Background

The principles set out by the UPC Court of Appeal in NanoString Technologies Inc v 10x Genomics Inc (UPC_CoA_335/2023) is that the description and drawings must always be used as explanatory aids for interpretation, not just to resolve any ambiguities in the claim language, such that only after examination of the description and drawings does the scope of the claims become apparent. Subsequent decisions at Local and Central Divisions demonstrated that the content of the description is critical to understanding the scope of the claims at the UPC.

Agfa NV v Kering

On 30 April 2025, the UPC Hamburg Local Division delivered its decision in the Agfa NV v Kering case in relation to infringement and validity of Agfa’s patent related to a manufacturing method for decorating natural leather with a decorative image and a decorated natural leather having a decorative image. The defendants in this case were nine different European companies belonging to the French conglomerate Kering, which is the parent company of several luxury brands including Gucci, Saint Laurent and Balenciaga.

At the heart of the dispute was the feature “a base coat containing a pigment for providing an achromatic colour different from black”, and in particular the definition of the term “achromatic”.

Paragraph [0021] of the description of the patent provided the definition “[a] chromatic colour is any colour in which one particular wavelength or hue predominates. For example, blue and green are chromatic colours, while white, grey, and black are achromatic colours, as they have no dominant hue, meaning that all wavelengths are present in approximately equal amounts within those colours.”

The Hamburg Local Division first considered whether the term “achromatic” refers to the pigment or the base coat as a whole.

If only the pigment needs to be achromatic, then the base coat can contain an achromatic pigment different from black, whereas the latter interpretation requires the base coat as a whole to have an achromatic colour different from black. The court decided that the latter interpretation was correct when considering the claims as a whole given that a later feature in the claim stated “the achromatic colour different from black of the base coat”.

Whilst acknowledging the established principle from NanoString Technologies Inc v 10x Genomics Inc (UPC_CoA_335/2023) that a patent may be used as “own lexicon” regarding the definition of claimed features, the court clarified that this is limited to the parts of the description that relate to the feature in question. In particular, the description of the patent in suit discussed ΔE94 measurement, a metric for understanding how the human eye perceives colour. In the court’s view, the discussion of ΔE94 measurement related to restoring the colour of the dyed crusted leather and was not part of the teaching in the patent regarding the definition of the term “achromatic”, which was used in the claims of the patent in relation to a pigment in a base coat which is applied to crusted leather.

The claimant had asserted that ivory would be considered “an achromatic colour different from black” in accordance with claim 1, adding that leather was perceived as a luxury good, and that warmer shades of white, such as ivory, were more desired than a pure white.

The claimant considered that there are many shades of white, including ivory, and that “white colour” in the patent should be construed to include these shades. The court noted, however, that the claim refers to “achromatic” colour, and that whilst white is provided in the description as an example of an achromatic colour, not all shades of white will fall within the patent’s definition of an achromatic colour.

The court therefore decided that the claimant’s interpretation of this claim feature was overly broad and not supported by the patent.

In coming to this conclusion on the interpretation of the term “achromatic colour”, the Hamburg Local Division decided that the patent was novel over each of the cited prior art documents, but also that the patent was not infringed.

Insulet v EOflow

On 01 May 2025, the Court of Appeal handed down its decision concerning the appeal by Insulet Corporation regarding its patent directed to an infusion pump for delivering therapeutic liquids to a patient.

In the first instance decision, the Milan Central Division held that the patent lacked novelty and therefore rejected the application for a provisional injunction against EOFlow.

EOFlow relied on the opinion of an expert for both interpretation of the patent and to understand one of the prior art documents, asserting that this opinion should be followed because Insulet did not provide an expert opinion of its own. The Court of Appeal did not agree, stating that the interpretation of a patent claim is a matter of law, and that this judicial task cannot be left to an expert; the court must construe the claims independently. Whilst the court acknowledged that the skilled person’s understanding of the terms used in the patent claim is the basis for claim construction, this does not mean that the court must follow a party’s expert opinion.

The court also emphasised the skilled person is a notional entity that cannot be equated with any real person, and that the individual knowledge of abilities of a person are not important, but rather the general specialist knowledge that is customary in the relevant field of technology and the average knowledge, experience, and abilities in this specialist field. The court did acknowledge, however, that expert opinions will be considered in circumstances concerning facts that can be proven, but only with respect to those facts.

The Court of Appeal disagreed with the Milan Central Division’s observation that the patent does not appear to be limited to the assembled state of the fluid delivery device, stating that claim 1 is a product claim relating to a fluid delivery device designed to deliver liquids, and must therefore be in an assembled state.

The court also disagreed with EOFlow’s assertion that the open term “comprising” allowed for a broader interpretation beyond the assembled state. The court considered that the claim being limited to the assembled state was consistent in the context of the claims as a whole when considering the description. In doing so, the court went on to find that the patent in suit was novel and more likely than not infringed. The first instance decision was therefore ordered to be set aside and a preliminary injunction was placed against EOFlow.

Discussion

The idea that the skilled person is a notional entity that cannot be equated with any real person is in line with the established case law of the European Patent Office (EPO), for example, T 1462/14, and provides a welcome harmisation between the two systems. Equally, the Court of Appeal’s decision in Insulet v EOFlow provides for a limited set of circumstances around the establishment of facts under which expert opinions will be considered, which is also generally in line with the established case law of the EPO (for example, T 543/95 and T 374/02).

It is clear that not only is claim interpretation an important first step when forming a decision, but that it is the job of the judges to decide on this, not any other party.

The content of the description is also critical to understanding the scope of the claims at the UPC. Earlier decisions (see UPC_CFI_373/2023 and UPC_CFI_252/2023) which applied the principles set out by the UCC Court of Appeal in NanoString Technologies Inc v 10x Genomics Inc (UPC_CoA_335/2023) considered that the claims should be interpreted so as to include all the embodiments presented in the description as forming part of the claimed invention, provided they did not result in an irresolvable contradiction or were explicitly presented as not being in accordance with the invention. Both these decisions demonstrate, however, that this does not allow for an interpretation of claim breadth that goes beyond that which is supported by the description. A claim should therefore be interpreted so as to include all the embodiments presented in the description without extending broader to include embodiments not considered in the patent.

Case details at a glance

Decision level: Hamburg Local Division
Case: UPC_CFI_278/2023
Order/decision: ORD_598576/2023
Parties: Agfa NV v Gucci Sweden AB, GG France Services SAS, Marbella Pellami SpA, Gucci France SAS, Guccio Gucci SpA, G Commerce Europe SpA, GG Luxury Goods GmbH, Gucci Belgium SA, Gucci Logistica SpA
Date: 30 April 2025
Decision: dycip.com/agfa-kering

Decision level: Court of Appeal, Luxembourg
Case: UPC_CFI_768/2024
Order/decision: ORD_ 69078/2024
Parties: Insulet Corporation v EOFlow Co Ltd
Date: 01 May 2025
Decision: dycip.com/insulet-eoflow

Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_335/2023
Order/decision: ORD_595990/2023
(26 February 2024) & ORD_12169/2024
Parties: Nanostring Technologies (Inc, Germany GmbH & Netherlands BV v President and Fellows of Harvard College, 10x Genomics Inc
Date: 11 March 2024
Decision: dycip.com/nanostring-10x-coa