1. Clarity of claims
Federal Court of Justice, 27 October 2015 (X ZR 11/13) – Joint strip
Keywords: claims – examination for clarity after grant
European patent 0 792 973, as defended in the proceedings at issue, was about using a strip as a cold processable joint strip in road construction.
The claimant argued that the term "separate" used in feature 4 of the claim as limited in revocation proceedings had to be examined for clarity, but the Court disagreed.
The Court noted that, if a patent proprietor seeks to limit a claim in revocation proceedings, the intended limitation has to be examined for allowability, for example because the subject-matter might then go beyond what was originally disclosed or extend the protection conferred by the patent. Another criterion for the allowability of features and terms added to a claim can be whether the claim is sufficiently clear and unambiguous after their addition (see Federal Court of Justice judgment X ZR 88/09 – Electron beam therapy system). That follows from Art. 84, second sentence, EPC and, under German law, from Section 34(3) No. 3 Patents Act in conjunction with Section 9(6) Patent Regulation.
However neither the European Patent Convention nor the German Patent Law made any provision for examining the clarity of claims already granted. The patent as granted or as amended in opposition proceedings gave its proprietor rights of which he could be deprived in part or in full only in the scenarios laid down by law, i.e. if there was a ground for opposition or revocation. The EPC and German law set out these grounds exhaustively; lack of clarity was not one of them (Art. 100 and 138 EPC; Sections 21 and 22 German Patents Act). Thus an examination for clarity was in any event impermissible to the extent that the alleged lack of clarity was already present in the claims as granted (see EPO Enlarged Board of Appeal decision G 3/14).
In light of the above, the Court held that it was not open to it, in the case in suit, to examine the claims that had been recast as use claims. The contested word "separate" had not been added to what had become a use claim. It had been present in the product claim as amended in the opposition proceedings, which, aside from having been recast as a use claim, had remained unchanged.
In its headnote, the Court summarised its ruling as follows: if a patent proprietor limits a claim in revocation proceedings, that claim is in any event not open to an examination for clarity to the extent that the alleged lack of clarity was already present in the claim as granted.
2. Interpretation of claims and extent of protection
Vienna Higher Regional Court, 15 March 2016 (34 R 146/15p)
Keywords: claims – interpretation of claims – extent of protection – Formstein objection
Under Section 163(1) of the Austrian Patent Law ("PatG"), the Austrian Patent Office can be requested to issue a finding against a patent proprietor that an object or method does not fall within the scope of his patent. Such a finding can only be obtained through the procedure under this lex specialis provision; it cannot be obtained by way of a court action for a declaratory judgment. However, it cannot be admissibly requested if infringement proceedings are already pending before a court.
Citing the Protocol on the Interpretation of Art. 69 EPC, Vienna Higher Regional Court observed that the content of a patent claim depended on how its wording as granted was to be construed, account being taken of the explanations provided by the description and drawings. That the grant file might support a narrower construction of its scope was not decisive (Supreme Court, 17 Ob 35/09k; 4 Ob 214/12t).
Section 163(5) PatG required that, when determining the extent of protection conferred for the purposes of making its finding, the Patent Office also take account of the prior art documented by the parties. The extent of protection was limited by the prior art at the date of filing or priority because a patent claim could not include anything already forming part of the prior art before that date (Supreme Patent and Trademark Chamber, Op 3/02; Op 2/13; 4 Ob 9/06m).
Given that the prior art already in the public domain took precedence, it could be admissibly objected in proceedings determining the extent of protection that the embodiment at issue was not a patentable invention in light of the prior art at the filing or priority date (known as a "Formstein objection"; see the German Federal Court of Justice's Formstein judgment X ZR 28/85). In infringement proceedings under German law, this objection could not be granted if the contested embodiment implemented the features of the patent in suit by identical means, i.e. in line with the patent's literal wording, because, then, a finding of non-infringement would imply that the patent grant was unsound. That was not in the power of the court hearing the infringement action, because it was bound by the patent grant. To overcome an allegation of literal infringement, the patent's invalidity had to be asserted in separate revocation proceedings. The Formstein objection was therefore relevant only where infringement by equivalent means was alleged (German Federal Court of Justice judgment X ZR 74/14).
The Court held that no such distinction had to be made in Section 163 PatG proceedings, because the issue of the patent's (partial) invalidity – and so, at least indirectly, the lawfulness of its grant – could be addressed in this context. All the established prior art had to be considered, irrespective of whether it used literal or equivalent means. That the patent grant was formally valid was not enough by itself. The outcome of raising the Formstein objection in such inter partes proceedings brought at first instance before the Patent Office as granting authority could therefore be that the patent had to be regarded as de facto invalid. Consequently, the patent grant was not, as in Germany, binding.
