UPC needs own ‘doctrine of equivalents’ test, says Mannheim court

The recommendation was made by the Mannheim local division (LD) of the UPC, which is one of a number of different local divisions that operate under the UPC system. Its recommendation concerns the application of the ‘doctrine of equivalents’, which essentially provides that if a product or process is not substantially different from the elements of a patented invention, it can be considered to be 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. The existence of the doctrine of equivalents means that patent protection cannot be simply circumvented by making small changes to the patented invention whilst reproducing its core and inventive elements.

According to article 69 of the European Patent Convention (EPC), the scope of protection of a European patent is determined by the patent claims, which may be interpreted using the description and any drawings in the patent. Article 1 of the Protocol on the Interpretation of Article 69 EPC (the Protocol) provides that this interpretation should not be limited to a strict, literal reading of the claim language. Article 2 of the Protocol further provides that due account should be taken of any element which is equivalent to an element specified in the claims. The test for how an element may be deemed equivalent, fall within the scope of and therefore infringe a patent – the ‘doctrine of equivalents’ – has been shaped by patent offices and courts across Europe, but this has led to divergence across jurisdictions. How the UPC may apply the doctrine has generated much interest.

According to the Mannheim LD of the UPC, the UPC’s approach to applying the doctrine of equivalents should be determined based on when and where the alleged infringing acts took place.

For alleged acts that took place prior to 1 June 2023, when the UPC first began operating, the UPC should apply the doctrine of equivalents in line with the local law established by national courts in the relevant countries where infringement is claimed, it said. This is because, the Mannheim LD said, the UPC does not have a mandate to harmonise national case law.

For the period after 1 June 2023, the Mannheim LD said that the UPC will need to develop its own test and case law on the doctrine of equivalents, which it suggested could be drawn from existing national tests. This, it said, is the only way it will be able to achieve its overarching aim of harmonising case law and streamlining patent litigation in Europe. However, the Mannheim LD did not suggest what legal test the UPC should adopt and nor did it refer to an earlier case in which the Hague LD of the UPC applied the doctrine of equivalents to resolve a dispute before it.

Amsterdam-based Maud van Imhoff of Pinsent Masons, who specialises in patent dispute resolution, said: “The Mannheim LD considered that the doctrine of equivalents case law of the relevant national countries has a common element, namely that in order for there to be infringement, there must at least be an equivalent effect that is produced by the equivalent means. In other words, the alleged infringement must perform essentially the same function to achieve essentially the same effect – i.e. technical-functional equivalence.”

“However, notwithstanding this, the LD did not propose the precise standard the UPC should adopt going forward. Notably, it did not comment directly on the approach proposed by The Hague LD in the case of Plant-e v Arkyne – that dispute has now settled so will not come before the UPC Court of Appeal, which could have established case law for all UPC divisions to follow in relation to the doctrine of equivalents,” she said.

The Mannheim LD considered how to apply the doctrine of equivalents in a case raised before it in a dispute between US company and European patent owner DISH Technologies LLC (DISH) and companies in the Aylo group, which is active in the field of adult entertainment.

DISH owns a European patent for technology relating to video playback in streaming services. The patent was in force in a number of UPC contracting states, including France, Germany and the Netherlands. DISH licensed use of the patent to Sling TV LLC (Sling), a streaming pay TV service provider. DISH and Sling sued Aylo before the Mannheim LD claiming patent infringement.

The Mannheim LD considered that, based on the facts in the case, that on any conceivable UPC test which required technical-functional equivalence, there would be no infringement by the Aylo companies. It held that there was no equivalent effect produced by Aylo to that covered by DISH’s patent. It therefore did not need to go on to consider whether there was an equivalent function. The LD therefore dismissed the claim for infringement by equivalence. 

London-based patent law expert Sarah Taylor of Pinsent Masons said: “It will be interesting to see what approach other divisions of the UPC adopt when considering infringement by equivalence. It would be surprising if all divisions adopt the same approach as The Hague LD in the Plant-e v Arkyne case, since that aligns closely with the approach taken by the Dutch national courts and differs from those adopted by other national courts, notably Germany. Ultimately, it will be down to the UPC Court of Appeal to determine the precise test to be applied.”