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Fractus S.A. v. Xiaomi et al. District Court of The Hague 10 December 2019, ECLI:NL:RBDHA:2019:13184


In these preliminary injunctions proceedings before District Court of The Hague, the following facts are of relevance. The patentee is Fractus S.A. (“Fractus”), which is a company founded in 1999 to research, develop and commercially exploit small-sized telecommunications antennae inspired by fractal geometry (without loss of efficiency). Fractus licenses its technology to mobile device manufacturers worldwide. Fractus is the holder of the Dutch designation of EP 1 592 083 B1 (“EP 083”), titled “space-filling miniature antennas”. The defendants in the case at hand are various legal entities within the international Xiaomi group, as well as a number of Dutch mobile phone resellers, including some of the major ones (together in singular “Xiaomi”). Xiaomi produces and markets mobile phones.

The patent in suit

The patent in dispute is said to cover a new family of antennas of reduced size based on an innovative geometry, the geometry of the curves named as space-filling curves. EP 083 is part of a patent pool that is exploited on behalf of Fractus. Xiaomi was invited to take a license under this patent pool but refused to, so with EP 083 expiring on 19 January 2020, patentee Fractus initiated summary proceedings in the Netherlands on 24 September 2019 to seek a cross-border preliminary injunction against Xiaomi. Fractus had commenced litigation in Spain in 2018, but at the time of oral proceedings in the Dutch matter, no decision had been rendered in Spain.

In its defence against Fractus’ infringement claim, Xiaomi relies on a number of arguments including lack of novelty and inventive step. The debate on infringement turned out to be the decisive in this case. EP 083 claims a monopole antenna with – summarized – a radiating arm and a ground plane wherein the radiant arm is shaped as a space-filling curve and whereby such space-filling curve intersects itself at its beginning and end so that said space-filling curve forms a closed loop. Fractus asserts that the perimeter of the radiation arm of the antenna in the Xiaomi mobile phones is covered by EP 083, because it has a closed loop.

According to Xiaomi, the requirement that the shape of the radiating arm should form a closed loop is not met because, according to EP 083, the shape of the radiating arm cannot be interpreted as the shape of the perimeter of the radiating arm. In Xiaomi’s view, a radiating arm shaped as a space filling curve within the meaning of the patent refers to the three-dimensional shape of the radiating arm itself, not to the perimeter of the arm.

Infringement test of Art. 69 EPC

The question of whether Xiaomi telephones infringe EP 083 therefore boils down to the interpretation of a “radiating arm shaped as a space filling curve”. Referring to Article 69(1) of the European Patent Convention, the court establishes that the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

Pursuant to Article 1 of the Protocol on the interpretation of Article 69 of the EPC, the middle must be struck between an interpretation that determines the scope of protection exclusively on the basis of the literal text of the claims and an interpretation in which the claims only serve as a guideline and in which the protection extends to that which the patent holder wanted to protect according to the average person skilled in the art. Article 1 of the Protocol requires that both a reasonable protection of the applicant and a reasonable legal certainty be offered to third parties. In this respect, the court refers to longstanding Dutch case law in which it was held that “the essential elements of the invention whose protection is invoked” or “the idea of invention behind the words of those claims”, are relevant viewpoints (as opposed to the literal text of the claims). The purpose of identifying the idea of invention behind the words of the claims is to avoid an interpretation which is based solely on the literal meaning of the words and which may therefore be too restrictive or unnecessarily broad for the reasonable protection of the patentee.

The shape of the radiation arm or the perimeter thereof?

Applying these principles, the court decides that the Xiaomi products do not infringe EP 083. The (literal) text of the patent defines the shape of the radiation arm of a monopole antenna under protection and not the shape of the perimeter of the radiation arm. The skilled person would see a distinction in the description of the patent: in the case of other antenna types that do not embody the invention, the perimeter of the antenna is mentioned as relevant, but in the case of monopole antennas, the perimeter is not mentioned at all. Reading these parts and figures together, the skilled person would not conclude from this that the patent should be interpreted as covering the shape of the perimeter of the radiation arm.

Fractus has not yet provided sufficient insight into the fact that the skilled, on the basis of his common general knowledge of flat monopole antennas and their radiation characteristics, when reading the claims in the light of the description, the patentee had meant that the shape of the radiation arm means the shape of the perimeter of the radiation arm as the monopole antenna has a flat radiation arm.

If the person skilled in the art would then study the prosecution history of EP 083, he would first of all see that all parts of the description and the figures relating to a perimeter are types of antennae that were initially also claimed were removed in the course of the examination procedure. The skilled person would also see that a claim which specifically claimed the perimeter of the radiation arm of a monopole antenna was subject to objections from the BoA due to a lack of clarity and added matter (leading to a withdrawal of that claim by Fractus). In light of the above, the District Court of The Hague does not grant the requested preliminary injunction and orders Fractus to pay full legal costs made by Xiaomi (amounting to approx. EUR 228k).

A copy of the decision (in Dutch) can be read here.

Headnote and summary: Jeroen Boelens, NautaDutilh