The Court ultimately upheld the Patent Office's decision that the requester's patent did not infringe the respondent's patent (European patent 1 989 066), because it had been obvious from the prior art by the priority date of the latter patent.
Court of Cassation of 12 March 2015 (C.14.0098.F) – Saint-Gobain v Knauf
Keywords: claims – interpretation of claims – equivalents
The Court observed that, as a monopoly exceptionally interfering with the freedom to conduct business, a patent had to be interpreted narrowly. However, to determine the scope of protection conferred by the patent, account has to be taken of every element equivalent to an element indicated in the claims.
Editor's note: Confirmation from the Court of Cassation of the ruling handed down by Liège Court of Appeal on 19 September 2013 (2011/RG/1503) in Saint-Gobain v Knauf, abstract published in "Case Law from the Contracting States to the EPC" (2011-2014), supplementary publication – OJ 2/2015, p. 155 (European patent 0 399 320).
Federal Court of Justice, 14 October 2014 (X ZR 35/11) – Access rights
Keywords: claims – interpretation of claims – embodiments not covered by interpretation
At issue in this case was European patent 1 186 189, which was for a method of allocating access rights to a telecommunications channel.
The Court observed that the Federal Patent Court had construed one claim such that neither of the embodiments in the patent specification would be covered by the patent's subject-matter.
It held that such an interpretation came into question only if other possible ones that would at least partly incorporate the embodiments were absolutely ruled out, or if the claim contained sufficiently unambiguous indications that something really was being claimed that deviated from the description to such a degree.
But that was not the case here. In fact, the claim indicated sufficiently unambiguously that its features were intended to cover both of the embodiments in the description.
Federal Court of Justice of 12 May 2015 (X ZR 43/13) – Rotor elements
Keywords: claims – interpretation of claims
The claimants in this case argued that the subject-matter of the patent in suit had been inadmissibly extended and was not patentable.
The Federal Court of Justice established that first it had to construe the disputed claim using the description and drawings before it could assess whether the subject-matter of the patent as so construed had been disclosed as the invention, or as part of it, in the original application. In other words, before an allegedly inadmissible extension could be examined, the claim's meaning had to be determined.
It was the Court's established case law that a claim always had to be construed, even if its wording seemed to be unambiguous. That was because the description might define terms in its own way, constituting a patent-specific glossary (Federal Court of Justice X ZR 85/96 – Clamping screw). Even the rule that, if a claim and the description contradicted one another, the claim took precedence because it – not the description – defined and thus delimited the protected subject-matter (Federal Court of Justice X ZR 16/09 – Occlusion device) did not mean a claim could never be understood differently from what was conveyed by its mere wording once the description and drawings had been considered.
A description served to explain the protected invention. Thus, in cases of doubt, a claim and the description had to be understood not so that they contradicted one another, but as related parts of the technical teaching imparted to the skilled person, which had to be considered as a meaningful whole. Only if and to the extent that that was not possible was it justified to conclude that parts of a description had to be disregarded for the purpose of claim construction. Construing a claim such that none of the embodiments in the patent specification would be covered by the patent's subject-matter thus came into question only if other possible interpretations that would at least partly incorporate the embodiments were absolutely ruled out, or if the claim contained sufficiently unambiguous indications that something really was being claimed that deviated from the description to such a degree (Federal Court of Justice judgment X ZR 35/11 – Access rights). For the purposes of determining what a claim meant, not even wording that was unambiguous in itself could be regarded as decisive if construing the claim using the description and other claims showed that two terms used in the claim had to be swapped with each other.
Federal Court of Justice, 2 June 2015 (X ZR 103/13) – Crossbar
Keywords: claims – interpretation of claims – added subject-matter
At issue was European patent 1 366 968, which was for a collapsible stroller, with a frame, for children or dolls.
According to the Court's case law, the description and drawings – which explained and illustrated a claimed teaching to the person skilled in the art – had to be used not only in determining the extent of protection (Art. 69(1) EPC; Section 14 German Patent Law) but also in construing a claim, irrespective of whether such construction served as the basis for examining infringement, the patentability of the claimed subject-matter or another ground for invalidity (Federal Court of Justice judgments X ZR 117/11 – Polymer foam I; and X ZR 43/13 – Rotor elements).
