22/01/2025
In Plant-e v Arkyne (“Bioo”), the UPC recently delivered its first decision applying the Doctrine of Equivalents. The Local Division in The Hague found that Bioo products did not infringe EP2137782 under a literal interpretation but did infringe EP2137782 by equivalence.
The Local Division The Hague has set out a four-question test for equivalence – this is the first time that such a test has been set out for the UPC, and it essentially adopts into UPC case law an earlier Dutch approach to equivalence. It will be interesting to see if the Court of Appeal confirms this approach. Particularly, the final question, relating to a Gilette/Formstein defence, may require further clarification.
While Bioo argued that their Bioo Panel did not comprise most features of the claims based on their claim interpretation, the Court found based on its own interpretation that each of Features 11.1-11.4 were present in the Bioo Panel. Bioo argued that Bioo Panel did not include a living plant (feature 11.5) because it is not necessary for the functioning of the Bioo Panels – however, the Court found it to be reasonably proven that the Bioo Panel included a living plant. However, as the living plant and its roots are not present in the anode department in Bioo Panels, and the microorganisms do not live around the root zone of the plant (Feature 11.6), the Court found that there was not literal infringement. Nevertheless, the Court found infringement by equivalence because “the teaching of the patent is (clearly) broader than the wording of the claim”.
Doctrine of Equivalents
The Doctrine of Equivalents is a legal rule that seeks to balance legal certainty for third parties with legal protection for patentees. Patents are essentially a reward to an inventor for disclosure of their invention. The Doctrine of Equivalents allows courts to find that a patent is infringed by a third party even if an infringing device or process does not fall within the literal scope of a patent claim.
Various tests have been set out in countries around the world to determine whether a product or process feature is an “equivalent” of a claim feature, for example: the German Schneidmesser questions, the UK Actavis questions, and the US triple identity test.
Although the Agreement on a Unified Patent Court (UPCA) does not explicitly provide for a Doctrine of Equivalents, the Local Division The Hague in its decision refers to Art. 2 of the Protocol to Art. 69 EPC which makes clear that equivalents must be considered when assessing scope of protection. The decision sets out that infringement must be assessed in two steps, assessing first “literal infringement” and, if no literal infringement is found, “infringement by equivalence”.
As set out above, the Court found that there was no literal infringement of EP782 by Bioo.
The UPC Test for Infringement by Equivalence
In seeking to take equivalent elements into account, the Court based its test for equivalence “on the practice in various national jurisdictions”. By doing this, they arrived at four questions which, if answered in the affirmative, confirm that a variation is an infringing equivalent to a claimed element:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
- Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
- 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? (i.e. no successful Gillette/Formstein defence)?
This test (especially question iii.) appears to be slightly more limiting than the equivalent test in the UK, because the UK questions ask whether a skilled person would have concluded that the Patentee intended strict compliance with the literal meaning of the claims, whereas the UPC’s test asks whether a skilled person would understand that the scope is broader than claimed literally. In other words, in the UK test, the skilled person’s conclusion regarding the Patentee’s intention for strict compliance is required, whereas for the UPC test, the skilled person’s understanding of the scope of invention is tested.
Perhaps unsurprisingly, the four questions applied by the Local Division The Hague mirror the four questions of the Dutch Doctrine of Equivalents as set out by the Hague Court of Appeal – the decision even has a footnote to an IPKat article about that Dutch appeal decision.
It is noteworthy that the Presiding Judge and the Judge rapporteur are Dutch, and that both parties had at least some Dutch representatives, so perhaps the adoption of the Dutch test for equivalence should not be surprising in this case.
Remedies, and other interesting points from the decision
In no particular order, a number of other points in the decision are worth commenting on:
In deciding on remedies, the Court relied on Art. 64 UPCA to order a specific wording that must be sent to the infringer’s customers and published on the infringer’s website.
The Court applied the so-called gold standard (subject-matter must be derivable, directly and unambiguously, by the skilled person, using common general knowledge) in assessing the validity of the priority claim, in assessing added matter, and in assessing novelty, in line with EPO case law.
There was disagreement on the proper interpretation of several features of claim 11. As the UPCA does not contain provisions on the scope of protection of a patent, the Court referred to the guidance provided in Article 69 EPC, and followed guidance from the Court of Appeal of the UPC (CoA) in Nanostring/10 x Genomics, which sets out that a patent claim “is not only the starting point, but the decisive basis for determining the protective scope of a European patent”.
Regarding interpretation of the term “feedstock”, Bioo attempted to rely on prosecution history. The Court stated that “why the prosecution file in the present case is relevant for interpretation” was not substantiated by Bioo. The Court found that Bioo’s interpretation was “contrary to the teaching of the patent” – as such, this decision does not answer the question whether prosecution history can be relied on in UPC proceedings. The Düsseldorf, München, and The Hague Local Divisions have given varying attention to prosecution history when relied on by parties.
Take home points
The UPC’s first decision on infringement by equivalents will be of great interest to patent proprietors and litigators. Infringement by equivalents is not only to be considered once a patent is granted, but also when drafting and prosecuting patent applications.
It remains to be seen if the Court of Appeal of the UPC (CoA) agrees with the four questions set out by the Local Division The Hague. While in most cases, the various equivalence tests should result in the same outcome, in some cases, the exact test used for equivalence may be decisive.
One interesting aspect of the four-question test set out in this decision is that question iv. directly refers to a Gillette/Formstein defence, whereas the Düsseldorf Local Division in Sodastream v Aarke found in a pure infringement action (no counterclaim for revocation), that a Gillette defence (as interpreted by the Defendant) was not available. Thus, clarification from the CoA if, and in what circumstances, a Gillette/Formstein defence is available before the UPC is highly desirable. In particular, since a Formstein defence relates to infringement by equivalence, whether there is a counterclaim for revocation or not appears irrelevant to its significance.
