Plant-e Knowledge B.V. and Plant-e B.V. v. Arkyne Technologies S.L., Decision of the Court of First Instance of the UPC Local Division The Hague concerning EP 2 137 782, 22 November 2024, Case No. UPC_CFI_239/2023
On 22 November 2024, The Hague Local Division (LD) handed down the UPC’s first decision on the doctrine of equivalents. The court stated that it’s approach to the assessment of infringement by equivalence is based on the case law in various national jurisdictions.
The Hague LD found Plant-e’s patent to be valid and infringed by equivalence, and granted a permanent injunction covering the UPC territories in which the patent is in force (Netherlands, Belgium, Luxembourg, Germany, France and Italy).
Background
Plant-e Knowledge B.V. is the proprietor of EP 2 137 782 (the “patent”), and Plant-e B.V is its licensee (together “Plant-e”).
The patent relates to a device (claims 1-10) and method (claims 11-16) for converting light energy into electricity using living plants (a so-called Plant-based Microbial Fuel Cell (“P-MFC”)). It is in force in the Netherlands, Belgium, Luxembourg, Germany, France and Italy.
Microbial fuel cells (“MFCs”) are referred to as prior art in the patent. The invention is based on the idea that a living plant can be used to supply fuel for the microorganisms in the fuel cell. It does so by converting sunlight into organic material via photosynthesis. This organic material – referred to in the patent as ‘feedstock’ provides nutrients for the microorganisms in a reactor.
Plant-e is a Dutch start up which develops and sells three product lines: a small biofuel cell for educational purposes, a biofuel cell for use with a sensor (particularly for use in agriculture) and a biofuel cell with lighting that can be used in the ground for use in gardens and parks.
Arkyne, referred to in the decision as “Bioo”, is a Spanish start up. It manufactures, offers for sale and sells certain products including a small biofuel cell for educational purposes (the “Bioo Ed”), a small biofuel cell for use with a sensor (the “Bioo Sensor”), a large biofuel cell with lighting that can be buried in the ground for use in gardens and parks (the “Bioo Panel”) and the “Bioo Bench” which incorporates three Bioo Panels.
Plant-e became aware of Bioo’s activities when Bioo set up a crowdfunding campaign for the Bioo Ed product in 2017. This led to the parties entering into a non-exclusive licence for the sale of Bioo Ed. However, Bioo terminated the licence in 2019 due to disappointing sales. In October 2022, it exhibited the Bioo Bench at a trade fair and announced intentions to bring the products to market. Plant-e responded by issuing infringement proceedings before The Hague LD of the UPC.
Plant-e alleged that Bioo’s products infringe claims 11-16 of the patent. The independent claim, claim 11, is divided into the following integers:
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.
Plant-e alleged that the Bioo Panel and Bio Ed apply the method of claim 11, directly and literally, or in any case by equivalence. As the Bioo Bench comprises three Bioo Panels, Plant-e alleged that this is also an infringing product. Plant-e also argued that offering and supplying the Bioo Ed, Biooo Panel and Bioo Bench to third parties constitutes indirect infringement of claim 11 of the patent as these products are means, relating to an essential element of the invention for the method of the invention in claim 11. During the proceedings, Plant-e dropped the allegations of infringement in respect of the Bioo Sensor.
Bioo denied infringement on the basis that its devices do not meet any of the features of claim 11, and counterclaimed for revocation of the patent on the basis lack of priority, novelty, inventive step, insufficiency and added matter.
The Decision
The court found the patent to be valid and infringed, not literally, but by equivalence, both directly and indirectly.
Claim construction
As is now standard, the court adopted the approach to claim interpretation set out by the Court of Appeal in 10x Genomics v NanoString. These principles apply equally to both infringement and validity. A patent must be interpreted from the point of view of the average person skilled in the art.
The court did not allow the prosecution history to be used to aid claim interpretation because, it found when characterising the skilled addressee of the patent that the prosecution files do not form part of the skilled person’s CGK. Bioo did not further substantiate why the prosecution history was relevant to claim interpretation in this case. There is therefore still no consistent UPC approach to the use of prosecution history in claim interpretation (with, for example, the Dusseldorf LD refusing to refer to the prosecution history to aid claim interpretation in SodaStream v Aarke and the preliminary injunction application in Ortovox v Mammut, in contrast to the Munich LD’s decision in Philips v Belkin where it was permitted, as well as in the preliminary injunction decision in SES-imagotag v Hanshow on which, on appeal, the Court of Appeal declined to comment).
Validity
The burden of proof concerning the lack of validity of the patent lies with the defendant (Bioo).
The court dismissed Bioo’s assertion that the patent is not entitled to the priority date of 17 April 2007. It applied the EPO’s “gold-standard” approach to assessing priority, and accepted Plant-e’s submission that the subject matter of claim 11 should be directly and unambiguously derivable, using CGK, from the previous application as a whole, rather than from the claims of the previous application only, as Bioo argued.
Bioo’s added matter attack was dismissed because the disclosure of claim 11 was directly and unambiguously derivable from the application as a whole (not just one claim) and therefore the patent did not contain any subject matter which extended beyond the scope of the application (again the court applied the EPO’s “gold-standard” approach).