A patent specification had to be read as a meaningful whole and a claim, in cases of doubt, understood such that nothing contradicted the information given in the description and drawings (Federal Court of Justice judgment X ZR 16/09 – Occlusion device). The specification provided, as it were, its very own glossary of the terms it used; if those terms deviated from general language usage, it was ultimately only the sense derived from the patent specification that counted (Federal Court of Justice judgment X ZR 85/96 – Clamping screw). Only if and to the extent that a claimed teaching could not be reconciled with the description and drawings and an unresolvable contradiction remained did those elements of the description not reflected in the claim have to be disregarded when determining the patent's subject-matter (Occlusion device). Thus construing a claim such that none of the embodiments in the patent specification would be covered by the patent's subject-matter came into question only if other possible interpretations that would at least partly incorporate the embodiments were absolutely ruled out, or if the claim contained sufficiently unambiguous indications that something really was being claimed that deviated from the description to such a degree (Federal Court of Justice judgment X ZR 35/11 – Access rights). If a description presented a number of embodiments as being in accordance with the invention in question, then the terms used in a claim, in cases of doubt, had to be understood such that all the embodiments contributed to a proper understanding of those terms' meaning.
The Court also observed that courts hearing an infringement action had to interpret the patent in suit independently; they were not bound, either in law or in practice, by its interpretation of that patent in any proceedings for its revocation.
Federal Court of Justice, 9 June 2015 (X ZR 101/13) – Polymer foam II
Keywords: claims – interpretation of claims – added subject-matter
The patent at issue was for articles containing polymer foam, and a process for manufacturing them.
The Court confirmed its case law that before examining for inadmissible added matter it was first necessary to interpret the claim, to determine its meaning and in particular how the feature at issue contributed to the result achieved by the invention. The Federal Patent Court had to determine a patent's subject-matter in the light of the entire disclosure made by the specification, before considering whether that matter could be admissibly added to the documents as originally filed. A granted claim was like a legal provision (Federal Court of Justice judgment X ZB 13/06 – Central vertical axis II), and the subject-matter it protected was a question of law (consistent case law since judgment X ZR 156/97 – Clearing blade). A court had to give binding answers to questions of law, and was not relieved of that task if the legal provision was unclear or difficult to interpret. It could not decline to determine the invention's subject-matter on the grounds that a feature was vague and (therefore) failed to delimit the invention over the prior art (further to judgment X ZR 95/05 – Road construction machine).
The meaning of a feature had to be established in the light of its intended purpose, as seen by the skilled person looking at the invention. Both general language and standard specialist usage might suggest what that person would understand, but – as a term may be used differently in patent descriptions and general language – what ultimately counts is its meaning in the overall context of the specification. The more the specification's content suggests that the term is to be understood in some other way, the less general language could be relied on (judgment X ZR 85/96 – Clamping screw).
Federal Court of Justice, 13 October 2015 (X ZR 74/14) – Air cap system
Keywords: claims – interpretation of claims
The claimant had alleged infringement of European patent 0 596 939 for an air cap system for a paint spray gun.
The lower court had interpreted the claim (especially the feature "blocking air flow") in accordance with the general linguistic meaning of the words used. The Federal Court of Justice had no real objection to that approach, except that the lower court had then mainly considered only whether the specification contained indications that those words were to be understood in some other way. That was at odds with the following principles.
The Court had consistently held that when interpreting a patent it was not the linguistic or scientifically logical meaning of the terms used in the claim that was decisive, but rather their technical sense taking into account the problem and solution objectively derivable from the patent (see Federal Court of Justice X ZR 76/68 – Stretching roller, and X ZR 85/96 – Clamping screw). The claim had to be construed by determining its meaning as a whole, and how its individual features contributed to the invention's intended effect (see Federal Court of Justice X ZR 72/05 – Traction unit for a drawing machine I). From the individual features' function in the context of the claim, the technical problem these features actually solved – both separately and jointly – was then to be deduced (see Federal Court of Justice X ZR 113/11 – Palette container III).
In the context of air flow, the word "blocking" (and the various synonyms for it used by the lower court, such as "shutting off", "locking", "closing") might frequently suggest that the intention was to prevent any passage of air at all. The lower court had therefore concluded that the patent implicitly taught that only partial prevention of the air flow was not enough. But in doing so, in the Court's view, it had failed to consider whether the result of that interpretation was compatible with the technical sense of the feature in solving the problem posed. It should have considered whether the feature required the air flow to be blocked completely, or if only partial blocking might suffice. The Court held that the latter was the case; it was apparent from the description that partial blocking was enough, as long as it achieved the invention's intended effect.
The Court's headnote reads as follows: If a patent specification uses two terms which differ only in degree (here: "blocking" and "restricting" an airflow) without further distinguishing between them for addressing a difficulty encountered in the art, the fact that the claim mentions only the stronger-sounding one ("blocking") does not necessarily mean that the weaker-sounding one is insufficient to carry out the protected teaching.
