Context: One of the most important questions with respect to claim construction by the Unified Patent Court (UPC) is whether a patent’s prosecution history (such as the modification or addition of claim limitations in order to overcome an examiner’s objections) may be taken into consideration. On December 20, 2023 (shortly before ip fray was launched), the UPC’s Munich Local Division (LD) denied a preliminary injunction (PI) in SES-imagotag SA v. Hanshow Technology Co. Ltd. et al. and prosecution history was outcome-determinative (UPC registry page), which marked a departure from German national courts’ reluctance to consider examination records.
What’s new: The UPC Court of Appeal passed on this opportunity to clarify whether prosecution history may be relied upon for the purpose of claim construction, which could sometimes result in what is called prosecution (or file-wrapper) history estoppel in U.S. patent litigation. Instead, it affirmed (PDF (in German)) the Munich LD’s PI denial in this case by interpreting the disputed claim elements in light of the claim language as a whole (as opposed to viewing claim limitations in isolation). Furthermore, the Court of Appeal was not swayed by the plaintiff-appellant’s argument that even under the claim construction of the court below, an infringement was more likely than not based on the evidence before the court.
Direct impact: The injunction that was sought with respect to all 17 UPC contracting states won’t issue.
Wider ramifications: Until the Court of Appeal reaches the question of what relevance prosecution history should have, parties will continue to point to the Munich LD’s decision that it is relevant. Their adversaries will argue that the Court of Appeal has not endorsed that approach and possibly even assert that the Court of Appeal’s decision not to touch on that question suggests hesitance. However, if one reads today’s decision, it’s clear that the Court of Appeal simply picked low-hanging fruit, after which it had no need to reach the fundamentally important question of reliance upon prosecution history, for which there may be a better vehicle in the not too distant future.
The shortest and simplest way to describe the claim construction question at issue is that it’s about the location of two electronic components (a chip and an antenna) relative to each other, which one can easily infer from the relationship between three different claim limitations, which is furthermore supported by a paragraph in the specification. So if one took one of the critical claim limitations out of context, one might interpret it broadly enough to identify an infringement of the given limitation, but not so if one considers how the claim language clearly sets the positions of those elements apart from each other. The holistic approach cannot lead to any other interpretation than that two of the relevant components cannot possibly be on the same layer.
The patent-in-suit is EP3883277 on a “method for communicating spatially located information to a mobile terminal.” Here’s the English version of claim 1 (the proceedings were in German and the original language of the patent is French, just for the avoidance of doubt) with the outcome-determinative terms highlighted:
Electronic label (3) for sales area with a series of distributed electronic labels (3), each electronic label (3) being identified by a unique label identifier specific to it, comprising:
- a radio frequency communication module (32) configured to receive from a central server (2) data representative of information relating to an article;
- a memory (33) to store said data representative of information relating to an article;
- a display screen (31) configured to display said information relating to an article;
- a microcontroller (34) configured to control the display of said information relating to an article on the display screen (31);
- a case (30);
- a printed circuit board (35) housed in the case (30) on the side of the back of the case and on which are arranged the radio frequency communication module (32), the memory (33) and the microcontroller (34);
- a radio frequency device (36) capable of establishing a communication (S1) by radio frequency with a mobile terminal (1) and communicating to said mobile terminal the identifier of the electronic label,
- the radio frequency device (36) comprising an antenna (38) and an electronic chip (37) of NFC or RFID type,
- the communication (S1) by radio frequency between the radio frequency device (36) and the mobile terminal (1) being established by NFC or RFID communication,
- the electronic chip (37) of the radio frequency device being disposed on the printed circuit board (35) and
- the antenna (38) of the radio frequency device being disposed on or in the housing on the side of the front of said electronic label (3).
Taken together, those claim limitations show in the Court of Appeal’s opinion that the chip and the antenna can’t be in the same place in or on the case. The chip must be on the backside and the antenna on the frontside. That also implies some distance.
The difference between the isolated and holistic perspectives is particularly important with a view to the last part: the plaintiff-appellant argued that the claim language (“on the side of the front of said electronic label”) merely means that the antenna must not be arranged behind the circuit board. But the court looked at what the patent says if one takes into consideration the interdependencies between the different elements and applied the knowledge of the person having ordinary skill in the art for the purposes of this patent dispute.
The Court of Appeal didn’t have to, and decided not to, reach the question of whether the patent’s prosecution history (at some point the patent application explicitly referred to a distance) is an eligible point of reference for claim construction purposes. Instead, in paragraph 37 of today’s decision it merely noted that both sides’ citations to the patent prosecution file “do not shed any new light on [the Court of Appeal’s] claim construction,” obviating the need for the appeals court to take a position on the relevance of prosecution history to claim construction in the UPC.
It would be too harsh to accuse the Court of Appeal of having “ducked” that question, though ip fray was admittedly contemplating that term. It is fair to say that the appellate decision is coherent and compelling in its own right, but if the two sides’ arguments involving prosecution history wouldn’t have made a difference anyway, this case wouldn’t have been a great vehicle for the purpose of a clarification that does, however, remain absolutely necessary and will be among the most important ones the UPC Court of Appeal will ever provide.
The decision was made by President Dr. Klaus Grabinski, legally qualified Judge Françoise Barutel, legally qualified judge and Judge-rapporteur Peter Blok, and technically qualified Judges Eric Augarde and KIaus Loibner.
Plaintiff-appellant Vusion Group SA (formerly SES-imagotag SA) was represented by Finnegan’s Dr. Dr. Jochen Herr, patent attorney Alexandre Hoffmann and attorney-at-law Daniel Seitz. The prevailing defendant-appellee was represented by Taylor Wessing’s Roland Kueppers (“Küppers” in German) and Dr. Alexander Rubusch.