UPC Holds That a Patent Is Infringed by Way of Equivalence
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UPC Holds That a Patent Is Infringed by Way of Equivalence

The UPC has—for the first time—held that a patent is infringed by way of equivalence. In the decision, which was delivered by The Hague Local Division, a four-question test for assessing whether a variant infringes as an equivalent was applied. It is not clear whether this approach will be adopted by the UPC more widely.

Under the doctrine of equivalents, a product or method may be considered to infringe a patent where it falls outside of the literal scope of the claims of the patent, but is “equivalent” to what is specified in the claims. The Protocol on the Interpretation of Article 69 EPC, Article 2, confirms that “for the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims”.  However, the exact manner by which infringement by equivalence is assessed varies—even between countries within Europe.

In Plant-e/Bioo, the Hague Local Division (“the LD”) held that the defendant’s product fell outside of the literal scope of the claims of the patent-in-suit, and went on to consider equivalence. Noting the absence of guidance from the case law of the UPC, the LD applied a four-question test which was said to be “based on the practice in various national jurisdictions and in line with what both parties had proposed”. However, in reality, the test seems to have been derived directly from a ruling of the Dutch Court of Appeal (Eli Lilly/Fresenius).

Under the test applied by the LD (par. 88), a variation is equivalent to an element specified in a claim if the answer to the following four questions is “yes”.

  1. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
  2. 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)?
  3. 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?
  4. Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Formstein defence)

Question (i) appears in almost all tests applied by national courts for assessing infringement by equivalence, with relatively minor differences in terminology.

Question (iv) provides an important check, ensuring that the scope of protection does not extend into known/obvious subject-matter. The presence of this question suggests that—at least insofar as infringement by equivalence is at issue—a defendant may be able to invoke a Formstein­-type defence (i.e. a defence in which the novelty/obviousness of the allegedly infringing product is assessed) without necessarily counterclaiming for invalidity. This is interesting when compared to the decision of the Düsseldorf Local Division in SodaStream/Aarke, in which it was held that there was no room for such a defence in infringement proceedings where the defendant had not counterclaimed for invalidity.

Questions (ii) and (iii) consider the balance between the need to provide fair protection for the patentee and reasonable legal certainty for third parties, closely resembling the final sentence of The Protocol on the Interpretation of Article 69 EPC, Article 1. While it is perhaps unclear from the decision itself, it seems that the issue to be considered for the assessment of question (ii) is whether the variant would have been obvious to the skilled person when starting from the specification of the patent-in-suit at the time of the infringement (Eli Lilly/Fresenius, pars. 4.8, 4.9, 4.22-4.27). If that approach is taken in future UPC cases, it would mean that the doctrine of equivalents at the UPC should not extend to  non-obvious extensions/improvements of the claimed invention. Not all national courts restrict the doctrine of equivalents in this way: in the UK, for example, the question is instead whether it would be obvious to the skilled person, reading the patent-in-suit at the priority date but knowing that the variant achieves substantially the same result as the invention, that the variant achieves the result in substantially the same way as the invention (Actavis/Eli Lilly).

Tests applied by many national courts in Europe (e.g. the courts of the UK, Germany and France) do not explicitly consider the balance between fair protection for the patentee and reasonable legal certainty for third parties. For example, the Schneidmesser questions applied by the German courts consider (1) whether the variant solves the problem with means that have the same technical effect as the claimed means (2) whether the skilled person is able to find the variant as having the same effect; and (3) whether the skilled person would consider the variant as a solution which is equivalent to the literal one. That said, there is some correspondence between questions (ii) and (iii) of the test proposed by the LD in Plant-e/Bioo and questions (2) and (3) of the Schneidmesser questions, particularly between question (ii) and question (2), which each consider the obviousness of the variant to the skilled person when starting from the patent-in-suit.

Other courts look to assess equivalence without referring to the skilled person at all. For example, the French courts may consider a variant to infringe a patent where the variant performs the same function as the claimed means to achieve a similar result, provided that said function is novel.

In Plant-e/Bioo, the LD held that the answer to each of the four questions was “yes”, and so the patent was found to be infringed by way of equivalence. What seems to have been of overarching importance is that the LD considered the patent-in-suit to provide a novel and inventive teaching/contribution that was broader than the literal scope of the claims, and this broader teaching/contribution was implemented in the defendant’s product (see pars. 36, 50, 53, 97-101).

In the assessment of question (i), the LD considered test results provided by the claimant to show that the defendant’s product achieves the same technical effect as the claimed invention to solve the same problem. An expert for the defendant gave evidence contesting the significance of these test results. However, the LD found the expert’s evidence to be unconvincing. For the assessment of questions (ii) to (iv), the LD was happy to assume the mantle of the skilled person itself, coming to its conclusions without any consideration of expert evidence (pars. 98-101).

Whether other Local Divisions of the UPC will adopt the test applied in Plant-e/Bioo is unclear. Local Divisions in other countries (for example, those in Germany) may be minded to look to the case law of their own courts when considering the issue of infringement by equivalence. A decision of the Court of Appeal of the UPC will be required before there can be any more certainty on the approach of the UPC to this issue.