UPC again considers patent infringement by equivalence

Arjan Reijns and Sarah Taylor, who specialise in patent litigation at Pinsent Masons, were commenting after the so-called doctrine of equivalents was again considered by UPC judges.

The ‘doctrine of equivalents’ essentially provides that if a product or process is not substantially different from the elements of a patented invention, it can still be considered infringing.

The doctrine of equivalents sits alongside the separate concept of literal infringement, which is where it can be successfully argued that the allegedly infringing product or process infringes the protection conferred from a literal reading of the words used in the relevant patent claims. Its existence means that patent protection cannot be simply circumvented by making small changes to the patented invention whilst reproducing its core and inventive elements.

While the doctrine has its origins in the European Patent Convention (EPC) and an interpretative protocol, it has been applied differently by national courts across the various countries that are signatories to the EPC. With local and regional divisions of the UPC operating across Europe, it presents a risk of divergent national tests for determining infringement by equivalence being imported into UPC case law – at least until the UPC Court of Appeal hands down a ruling that establishes a single legal test.

The doctrine of equivalents was again considered recently by the UPC in a case that came before The Hague local division of the court. In that case, Washtower applied for a preliminary injunction against Bega over alleged infringement of a unitary patent Washtower owns.

The patent at issue applies to a cabinet that holds a washing machine in an elevated position and provides storage space underneath, with a view to enabling users to load the machine without having to bend down much. The inventive elements are considered to be side plates which help support the shelf on which the machine sits and prevent the support shelf bending, and an L shaped metal strip which goes around the shelf to prevent the washing machine falling off the shelf. 

Bega’s rival products make use of an L shaped plastic strip. Given that this differed from the L shaped metal strip specified in Washtower’s patent claims, meaning literal infringement could not be established, The Hague local division considered whether there was nevertheless infringement by equivalence.

The court applied the Dutch test on the doctrine of equivalents, established by the national courts in the Netherlands. This entails the court, having established that there is no literal infringement, asking itself four questions.

The questions are: whether there is technical equivalence, in the sense that the variation solves essentially the same problem that the patented invention does by performing essentially the same function; whether extending the protection beyond that specified in the patent claims is proportionate to deliver fair protection for the rights holder; whether the person skilled in the particular art understands from the patent that the scope of the invention is broader than what is claimed literally; and whether the allegedly infringing product is shown to be novel and inventive over the prior art. 

Like in the earlier UPC case of Plant-e v Arkyne that came before it, The Hague local division considered that all four questions could be answered positively.

In this case, the court was only deciding whether the granting of a preliminary injunction was justified and was not making a definitive judgment in relation to the dispute between the parties, which would only follow after a trial.

However, in answering each of the four questions in the test positively, The Hague local division considered it more likely than not that the patent was infringed on the basis of equivalence and so granted Washtower a preliminary injunction that prevents Bega selling its rival products in all countries that participate in the UPC system.

Reijns said: “The Hague local division has twice now implemented the Dutch test for applying the doctrine of equivalents – in this case and in the case of Plant-e v Arkyne – but it is not the only division of the UPC to consider how the doctrine of equivalents should be applied.”

“Earlier this year, judges at the Mannheim local division in Germany expressed their view, stating that it believes the existing national tests in the countries where the UPC division sits should apply to alleged acts that took place prior to 1 June 2023, when the UPC first began operating, but that a single UPC test should be applied in respect of alleged acts that took place after that date. It offered no view on what that UPC test should be, however. This is crucial case law that the UPC Court of Appeal will need to establish in due course. Establishing a clear test is important to enable parties to know how the court may assess claims for patent infringement,” he added.

Taylor said: “It’s worth noting that The Hague local division in this case also acknowledged the need for a harmonised approach to the doctrine of equivalents by the UPC, but said that in the absence of any UPC Court of Appeal guidance, and the fact that both parties referred to the Dutch test without even considering an alternative, they saw no reason to deviate from it.”

According to Taylor, the ruling in the Washtower v Bega case also provided another relevant example of the UPC’s friendly approach towards SMEs. This is because Washtower, an SME, was ordered to provide just €25,000 as a security on condition of being granted the preliminary injunction – much less than the €500,000 that Bega had sought.

“Since the applicants are an SME, and given the relatively minor impact on [Bega’s] overall sales, the court will order a security of € 25,000 to be deposited at the Court,” the court said.