Context: The previous article already discussed a landmark Unified Patent Court (UPC) decision published today (Panasonic overcame OPPO’s FRAND defense).
What’s new: In a decision made yesterday, but published today, the UPC’s Hague Local Division (LD) granted Plant-e Knowledge a multi-country injunction against Arkyne Technologies (maker of the competing Bioo product) (PDF). The court did not find a literal infringement, but developed a test for an equivalent of the U.S. doctrine of equivalents and identified a violation on that basis.
Direct impact: Unless Arkyne obtains an enforcement stay from the Court of Appeal (CoA), which is possible but not going to be easy, the injunction will shut down its Bioo products and Arkyne will furthermore have to publish a notice of the decision on its website.
Wider ramifications: It was a question of when, not if, the question of infringement by equivalence would reach the UPC. All major patent jurisdictions have a doctrine of equivalents, though it is typically found in case law, not statutory law. Also, the case is an opportunity for the CoA to give some guidance on the standard for an obligation to publish a notice of an infringement ruling on a corporate website.
In the decision, the court refers to Arkyne as “Bioo” (the brand of its relevant products).
In 2008, Plant-e (a spin-off from a Dutch university) filed the application that led to the grant of EP2137782 (“Device and method for converting light energy into electrical energy”). In its marketing communications, Plant-e referred to the related technology as P-MFC: Plant-based Microbial Fuel Cells. MFCs were already known, but P-MFC were (according to the decision) novel and inventive at the time.
What sets P-MFCs apart from conventional MFCs is that, put simply, they take renewable energy to another level by not only generating electricity on the basis of organic material, but by furthermore eliminating or reducing the need to generate and transport biofuels. Plant-e’s idea was to have a living plant (or a part thereof) supply fuel for this process. The contribution that the living plant makes is photosynthesis: it converts sunlight into organic material that serves as nutrients for microorganisms in a reactor. That material is also called feedstock as it feeds the microorganisms.
This is not the first time that the Dutch innovator accused its Spanish competitor of infringing that P-MFC patent. The first time it happened in the late 2010s. Plant-e became aware of the Bioo product(s) because of a crowdfunding (raising money for a product from large numbers of internet users) campaign. In 2018, that led to a license agreement.
At some point, Arkyne wanted to avoid paying license fees and terminated the deal in 2019, apparently telling (and between the lines it sounds like an accusation of misleading) Plant-e by suggesting that dissatisfactory sales volumes were the reason for termination.
Arkyne filed a patent application of its own in 2020 and started to promote some new products in 2022. The following photo (from the judgment) shows the Bioo Bench:
To make it easier to read, this is the text:
ELECTRICITY FROM NATURE
Bioo
Charge your phone with Electricity from Nature.
This bench collects energy using a hybrid system, charging a percentage of your phone’s battery with biological reactors and the grid. The natural environment is used to power the biological reactors (Bioo Panels) without harming any living being, using natural microorganisms to break down organic molecules in the soil and generate an electrical current in the process.
In other marketing materials, but also in an EU funding application, Arkyne provided far more detailed and specific explanations of how its Bioo products work and what purpose they serve.
In the UPC infringement litigation (The Hague LD), Arkyne couldn’t convince the court that Plant-e’s patent is invalid. But Plant-e didn’t prevail on literal infringement. It succeeded with respect to all claim elements but one. That one is a spatial element (“wherein the micro-organism lives around the root zone of the plant or part thereof”).
The court interpreted it as requiring the roots of the plant to be in the anode compartment (the reactor also has a cathode department). Plant-e argued that the roots might just get there eventually didn’t convince the court because Arkyne said its panels “are checked regularly, at least once a year, to avoid precisely that.”
That fact defeated the literal infringement claim. But Plant-e had argued not only literal infringement: as a fallback, it also claimed infringement by equivalence.
There was no UPC case law on equivalence prior to this decision. The Hague LD explains in the decision that literal infringement is asserted first, and if the patentee also made an argument based on equivalence, the court analyzed that part in a subsequent step.
There are four criteria to be met (cumulatively), and the decision describes them (in a headnote) as follows:
1) Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
2) Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
3) Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
4) Is the allegedly infringing product novel and inventive over the prior art?
The first of those questions corresponds to the “triple identity” test under the U.S. doctrine of equivalents.
Here, the court was satisfied that the nutrients generated by the plants, while placed in an upper compartment, ultimately reached the relevant micro-organisms. One could call it a “trickle-down” theory: it is mentioned that irrigation may result in nutrients going down to a lower compartment.
Arkyne could not convince the court that its Bioo Panels functioned differently. It made an argument based on a substrate that wouldn’t have to be replaced often. But the judgment notes that this would be tantamount to a perpetuum mobile (a system that generates energy forever without needing any additional input), which does not exist.
The UPC panel considered Plant-e’s invention to be rather groundbreaking at the time. That view, which one can infer from the decision, clearly helped Plant-e meet the second criterion (fairness) and also played a role in connection with the third one: the court believes someone reading the patent would understand that what the invention is about is that a plant generates feedback for the micro-organisms that then generate electricity. The position of th eplant would therefore have to be understood to be not that important. In other words, it is more about the purpose that the plant serves, and if it takes irrigation for the organic material (produced by the plant as a result of photosynthesis) to find its way to the electricity-generating micro-organisms, then that is still essentially an implementation of the same invention.
The fourth criterion mirrors the Formstein or Gillette defense. If the accused technology had been non-novel or at least obvious over the prior art at the time that the patent-in-suit was filed, then that would suggest the patent office wouldn’t have granted the patent unless there was something that set it apart from the prior art. Plant-e also surmounted this hurdle.
The court granted the injunction on that basis. An obligation to make an infringement ruling public is a rather drastic remedy, but the court deemed it warranted in this case, also taking into account the fact that the defendant used to be a licensee of the plaintiff’s technology.
Panel: Presiding Judge Edger Brinkman, Judge-rapporteur Margot Kokke, Judge Samuel Granata (Brussels) and Technically Qualified Judge Simon Walker.
Counsel for Plant-e: Simmons & Simmons’s Oscar Lamme, Johan Renes, Dr. Peter Meyer, Xingye Huang, Atze van Stralen, Bouke Algie and Daisy Termeulen.
Counsel for Arkyne (Bioo): Kennedy Van der Laan’s Joran Spauwen, Alfred Meijboom, Merel Rondhuis; De Vries & Metman’s Patrick Busch and Wouter Mooij; and Rousaud Costas Duran’s Xavier Fàbrega.