[UPCKat] UPC Court of Appeal’s PI ruling leaves open the possibility of using prosecution history as an aid for claim construction

As part of our UPCKat reporting on the latest UPC developments, the IPKat continues its series of reports that analyze the development of preliminary injunction case law from the UPC. With our guest UPCKat team in the form of guest UPCKats Agathe Michel-de Cazotte, Hiske Roos and Laura Mikkelsen and members from the team at Carpmaels we continue the journey, again visiting the Munich Local Division before venturing to the Court of Appeal's May decision.  

Over to the UPCKats:

"This UPCKat was excited to see the UPC Court of Appeal hand down its decision on VusionGroup’s application for a preliminary injunction against Hanshow on 13 May 2024.  The Court of Appeal upheld the Munich Local Division's decision at first instance dismissing VusionGroup’s application (see UPC Court of Appeal, 13 May 2024, VusionGroup v Hanshow UPC_CoA_1/2024).

The Court of First Instance’s (CFI) and Court of Appeal’s decisions raised interesting questions around claim interpretation, while the preliminary injunction application was eventually rejected.  

The patent at issue – EP 3883277 - covers a “method for communicating spatially located information to a mobile terminal” and relates to the display of price information in a sales area by means of electronic labels.    

VusionGroup alleged direct infringement of independent claim 1 and dependent claim 3 of the patent on the basis of two of Hanshow’s series of digital labels, alleging that Hanshow offered and sold these product lines within the territory of the 17 UPC contracting member states.  The CFI (see here) dismissed VusionGroup’s application as it was not convinced with sufficient certainty that the contested products infringed the patent (and validity was therefore not dealt with). The CFI’s decision focused on the interpretation of claim features 7 and 8.4 of claim 1, which read as follows: 

7. a printed circuit board (35) accommodated in the housing (30) on the side of the rear surface of the housing, 

8.4. the antenna (38) of the radio frequency peripheral device is arranged on or in the housing on the side of the front surface of the electronic tag. 

These features are shown in Figure 3 of the patent, set out above.

The CFI ordered VusionGroup to pay the costs of the proceedings and other costs of Hanshow (including costs it had incurred by filing a protective letter), up to a maximum of EUR 200,000.   

Key to the CFI’s decision was its finding that according to the wording of the claim as granted, the antenna (38) and the printed circuit board (35) are to be arranged completely and directly opposite each other.  The CFI was therefore not satisfied with a sufficient degree of certainty that the products infringed the patent because at least a substantial part of the antenna was determined to be assigned to the back of the housing and therefore the products did not realise claim feature 8.4, which was determined to require that the antenna to be arranged on the side of the front surface.  Very interestingly, the CFI used the prosecution history of the patent as an aid in arriving at this conclusion by looking at how the claims were originally worded in the application as filed.

VusionGroup appealed the CFI’s decision, citing the following appeal grounds: 

- Incorrect claim interpretation. 

- Inadmissibility of using prosecution history as an aid to interpretation. 

The key issue to be decided was whether the CFI incorrectly defined the scope of protection for claim features 7 and 8.4 of claim 1 such that it incorrectly held that the products fell outside the scope of protection of the patent.  

Decision 

The Court set out the established standard for claim interpretation as defined in the 10x v Harvard/NanoString Court of Appeal case (consisting of 7 key elements) and upheld the CFI’s interpretation of the claim features of claim 1 of the patent on this basis.  The Court stated that the CFI was right to conclude that claim features 7 and 8.4 exclude that the printed circuit board and the antenna are positioned in the same plane, however it left open the question of whether the prosecution history of a patent can be considered when determining the scope of protection of a European patent by stating it had interpreted the disputed claim feature 8.4 without having regard to the prosecution history of the patent.   

Using the approach outlined in 10x v Harvard/NanoString, the Court construed claim features 7 and 8.4 to mean that the antenna is required to be disposed on or in the case at a location more to the front of the electronic label than the printed circuit board with the chip on it. 

The Court explained that according to the wording of the claim, the chip and antenna of the product should not be placed in the same location in or on the case, such that the chip had to be arranged on the printed circuit board “on the side of the back of the case”, while the antenna was required to be “on or in the case at a location more to the front of the electronic label than the printed circuit board with the chip on it.”  

The Court held that it could not be established, on the basis of the photo evidence before it, that in the closed position, the antenna of the product was positioned more to the front of the label than the printed circuit board.  The Court therefore held that the antenna and the front part of the relatively thick printed circuit board lie next to each other in the same plane, which meant that the product was not within the defined scope of protection of claim 1 (nor claim 3 as dependent on claim 1) of the patent. 

Hanshow has filed an application for revocation of the patent at the Paris seat of the Central Division of the UPC (UPC_CFI_360/2023, ACT_578871/2023).  The hearing date has been set for 24 October 2024, so it will be interesting to see how the LD Munich and Court of Appeal’s claim construction comments are incorporated into those proceedings."