Written by: Caleb Gilliam-Scott
In a recent decision, the Unified Patent Court has set out a four step test in the assessment of infringement by equivalents.
A doctrine of equivalents is not explicitly provided for in the Articles and Rules of the UPC, but is a concept familiar in many European jurisdictions, such as the Netherlands, Germany, France, and the United Kingdom.
The Court held that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
- Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
- 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?
- Is the allegedly infringing product novel and inventive over the prior art?
The Case: Plant-e vs. Bioo
The patent in question, belonging to claimant Plant-e, relates to a so-called plant based microbial fuel cell, using a method for converting light energy into electrical energy and/or hydrogen by using a living plant for converting light energy into a feedstock for microbes.
Defendant Arkyne Technologies S.L. (referred to as “Bioo”) was alleged to have infringed the patent through use of their Bioo Panel, being a large biofuel cell with lighting that can be buried in the ground for use in gardens and parks, and an exhibited Bioo Bench incorporating three such panels.
Bioo argued that the patent was not infringed because none of the features of the claim were present in their devices, and further argued that in any case the patent is invalid and should thus be revoked.
The Court ultimately held that the patent is valid and infringed, not literally but by equivalence, both directly and indirectly.
The Court divided the independent method claim into the following features:
- 11.1 Method for converting light energy into electrical energy and/or hydrogen
- 11.2 wherein a feedstock is introduced into a device that comprises a reactor
- 11.3 where the reactor comprises an anode compartment (2) and a cathode
compartment - 11.4 and wherein the anode compartment comprises a) an anodophilic microorganism
capable of oxidizing an electron donor compound - 11.5 and b) a living plant (7) or part thereof, capable of converting light energy by
means of photosynthesis into the electron donor compound - 11.6 wherein the microorganism lives around the root (8) zone of the plant or part
thereof.
Court’s Findings
The Court held there was no literal infringement because features 11.5 and 11.6 were not literally present, but considered whether the features of the Bioo Panel would infringe by equivalence.
Technical Equivalence?
The Court found that the structure of the Bioo Panel is technically equivalent to the teaching of the patent as the plant is part of the reactor and is a source of additional organic material. The plant in the Bioo Panel has the same function as in the claim and
solves the same problem. It does this in a similar way, the only difference being an extra
compartment which does not affect the function of the plant.
Fair Protection for Patentee?
On the second question, the Court found that the patent claims a new category of microbial fuel cells, by introducing a plant into the device/reactor and to obtain electricity from organic material originating from the photosynthesis by that plant and thus from light energy. Plant-e’s invention has since been given its own name, the P-MFC. Thus the Court considered a fairly broad scope of protection was in line with the contribution to the art and that in such circumstances it was appropriate and proportionate that the protection extend through equivalence to the Bioo Panel in which the same principle is implemented.
Legal Certainty for Third Parties?
The Court regards that the requirement of legal certainty is met if the skilled person understands that the patent claim leaves room for equivalents because the teaching of the patent is broader than the wording of the claim and there is, still in the eyes of the skilled person, no good reason to limit the scope of protection of the claim to a (method using a) device as claimed. The
requirement was deemed met in that the teaching of the patent is to add a plant to a an MFC to provide (additional) feedstock to make the MFC independent of externally provided feedstock, and thus the skilled person will understand that the variation of the Bioo Panel is another way to obtain this result in a similar way.
Inventive and novel?
At the priority date, the Bioo Panel would have been novel and inventive over the prior art
because of the introduction of a plant as part of the device as a supplier of additional fuel for
the battery. The parties did not dispute this.
Conclusion
Answering the above questions in the affirmative, the Court found that the Bioo Panel is a device falling within in the scope of the independent method claim of the patent and the use of this device to create energy directly infringed the claim. Due to Bioo panels being present in the Bioo bench, the bench likewise infringed.
This decision demonstrates the developing body of case law of the UPC, and it is encouraging to see that it is aligning with familiar principles which are already well developed in national forums, and the UPC’s commitment to balancing fairness and innovation in patent law.
The test questions are very similar to those set forth by the Hague Court of Appeal in 2020 in Eli Lilly, whose other case against Actavis is considered the landmark case in the UK for the doctrine of equivalents. The approach by the UPC here in aligning with the Dutch national courts is no surprise since the case was heard by the UPC local division in the Hague and Claimant Plant-e is a Dutch company with Dutch representation.
Whilst the phrasing of the questions differs slightly from, say, the UK test (e.g. is strict compliance with the literal wording of the patent an essential feature vs does the skilled person understand that the scope of the invention is broader than what is claimed literally?), the spirit of the tests is essentially the same: one might even say they are equivalents.
