SES-imagotag v Hanshow Technology: will we see file wrapper estoppel in the UPC?
The case of SES-imagotag SA v Hanshow Technology Co. Ltd et al concerns a preliminary injunction (PI), and is the first we have seen that centres on a decision taken by the Unified Patent Court (UPC) on claim construction.
SES-imagotag owns unitary patent EP 3883277 C0, which was granted in August 2023, and unitary effect was registered on 01 September 2023. On 04 September 2023 SES requested a preliminary injunction at the UPC Munich Local Division, on the grounds that products sold by the Hanshow group directly infringe the claims of this patent.
The patent at issue is directed to an electronic label that is used in particular for product and price labelling. The key features of the claim considered for deciding whether there was an infringement were:
- A printed circuit board (PCB) “on the rear surface” of the housing; and
- A radio frequency peripheral device containing:
- an electronic chip arranged on the PCB; and
- an antenna “being disposed on or in the housing on the side of the front of said electronic label”.
At the heart of this matter was the question of whether Hanshow Technology’s products did indeed infringe the claims of the patent. In order to answer this question, the court needed to construe certain features of the claim, and it is the way in which the court arrived at its interpretation of the claim that has sparked interest and debate.
SES-imagotag argued that the claim was not limited to the antenna only being on the front of the housing, but that the description made it clear that the claim covers any arrangement in which the antenna is located between the circuit board (“on the rear surface” of the housing) and the display screen of the label. Such arrangement was present in the allegedly infringing articles.
However, the court was not convinced by this argument. Rather, it considered that the patent as a whole taught that spatial separation of the antenna and electronic chip on the printed circuit board was important to reduce radio interference.
As part of this, the court looked at how the claims were originally worded in the application as filed, commenting that the original version of the claims “can be used as an interpretation aid in connection with changes made in the granting process”.
The original claims specified that the chip on the printed circuit board and antenna should be spaced apart, with the technical purpose of such feature being to limit interference. In light of this original wording, the court interpreted the granted claim as requiring that the chip and antenna be arranged diametrically from one another, such that the circuit board must be on the rear and the antenna on the front of the housing.
Based on this interpretation, the court found that there was no direct infringement. The request for a preliminary injunction was not granted.
Impact of decision
The use of the original claims to interpret the granted claims will come as somewhat of a surprise to many European Patent Office (EPO) and UK practitioners. This decision also raises questions about how uniformly law will be applied across the various Local and Regional Divisions of the UPC.
Indeed, there is no single harmonised law that the UPC is to base its decisions on. Rather, Article 24(1) of the UPC Agreement stipulates that the UPC shall base its decisions on inter alia EU law, the European Patent Convention (EPC), other international agreements applicable to patents and binding on all the Contracting Member States, and national law. In this case, it seems that EPO case law on claim interpretation has not been taken into consideration. As a first point, aside from considerations of Article 123(3) EPC, the EPO does not concern itself with the extent of protection, which is a matter for national courts to decide when dealing with infringement cases (for example, T 422/91). Nevertheless, when interpreting claims, recent case law of the EPO has often centred on whether the description can be used in order to interpret features in the claims. The general practice (confirmed recently in T 42/22) is that the description cannot be used to give different meanings to features in claims that in themselves impart a clear, credible technical teaching. The reticence to use the description as an interpretation tool at the EPO is seemingly at odds with the Munich Local Division’s approach to use the wording of the original specification or prosecution history as in SES-imagotag v Hanshaw Technology.
Although outside the UPC, it is worth comparing this decision to the UK’s approach to claim interpretation. Here, the Supreme Court, in Actavis v Eli Lilly, opened the door to the possibility of using the prosecution history to determine a point of construction, but only when either the point is truly unclear and the prosecution history would unambiguously resolve it or when it would be contrary to the public interest to ignore the file contents. However, UK Courts have thus far tended to avoid the issue, with Mr Justice Henry Carr commenting at the High Court during L’Oréal v RN Ventures Ltd (2018) that “reference to the prosecution history is the exception, and not the rule”.
Turning to national law, it would be reasonable to expect that the law of the Local Division at which this case was heard would be relied upon. The German Federal Court of Justice (Bundesgerichtshof, BGH) ruled in 2002, in the leading judgment X ZR 43/01 “Kunststoffrohrteil” (plastic pipe part), that “issues derived from prosecution history cannot be taken into account in the assessment of the scope of protection of a patent, even with regard to the requirement of legal certainty.” According to the later judgment Xa ZR 36/08 of 04 February 2010 “Gelenkanordnung” (joint arrangement), differences between the patent specification and the published patent application are generally not taken into account when interpreting a patent. However, if it remains doubtful whether the patent claim and description can be meaningfully related to one another, the Bundesgerichtshof ruled in judgments X ZR 16/09, “Okklusionsvorrichtung” (joint arrangement) of 10 May 2011 and X ZR 43/13 “Rotorelemente” (rotor elements) of 12 May 2015, that the “claim history” may be used to clarify further whether the claim has protected a subject matter that differs from, or falls short of, what is closed in the description.
Against this background, and given the preliminary and time-critical nature of the present case (it stemming from a request for a preliminary injunction), it can be said that the decision may be well-aligned with German patent practice.
Of additional interest is that some commentators have noted that consultation of the prosecution history is a more common approach in the Netherlands, and that one of the judges hearing the case before the Munich Local Division is Dutch.
This therefore perhaps emphasises that local flavours will be brought to UPC proceedings, not only based on locality of the division hearing a certain case, but also perhaps on the nationality of the judges hearing the case.
There have been comments that claimants may, where possible, choose which division to bring their action in based on a consideration of which local law may be most favourable to their case (for example, some European countries have a history of being more patentee-friendly when it comes to the granting of preliminary injunctions). However, this case highlights that a choice of division may not necessarily be the decisive factor, and that the nationality of the judges hearing a case may also have a bearing beyond the claimant’s control.
We will of course be keeping a keen eye on how case law develops before the UPC when it comes to claim interpretation. While the judges in this instance looked to the wording of the original claims as justification for their interpretation, it raises the question of whether arguments or statements made during examination by the applicant will likewise be taken into consideration when construing the claims before the UPC. The fact that the UPC operates under a civil law procedure, with the divisions not being bound by previous decisions, means that some cases could turn on claim interpretation using prosecution history while other cases entirely ignore the file.
For the time being, applicants should be mindful of the fact that amendments and arguments that they make during examination may come back to bite during any infringement/revocation proceedings during the UPC.
Case details at a glance
Decision level: Court of First Instance, Munich local division
Parties: SES-imagotag SA v Hanshow Technology Co. Ltd. et al
Citation: UPC CFI 292/2023
Date: 20 December 2023
HC-2016-003018, England and Wales High Court (Patents Court), 05 February 2018: dycip.com/hc-2016-003018