Claim construction in the UPC: The case SES-Imagotag v Hanshow.

On 20 December 2023, the Munich UPC Local Division handed down a landmark decision on claim construction(UPC_CFI_292/2023: machine translation (EN) / German original), rejecting preliminary measures regarding the alleged infringement of European Patent EP 3 883 277. At the same time, the court held that the defendants’ cost for depositing protective letters in the UPC have to be reimbursed by the applicant as a part of the costs in proceedings for preliminary measures. The Taylor Wessing team was successful in representing its client Hanshow in these first instance proceedings.

“Headnotes:
1. The original wording of the claims of a European patent can be used as an aid to interpretation in connection with amendments to the version of the claims made during the grant procedure.
2. As the unsuccessful party, the applicant in an unsuccessful application for preliminary measures must, as a rule, also bear the costs incurred by the defendant in filing a protective letter.”

The case

The alleged infringement concerns Electronic Shelf Labels (ESLs) for price labelling and retail store management, particularly, the spatial arrangement of a printed circuit board (PCB) and an antenna for Near Field Communication (NFC) inside the housing of ESLs. The decision centers on the positioning of these components in accordance with the specifications of the patent. The patent claim required that the PCB is placed "on the back of the housing" while the antenna is positioned "on or in the housing on the side of the front of the electronic label". The claim con-struction was at issue between the parties.

The patentee argued that the claim did not require direct physical contact of the PCB with the housing and did not specify a specific position of the antenna in relation to other elements such as the display. The defendants, on the other hand, emphasized that the PCB must be technically and functionally aligned with the back of the housing. With regard to the antenna, they argued that the distance of the antenna to the NFC chip on the PCB should help to avoid electromagnetic interference according to the patent description. Former patent claims explicitly using the term “distance” were amended by the patentee during prosecution as the examiner found them too unclear.

The Munich Local Division decided that a joint interpretation of the disputed features was neces-sary, whereby the technical interaction between the PCB and the antenna should be regulated by their spatial arrangement. Further, the Munich Local Division concluded from the original wording of the patent claims that the claims as granted require the PCB and the antenna to be placed "dia-metrically" opposite each other.

The original wording of the patent claims can be used as interpretation aid and, thereby, impact the claim construction of the patent claims after grant. With this principle the UPC establishes it-self with regard to claim construction rules.

The decision has been appealed by the patentee.

Legal takeaway

While some jurisdictions in the EU (e.g., the Netherlands, France and Belgium) take the patent-ee’s statements during prosecution into account for claim construction, the German courts are generally reluctant to accept one-sided statements of the patentee to be binding with regard to the claim construction of the granted patent. Principally, the German courts have decided that a “formulation attempt” during prosecution would not affect the interpretation of the final claim word-ing. Against this background, the UPC type of claim construction differs from German case law. By taking the original wording of the claims into account, the Munich Local Division also empha-sizes the relevance of the historical development of the patent.

The Munich Local Division further clarified that the defendants’ costs for depositing protective letters in the UPC have to be reimbursed as a part of the costs in the proceedings for preliminary measures, when the later filed application was unsuccessful.