The present decision appears to confirm that the UPC is a valuable venue for patent enforcement in Europe. We will continue to monitor developments before the UPC closely.
ANNEX – Details of the Case
Background of the Patent
The Patent relates to a device and method “for converting light energy into electrical energy and/or hydrogen by using a living plant for converting light energy into a feedstock for a microbial fuel cell”. In particular, an anode compartment of the device comprises an “anodophilic micro-organism capable of oxidizing an electron donor” and “a living plant or part thereof”.
Fig 1: Annotated version of Fig. 1 of EP2137782
The independent device claim (claim 1) and the independent method claim (claim 11) are limited to the anode compartment comprising a living plant (7) or part thereof, and to the root (8) zone of the plant being “essentially placed in the anodic material” (claim 1), or that “the microorganism lives around the root (8) zone of the plant or part thereof”.
While Plant-e refer to their products as Plant-Microbial Fuel Cells (P-MFC), Bioo presents their product Bioo Panel as a “double-layer battery” or a “biological battery”, which has two independent compartments assembled into a single device.
The Court describes the teaching of EP’782, and P-MFCs generally, as follows (emphasis added, point 36 of the decision):
The court considers the teaching of the patent to create an MFC that is essentially independent of external fuel by introducing a living plant, that converts (sun)light into nutrients (organic material) by photosynthesis, into the system as a constant supplier of organic material to the anodophilic micro-organisms in the reactor, thus creating a P-MFC…The concept of converting chemical energy (organic compounds) directly into electrical energy with the use of anodophilic micro-organisms was well known and applied in MFCs at the priority date. In MFCs, organic compounds are used to generate electricity. The teaching of the patent is to include a plant in the device to supply (additional) organic material (produced by the plant through photosynthesis) as feedstock to the fuel cell for the anodophilic micro-organisms in the reactor, which is new.
Only infringement of method claims 11-16 was at issue. Claim 11 recites, using the feature numbering of the decision:
11.1 Method for converting light energy into electrical energy and/or hydrogen
11.2 wherein a feedstock is introduced into a device that comprises a reactor
11.3 where the reactor comprises an anode compartment (2) and a cathode compartment
11.4 and wherein the anode compartment comprises a) an anodophilic microorganism capable of oxidizing an electron donor compound
11.5 and b) a living plant (7) or part thereof, capable of converting light energy by means of photosynthesis into the electron donor compound
11.6 wherein the microorganism lives around the root (8) zone of the plant or part thereof.
Finding of No literal infringement
Bioo’s main counterargument regarding infringement was that the Bioo Panel “does not require a plant to operate”, and thus Features 11.5 and 11.6 were not present. Instead, Bioo Panel is said to be a “soil based MFC”, rather than a P-MFC.
However, the Court found that this was contrary to Bioo’s public statements in their Bioo Panel data sheet, application for EU funding, and patent application WO 2022/058500. Thus, the Court found that on a strictly literal interpretation, feature 11.5 “as such” was present in the Bioo Panel.
Fig 2: Cross-section of Bioo Panel submitted by Bioo [annotated]
However, the Court further found that on a contextual reading, Feature 11.5 requires that the living plant must be located in the anode compartment – thus, the Bioo Panel does not comprise Feature 11.5. The Court found similarly with regards to Feature 11.6. In the Bioo Panel, the plant and its roots are in an upper compartment, whereas the anode (with the microorganism) is at the bottom of a lower compartment (the anode compartment).
Applying the UPC’s four questions to the present case
In answering the four questions set out above, the Court found that use of the Bioo Panel infringes Claim 11 of EP2137782.
Regarding technical equivalence (question i.), the Court found that the teaching of the patent “is to create an MFC that is independent of externally furnished food. This is achieved by introducing a living plant into the system as a constant supplier of organic material to the rector, thus creating a P-MFC. The court is convinced that the Bioo Panel is designed to achieve the same…”
In arguing that the Bioo Panel is technically equivalent to the teaching of the patent, the decision states that the plant is a part of the reactor and a source of additional organic material for the battery, resulting in the Bioo Panel being “substantially independent of external fuel for the generation of electricity”. The Court thus found that the function of the plant in the Bioo Panel, and the plant of claim 11, is the same. The additional compartment, and location of the roots/microorganisms, does not change the function.
In dealing with question ii., the Court states that the patent claims “a new category of microbial fuel cell”, which has been given its own name, P-MFC, and thus, a “fairly broad scope of protection” is justified in the Court’s view. The Court believes that the Bioo Panel still applies the exact principle of the patent, and that it would be obvious to the skilled person “how to apply the equivalent element” by separating the plant with roots from the anode compartment, while ensuring that organic material produced by the plant reaches the anode compartment.
Regarding question iii., the Court stated briefly that the Patent is “(clearly) broader than the wording of the claim and there is…no reason to limit the scope of protection of the claim to a (method using a) device as claimed”. According to the Court, the teaching of the patent is “to add a plant to a [an] MFC to provide (additional) feedstock” – the variation of the Bioo Panel is another way of obtaining the same result in a similar way. Finally, in concluding that the Bioo Panel was novel and inventive at the priority date and thus finding in the affirmative regarding question iv., the Court decided that Bioo’s use of Bioo Panels directly infringes claim 11 of EP2137782. In so far as Bioo provides Bioo Panels to third parties, the Court decided that Bioo indirectly infringes claim 11.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