Federal Court of Justice, 10 May 2016 (X ZR 114/13) – Heat exchanger
Keywords: claims – interpretation of claims – using dependent claims to interpret main claim
The patent at issue (DE 196 54 370) was for a heating system for open-top vehicles (e.g. convertibles) which supplied warm air through air ducts to circulate around the driver's head. Claim 1 specified that it was a distinct heating equipped with a separate heat exchanger, and dependent claim 3 that there were electrical heating wires in at least some of the air ducts.
The Court found that the lower court had based its interpretation of "heat exchanger" mainly on the relationship between claim 1 and dependent claim 3, and the dependent claim's reference to a component described as a heating wire as an additional means of heating the air flow. The lower court had concluded that a device generating heat in the same way as a heating wire could not be classed as a heat exchanger. The Court disagreed with its approach.
Determining the meaning of a dependent claim could help in interpreting the main claim correctly, because dependent claims elaborated on the solution proposed in the main claim and so could provide insights, albeit indirectly, into its technical teaching. However, they were not supposed to narrow the main claim's subject-matter but instead, just like embodiments (BGH X ZR 255/01 – Base separating device), merely set out possible forms it might take, some of which might offer an additional advantage.
Whether any valid conclusions as to how a main claim and its terms were to be understood could be drawn from the subject-matter of a dependent claim also depended on the specific circumstances of the case, in particular on what precisely it proposed to add to the main claim's technical teaching and how this supplemented that claim's subject-matter. If it added something which developed a feature of the main claim so as to optimise its functioning, that might permit conclusions as to how that feature was to be understood in the context of the patent's teaching, but not if it merely added another feature to those mentioned in the main claim.
The latter was the case here, because another, independent means of heating (wires) had been added to complement the heating system's effect. Contrary to what the lower court had found, no conclusions could be drawn from this as to how the chief heating means, i.e. the heat exchanger, functioned.
Barcelona Court of Appeal (Section 15), 7 January 2016 (3/2016) – Gamesa Corporación Tecnológica et al v Aloys Wobben
Keywords: claims – interpretation of claims – extent of protection
European patent (ES) 0 847 496, owned by Mr. Wobben, was for a method of operating a wind turbine power station. Gamesa had claimed before the Court of First Instance No. 6 that the patent was invalid, inter alia for lack of novelty and lack of inventive step. Meanwhile, Mr. Wobben had sued Gamesa for infringement of the patent by installing high wind turbines in Spain using the technology claimed (before the Court of First Instance No. 8). The two sets of proceedings were consolidated by the Court of First Instance No. 6. It found the patent valid and infringed by certain Gamesa turbines.
On appeal before the Barcelona Court of Appeal (Section 15), the main point in dispute was whether the criterion applied in determining the scope of protection of the patent in the analysis of validity was the same as that in the consideration of infringement. Gamesa was of the opinion that the Court of First Instance had not applied the same criterion. While the technical effect of the relevant feature was the only element that conferred novelty and inventive step on the patent, the same technical effect was not considered to rule out infringement.
The Court of Appeal considered that the interpretation of the claims and the determination of their scope of protection were essential both in judging validity and in determining whether there had been infringement. The scope of the protection was defined by the content of the claims, which was to be interpreted taking into account the description and the drawings (Art. 26 and 60.1 LP and Art. 69 EPC). The description of the patent clearly showed that the patented process had as its essential and distinctive characteristic that the wind turbine, at an extreme wind speed, continued to operate without disconnecting but by reducing its power and rotor speed, whereas conventional turbines suddenly disconnected when the wind reached a certain speed ("maximum disconnection speed"). The Court of Appeal found that the scope of protection of the patent extended only to those wind turbines which continued to operate without interruption and avoided disconnection, thereby solving the problem of on/off hysteresis. It concluded that the high wind turbines installed by Gamesa did not fall within the scope of the patent because they shut down at a high (maximum) wind speed. Thus, the Court of Appeal set aside the first-instance judgment and held that the patent was not infringed.
For parallel proceedings in other national jurisdictions concerning this European patent, see chapter H. 3. Method of operating a wind power station.
Paris District Court, 26 May 2016 (14/05090) – Ms W and France Brevets v Nintendo
Keywords: claims – interpretation of claims – file history estoppel
This case concerned French patent 0 608 323, which was for dynamic postural scales for detecting a balanced biped posture. One of the invention's aims was to enable users to focus on how they distributed their body weight over their plantar supports when vertical (supported by a flat, mobile surface) by making them aware of when they lost their balance.
The patent proprietor sued Nintendo for infringement, alleging that its Wii Balance Board and software Wii Fit, both for use with the Wii console, copied her patent's features. Nintendo counterclaimed for revocation of the claims at issue.
