UPC confirms ‘doctrine of equivalents’ approach to patent infringement claims

Arjan Reijns and Sarah Taylor, experts in patent litigation at Pinsent Masons, said the ruling (43-page / 3.6MB PDF), by The Hague local division (LD) of the UPC, is an important one for both patent rights holders and for those wishing to navigate patent rights across all sectors.

The case before the Hague LD involved a dispute between Plant-e, a Dutch start-up that owns a European patent relating to ground-breaking technology for converting light energy into electricity using living plants, and Bioo, a company that Plant-e claimed markets certain biofuel cells that infringe its patent.

Plant-e argued that Bioo infringed upon the method claims in its patent both on a literal basis and by equivalence. Bioo denied infringement and counterclaimed that the patent was invalid and should be revoked.

The Hague LD considered a variety of arguments put forward by Bioo on the question of validity but ultimately rejected them. While it also rejected Plant-e’s claims that Bioo was responsible for patent infringement on a literal basis, it upheld its claims of infringement on the basis of equivalence, both directly and indirectly. This is the first time the UPC has  considered the so-called doctrine of equivalents.

Article 69 of the European Patent Convention (EPC) and the associated protocol on its implementation confirm that the extent of the protection conferred by a European patent or a European patent application is to be determined by the patent's claims, though reference can be made to the description and drawings for the purpose of interpreting those claims in the event of any ambiguity.

According to The Hague LD, infringement claims before the UPC should be assessed in two steps, applying article 69 EPC and the implementing protocol.

“The approach it has taken matches with that of the Dutch national courts, which was developed by the Court of Appeal in The Hague in 2020,” said Reijns. “Seeking harmonisation, the Court of Appeal in The Hague had assessed the approach taken by the courts in other EPC member states and concluded that the two-step approach was well-established in Germany and France and had also, at that time, just been adopted in the UK.”

The first step evaluates ‘literal’ infringement of the features of the patent in view of the way the patent’s claims are constructed.

In the second step, if the patent is not judged to have been literally infringed, equivalence is to be assessed.

The Hague LD said that the test applied to the assessment of infringement by equivalence in this second step is based on the case law in various national jurisdictions, but the test applied aligns closely with the approach taken by the Dutch national courts.

This second step seeks to answer the question of whether the patent claims, as perceived by the skilled person and seen in light of the description and drawings, leave room for equivalents. This question is to be answered in the affirmative if four sub-questions, formulated by the Dutch national court and now adopted by The Hague LD, are answered in the affirmative.

The first question concerns technical equivalence – The Hague LD said the variation in the allegedly infringing product must solve essentially the same problem that the patented invention solves and perform essentially the same function in that context.

The second question is about ensuring fair protection for the patent rights holder. In this regard, the Hague LD said the relevant question is whether extending the protection of the claim to the equivalent is proportionate to deliver a fair protection for the rights holder. That question is to be determined with reference to the rights holder’s contribution to the art and whether it would be obvious to the skilled person from the patent’s publication how to apply the equivalent element at the time of the alleged infringement.

The third question centres on delivering reasonable legal certainty for third parties. The Hague LD said it must be able to be shown that the skilled person understood from the patent that the scope of the invention was broader than what was claimed literally.

Finally, The Hague LD said the allegedly infringing product must be shown to be novel and inventive over the prior art. In this respect, The Hague LD confirmed that there may be a so-called ‘Gillette’ defence to claims of patent infringement by equivalence before the UPC. The Gillette defence was established in 1913 by the English courts and provides that if the product or process used by an alleged infringer falls within the scope of a patent claim, but that product or process would have been known or obvious at the priority date of the patent, that claim must be invalid for lack of novelty or inventive step. 

The Hague LD’s confirmation of the scope for raising a Gillette defence to claims of infringement by equivalence stands in contrast to the recent findings of the Düsseldorf LD of the UPC, which determined that the Gillette defence could not be applied to claims of literal infringement in the circumstances of a case involving a SodaStream patent.

The Hague LD considered the four questions in the context of the dispute between Plant-e and Bioo. It found all four questions could be answered positively and that therefore Bioo was responsible for infringing Plant-e’s patent by equivalence. It also held that Bioo indirectly infringed the patent because it supplied certain goods, which Bioo did not dispute were an essential means for applying the method of one of the patent claims, to third parties.

The Hague LD granted Plant-e a permanent injunction against Bioo, covering the UPC territories in which its patent is in force – the Netherlands, Belgium, Luxembourg, Germany, France and Italy. The court also found that Plant-e is entitled to orders for the infringing goods to be recalled, removed from the channels of commerce and destroyed, finding that those measures were reasonable and proportionate in the circumstances. The court also found that Plant-e is entitled to damages to be determined, and an interim damages payment of €35,000. Bioo was also held responsible for costs.

“As the first UPC decision on infringement by equivalents, this ruling is very welcome,” said Taylor.  “However, it is only one decision by one local division of the UPC and does demonstrate an element of local flavour, given that The Hague LD adopted the approach followed by the Dutch national courts. Further decisions are awaited, and ultimately the UPC Court of Appeal will determine whether the test proposed in this ruling is ultimately the one universally accepted by the UPC.”