As the court upheld the priority date, a number of Bioo’s novelty attacks were disregarded. This meant that only one piece of prior art, “Tender” (a publication entitled “Harnessing microbially generated power on the seafloor”) remained in issue. Applying the EPO’s gold-standard approach to assessing novelty, the court dismissed this attack, finding that it did not clearly and unambiguously disclose the subject matter of claim 11.
When assessing inventive step, the court said that it would follow the EPO’s problem-solution approach to assess obviousness, and that in this context it is necessary to determine “a realistic starting point” in the state of the art. There has to be a justification as to why the skilled person would consider a particular document in the state of the art as a realistic starting point. In selecting the starting point, the first consideration is that it must be directed to a similar purpose or similar effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, such prior art is generally that which corresponds to a similar use and requires minimal structural and functional modifications to arrive at the claimed invention.
Note that other UPC divisions, for example by the Munich seat of the Central Division in Amgen v Sanofi and the Paris seat of the Central Division in Meril v Edwards, have explicitly not applied the problem-solution approach, and others, whilst taking guidance from the EPO’s test, have applied it less strictly. Court of Appeal guidance will ultimately provide welcome clarification on the precise test for assessing inventive step.
On mosaicking, the court said that there must be an incentive for the skilled person to combine two pieces of prior art. If this incentive is lacking, the combination is almost invariably not obvious for the skilled person, which would make the patent inventive.
On the facts, features 11.5 and 11.6 of the claim were missing from all realistic starting points proposed by Bioo.
Finally, on the facts, the court dismissed Bioo’s arguments the scope of the claim is very broad and cannot be carried out across the whole scope of the claim without undue burden using the CGK.
Infringement
The court noted that the burden of proof for establishing infringement lies with the claimant (in this case Plant-e).
It went on to say that infringement should be assessed in two steps, applying Article 69 EPC and the Protocol.
1. The first step evaluates ‘literal’ infringement of the features of the patent in view of the claim construction is evaluated.
On the facts, the court found there was no literal infringement of claim 11 because features 11.5 and 11.6 were not present in the Bioo Panel.
Claim 11 includes a device which comprises a reactor, which itself comprises an anode compartment and cathode compartment. The court interpreted integer 11.6 (“wherein the microorganism lives around the root zone of the plant or part thereof) as requiring the roots of the plant to be in the anode compartment (with the microorganism). In the Bioo Panel, the roots of the plant are in an upper compartment but the anode compartment is in a lower compartment.
The question for the court to address was, therefore, whether the variation are equivalent to what is specified in the claim.
2. In a second step, if the patent is not judged to have been literally infringed, equivalence is assessed.
The test applied by The Hague LD to the assessment of infringement by equivalence is, it said, based on the case law in various national jurisdictions, as proposed by both parties in this case.
However, the approach adopted by the court is closely aligned with that taken by the Dutch national courts.
The test entails that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative.
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?
YES: On the facts, it found that the plant in the Bioo Panel has the same function as in claim 11 and solves the same problem. It does so in a similar way, the only difference being an extra compartment which does not affect the function of the plant and which the court deemed to be equivalent. The same applies to the location of the roots/micro-organism.
2. Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee? In view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
YES: the court found that the patent claims a new category of microbial fuel cells, and a broad scope of protection is therefore in line with the contribution to the art (which the court evidently considered to be significant). In these circumstances, the court found it is fair and proportionate that the protection is extended by equivalence through to the Bioo Panel.
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?
YES: The court said 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 (clearly) 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 court said that the skilled person would understand the variation of the Bioo Panel is another way to achieve the teaching of the patent (adding a plant to an MFC to provide feedstock to make the MFC independent of externally provided feedstock) in a similar way.
4. Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence)
It is notable that the Dusseldorf LD seemingly dismissed the availability of the Gillette defence to literal infringement in Sodastream v Aarke, at least on the facts of that case. However, here The Hague LD includes it in the test for infringement by equivalence.
YES: 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/reactor.
In summary therefore, the Bioo Panel, and the Bioo Bench which comprises three Bioo Panels, both directly infringe claim 11 of the patent on the basis of equivalents. Bioo also provides the Bioo Panel and Bioo Bench to third parties, and therefore also indirectly infringes claim 11 of the patent on the basis of equivalents. The Bioo Ed also infringes.
Overall findings
The Hague LD found the patent to be valid and infringed by equivalence, and granted a permanent injunction covering the UPC territories in which the patent is in force (Netherlands, Belgium, Luxembourg, Germany, France and Italy). The court found that Plant-e is entitled to orders for the infringing goods to be recalled, removed from the channels of commerce and destroyed (finding such measures reasonable and proportionate in the circumstances). Plant-e is entitled to damages to be determined, and an interim damages payment of EUR 35,000. The court also found it proportional, given that Bioo is a former licensee of Plant-e, to publish the decision on its website. As the losing party, Bioo is responsible for the costs.
Comment
This first decision on infringement by equivalents is welcome. However, it is only one decision by one local division, and does demonstrate an element of local flavour given that The Hague LD adopted the approach followed by the Dutch national courts. Further decisions are awaited, and ultimately the Court of Appeal will determine whether the test proposed in this ruling is ultimately the one universally accepted by the UPC.
The decision can be read here.
