD at € 20 million. We can hope that it is important enough to both sides to take the case to the CoA to get a sense of how a UPC DoE will develop.