The proprietor argued that the skilled person was a massage therapist/physiotherapist with a basic knowledge of mechanics and electronics (as acquired at school and university). However, the Court agreed with Nintendo that the skilled person was a team comprising a posturology specialist and an engineer for measuring instruments – especially body weight scales – who also had a knowledge of signal processing.
On the parties' conflicting interpretations of two of the patent's features, the Court held that the responses given by the proprietor's representative during the EPO's examination of her European patent 2 067 009 for the same invention had to be considered when interpreting the French patent's claims in the light of the description in particular. Such responses clarified for courts what the inventor himself meant by certain terms, in some cases explaining or restricting them. Thus they were necessarily a good indication of what the inventor had wanted to protect and what his invention really was, and an important basis for determining its scope and how it was to be interpreted.
Applying the doctrine of estoppel, the Court therefore ruled that the proprietor could not now take a position diametrically opposed to that adopted before the EPO.
The Court ultimately revoked the claims at issue, in particular having examined their novelty and established that they had been anticipated by prior art of a definite date (Multitest apparatus, as described in a user manual and a university dissertation).
GB United Kingdom
Court of Appeal, 24 June 2015 – Smith & Nephew Plc v ConvaTech Technologies Inc  EWCA Civ 607
Keywords: claims – interpretation of claims – numerical ranges
According to Kitchin LJ in this judgment concerning European patent (UK) 1 343 510, the general approach to the interpretation of a patent claim as set out in Kirin Amgen Inc v Hoechst Marion Roussel Ltd  UKHL 46 and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd  EWCA Civ 1062 was just as applicable to a claim containing a numerical range. The critical question was what the skilled person would understand the author to have been using the words or numerals in the claim to mean. It was standard practice for scientists deliberately to express numerical values to a particular degree of accuracy and, as a result, the degree of precision with which any particular number was written conveyed to the reader how the author intended the number to be understood.
According to Kitchin LJ, certain points of relevance to claims of this kind emerged from the case law of the English courts and of the EPO boards of appeal. First, the scope of any such claim must be exactly the same whether one is considering infringement or validity. Secondly, there could be no justification for using rounding or any other kind of approximation to change the disclosure of the prior art or to modify the alleged infringement. Thirdly, the meaning and scope of a numerical range in a patent claim must be ascertained in light of the common general knowledge and in the context of the specification as a whole. Fourthly, it could be the case that, in light of the common general knowledge and the teaching of the specification, the skilled person would understand that the patentee had chosen to express the numerals in the claim to a particular but limited degree of precision and so intended the claim to include all values which fall within the claimed range when stated with the same degree of precision. Fifthly, whether that was so or not would depend upon all the circumstances including the number of decimal places or significant figures to which the numerals in the claim appeared to have been expressed.
Editor's note: The construction of numerical ranges was also an issue in Napp Pharmaceutical Holdings Ltd v Dr Reddy's Laboratories UK Ltd & Sandoz Ltd  EWHC 1517 (Pat) and  EWCA Civ 1053.
Supreme Court, 5 February 2016 – Bayer v Sandoz
Keywords: claims – interpretation of claims – extent of protection – equivalents
These interim relief proceedings concerned two European patents granted to Bayer for drospirenone (EP 0 918 791 and EP 1 149 840), both claiming a priority of 12 August 1996.
Drospirenone is one of the active ingredients in two oral contraceptives which Bayer sells in the Netherlands under the brand names Yasmin and Yaz. Sandoz sells a generic version of Yasmin that contains drospirenone produced by Industriale Chimica using an organic compound known as TEMPO as the catalyst for oxidation instead of the metal salt ruthenium claimed in EP 0 918 791. It was this adapted method of producing drospirenone that was at issue in this case.
In Bayer's view, the method was equivalent to one or both of the processes protected by its two patents and, since Sandoz's generic contraceptive had to be regarded as directly obtained by application of this method, its sale in the Netherlands amounted to patent infringement.
Among its grounds of appeal, Bayer had argued that the lower court had not applied the proper test for establishing that a patent did not cover equivalents, namely that its proprietor had had good reason to dispense with protection for these even though it would have been available. The Court held that Bayer's position had no basis in law.
The lower court had, the Court held, rightly investigated whether the average skilled person would have understood from EP 0 918 791's claim 1 that Bayer had deliberately chosen to use ruthenium salt as the catalyst for oxidation. In doing so, it had considered the content of the patent, the prior art, the intended purpose of the patented process, the advantages associated with that process, the knowledge of the existence of the substances in question, their nature and the relationship between them and to what extent and how they achieved the intended result – all from the average skilled person's perspective. Having weighed up all those circumstances, it had concluded that Bayer had deliberately chosen ruthenium salt and that, therefore, using TEMPO as a catalyst did not infringe EP 0 918 791. The Court had no power to interfere in the lower court's evaluation of the relevant factors, and the reasons it had given for its conclusion were neither obscure nor inadequate.
In its grounds of appeal, Bayer had first of all overlooked that it was clear from the lower court's judgment that, in its view, the skilled person would not have considered TEMPO a substance capable of achieving the same result as ruthenium salt, and that this alone meant its use could not be regarded as an equivalent. It had also overlooked that the issue here was whether, from the skilled person's perspective, the claims, as read in the light of the description and the drawings, left room for equivalents, given the double aim of ensuring both adequate protection for the patent proprietor and legal certainty for third parties. In deciding this, it was irrelevant whether, when filing the patent application, the proprietor had intended to dispense with such protection for equivalents.
3. Product-by-process claims
Barcelona Court of Appeal (Section 15), 2 February 2016 (20/2016) – Oatly AB v Liquats Vegetals SA et al.
Keywords: claims – product-by-process claims – scope of protection – validity and infringement criteria
European patent 0 731 646 was for a homogeneous and stable cereal suspension having the taste and aroma of natural oats, which was obtainable by a specific process. The subject-matter of claim 1 was a product-by-process claim. The court of first instance had dismissed the patentee's infringement action.
On appeal, Barcelona Court of Appeal was called upon to decide on the interpretation and scope of protection of claim 1. The patentee was of the opinion that "product-by-process" claims are true product claims, which meant that the scope of protection was not limited to the process described. The Court of Appeal noted that, contrary to those countries, such as the USA, advocating certain restrictive criteria, the EPO considered product-by-process claims as product claims. According to the Guidelines for Examination, F-IV.4.12 (2013 version), "a claim defining a product in terms of a process is to be construed as a claim to the product as such … it is still directed to the product per se and confers absolute protection upon the product (see T 20/94)"; in this regard, a number of decisions of the boards of appeal were cited, together with decisions of German courts and, in the UK, the judgment Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd.  UKHL 46. The Court of Appeal noted, however, that the extent of the patent monopoly, as defined by the claims, should, in line with the EPO approach, correspond to the technical contribution to the art in order for it to be supported or justified. The Court of Appeal made clear that, although a product-by-process claim was a kind of product claim, its technical contribution was not a product defined independently of the process used to obtain it. The process was an integral part of the claim and therefore it was not surprising that it must be taken into account in order to delimit or interpret (but not to limit) the scope of protection in the context of infringement, at least when it was not clear that the allegedly infringing product was identical to that claimed, as in the case in hand.
The Court of Appeal noted that it was true that the EPO doctrine is basically concerned with the validity of the patent during the examination stage; therefore, it is not directly applicable to infringement, in respect of which the national courts have exclusive jurisdiction. However, it could not be inferred from this that this doctrine is not applicable to infringement disputes. The Court of Appeal pointed out that, in the case of product-by-process claims, it was not right to decide issues relating to infringement differently from those relating to validity, that is, to disconnect the examination of validity from that of infringement, as both issues were closely linked. It noted that, in the interpretation of the claims, the evidence from the patent prosecution history, and in particular, the decision of the opposition division of the EPO, could not be ruled out when it was relevant to ascertain the true meaning and scope of a claim.
In the case at issue, the statements made by the patentee before the EPO opposition division made it possible to clarify the scope of the claim in question. The Court of Appeal pointed out that it was not possible to construe the patent as having a greater coverage for the purposes of infringement than that which the applicant itself claimed in order to justify novelty. Otherwise, the court would thereby accord the patentee an excessive monopoly, not justified by its actual contribution. The Court of Appeal came to the conclusion that the product obtained through the manufacturing process could not have infringed the patent and dismissed the patentee's appeal.
4. Amendments to claims
Vienna Higher Regional Court, 19 August 2014 (34 R 34/14s)
Keywords: amendments to claims – partial surrender – extension of protection
In ex parte surrender proceedings under Section 46(1) No. 3 Austrian Patent Law, the Austrian Patent Office had refused to allow a partial surrender by the proprietor of European patent 0 502 314 on the ground that it amounted to a request to amend a claim by adding features taken from the description. The refusal was in line with the Patent Office's established practice, based on the idea that adding features from the description created a combination of features that had not been searched or examined, and so deprived third parties of an adequate degree of legal certainty because they could no longer rely on the extent of protection conferred by previously granted claims. Specifying additional active substances would also shift the core subject-matter of the claim from a general compound to a combination of active substances and so alter the subject-matter of the invention.
The Court held that, in partial surrender cases, the patent proprietor's substantive right of control over the patent had to be acknowledged. If only certain parts of the patent were surrendered, the rest remained in force, provided it was still patentable by itself (Supreme Court, 17 Ob 26/08k, Op 1/13).
Art. 69 EPC laid down that the extent of the protection conferred by a European patent was to be determined by the claims, as interpreted using the description and drawings. Account had to be taken especially of the wording of (the characterising portions of) the claims, which could be exhaustive or relatively open-ended.
Citing the EPO Enlarged Board of Appeal's decision in G 2/88, the Court observed that the now requested claim narrowed the extent of protection. It also remained within the scope of the original disclosure (Supreme Court, 17 Ob 26/08k, 17 Ob 24/09t, Op 1/13) because the active substances now claimed as a combination had already appeared in the original description. In these circumstances – original disclosure not exceeded and no extension of protection – even a change of claim category would be admissible (Supreme Court, 17 Ob 26/08k).
Since an open-ended wording ("comprising") had been chosen in the patent as granted, the effect of the now requested limitation of the granted pharmaceutical claim to preparations of combined substances was not to introduce different subject-matter ("aliud") but rather to insert a restriction. The specific teaching as to the dosage of the active substances in this combination represented unequivocally a facet of the patented invention. There could be no objection to adding the combined preparations if the patented subject-matter was worded open-endedly in the claim as granted, so that the pharmaceutical claim dependent on the pure substance claims was beyond doubt, and if the combined preparations and the active substances to be combined had been disclosed as part of the invention in the description (see German Federal Court of Justice's Piperazinylalkylpyrazole judgment, X ZB 6/76).
The Court consequently amended the claims in line with the proprietor's partial surrender.
Mons Court of Appeal, 3 April 2017 (17/1385) – Nouvag v Dr Malak
Keywords: amendments to claims – Art. 123(2) EPC not infringed – board of appeal case law
Dr Malak is a surgeon who holds European patent 0 971 754 for a liposuction apparatus comprising an aspirator tip. The idea of the invention is to create a nutating tip motion, which according to the patent breaks up subcutaneous fat so that it can be sucked out more easily.
Nouvag, a Swiss company which markets liposuction devices, sued for revocation, alleging added subject-matter in breach of Art. 123(2) EPC. The court of first instance dismissed that argument in 2015.
Examining the Art. 123(2) EPC attack on appeal, the Court outlined the underlying principles, citing the EPO's Guidelines for Examination and board of appeal decisions including T 962/98, T 1067/97 and T 714/00 as elucidated in "Case Law of the Boards of Appeal", 7th ed. 2013, which also stated that the idea underlying Art.123(2) EPC was to stop applicants gaining an unwarranted advantage, that the content of an application was not to be treated as a "reservoir", and that implicit disclosures also had to be taken into account. On the more specific issue of intermediate generalisations, again citing the boards' case law the Court observed that the EPO did allow them under strict conditions. Lastly, citing other judgments from Belgium and France, the Court noted in connection with this latter issue that it was not allowable under Art. 123(2) EPC to amend a claim by incorporating a technical feature taken in isolation from its context – i.e. from the description of a specific embodiment of the invention – if it was not clear beyond any doubt for a skilled reader of the application as filed that the subject-matter of the claim as thus amended provided a complete solution to a technical problem unambiguously recognisable from the application.
Nouvag argued that two features constituted intermediate generalisations. In the light of the above principles, the Court dismissed that argument.
Regarding a third feature, the Court – noting that it was not disputed that the application did not specify the size of the space between the cannula and the housing – ruled that the patent's reference to "said space being sufficiently dimensioned to allow the vibration component to achieve the dislocation of fat" did not add anything new; it merely reiterated that the space had to be so designed as not to prevent the vibration that dislodged the fat. The application did not have to specify precise dimensions; it sufficed that the size of the space was implicit – i.e. directly and unambiguously derivable from the application's disclosure – and that the skilled person could deduce with certainty that there had to be enough space to enable the fat to be dislodged.
Editor's note: This judgment includes interesting observations on res judicata.
Mons Commercial Court of 23 October 2014 (14/5716) – Oliver Funderingstechnieken v Votquenne Foundations
Keywords: amendments to claims – intermediate generalisation
Oliver Funderingstechnieken is the owner of European patent 0 747 537 entitled "Drive-out drill and method for the construction of ground screw-piles". Concrete screw piles formed by means of a helical drill bit were known from the prior art. The contribution made by the patent lay in a drill bit with a helical rib having a protrusion or cam that compresses the soil and uses significantly less force than state-of-the-art equipment to form a thick screw thread. Having been sued by Oliver for infringement, Votquenne Foundations had counterclaimed for revocation of the European patent on the grounds of lack of novelty, inventive step and clarity, and introduction of new subject-matter during the patent grant proceedings.
On the alleged lack of clarity, the Court could see no deficiency in the fact that the dimensions and shape of the cams were not specified, because the skilled person would be able to scale them to obtain the desired results in relation to the pile's bearing capacity. As bearing requirements depend on the features of the building site, there was no need to indicate a specific shape or dimensions for the cam. The Court agreed with Oliver that the Guidelines for Examination in the EPO (GL F-IV, 6.5 [first sentence, unchanged in Guidelines November 2016]) could be cited in support of this position.
Claim 1 of the application as filed had simply referred to a helical rib having a protrusion on at least one portion of its length, and had been amended in accordance with the EPO examiner's opinion to replace "renflement" [protrusion] with "came comprimant le sol lors du vissage ou du dévissage de la mèche" [cam compacting the soil through the rotary action of the drill bit]. It was not in dispute that claim 4 of the application as filed had already included a reference to a cam. However, Votquenne considered that the soil compaction function of the cam had not previously featured in the original version of the application, and that therefore that amendment added new subject-matter to the patent.
On this added-matter objection, the Court outlined the principles to be applied for the purposes of Art. 123(2) EPC by reference to the Guidelines for Examination, specifically GL H-IV, 2.2 [now GL H-IV, 2.1, paragraph 3 and the first sentence of paragraph 4, unchanged in Guidelines November 2016] as well as GL H-IV, 2.3 [now GL H-IV, 2.2, paragraph 1, unchanged in Guidelines November 2016]: that an applicant must not create an unwarranted advantage for himself; that account must be taken of the overall content of the application; that information resulting from an amendment must be directly and unambiguously derivable from it; that account must be taken of matter which is implicit. The Court considered that the feature added to the claim was directly and unambiguously derivable from the description, given the matter implicit to the skilled person.
Votquenne also asserted that Oliver's addition of new subject-matter amounted to an inadmissible intermediate generalisation. The Court explained the process of intermediate generalisation by reference to the Guidelines for Examination [GL H-V, 3.2.1, paragraphs 1-3, paragraph 3 having been partly amended in Guidelines November 2016], focusing in particular on extracting a specific feature in isolation from an originally disclosed combination of features. In amending claim 1 to include a reference to the cams' compacting function, Oliver had not, according to the Court, combined a number of separate embodiments to artificially create a particular combination. Isolating the feature "cams that compact soil" was justified by the overall disclosure, which described forming a thick screw thread by means of a protrusion having one or more cams on a helical rib. Oliver therefore had not introduced an intermediate generalisation.
The Court concluded that Votquenne's objections to the validity of the European patent had to be rejected. It noted moreover that, though not binding on the Court, the fact that the EPO examiner had not reacted to the amendment of the patent application was yet another indication of its validity.
Federal Court of Justice of 25 November 2014 (X ZR 119/09) – Grinding product
Keywords: amendments to claims – intermediate generalisation
At issue was European patent 0 779 851, which aimed to provide a grinding product with a considerably longer service life than known products.
The Court confirmed its case law on the admissibility of intermediate generalisations. If features of an embodiment that were conducive to obtaining the inventive result, either in combination or individually, could help to more precisely specify the invention, it was as a rule admissible to limit the patent by incorporating some or all of those features in a claim (Federal Court of Justice judgments X ZB 9/89 – Splicing chamber; and X ZR 12/10). But here too the claimed combination, when considered as a whole, had to amount to a technical teaching that a skilled person could derive from the application as filed as a possible form of the invention (Federal Court of Justice judgment X ZB 18/00 – Torque transmitting device).
In the case at issue, those conditions had not been met, so an inadmissible intermediate generalisation had been made. The skilled person could derive from the drawing illustrating one embodiment – for which, however, no detail was otherwise given in this respect – that an effect sought by the invention (an open and flexible structure for a woven or knitted cloth) was achieved by a specific combination of two technical measures (threads stitched in two different patterns and arranged in a particular way). However that did not necessarily disclose that the same was true for any other combination of those two measures.
Federal Court of Justice, 17 February 2015 (X ZR 161/12) – Wound treatment apparatus
Keywords: amendments to claims – inescapable trap
At issue in this case was European patent 1 088 569 for a portable wound treatment apparatus.
According to the Court's case law, German patents or utility models amended such that their subject-matter extends beyond the content of the application as filed need not be revoked if the amendment adds a feature which, although not disclosed in the original application, merely limits the scope of the claimed subject-matter. Revocation is on the other hand unavoidable if the amendment of the subject-matter in the application as filed leads to different subject-matter (aliud).
Having previously left open whether its case law applied to European patents too (Federal Court of Justice Xa ZB 14/09 – Angle-measuring device), the Court held here – contrary to a Federal Patent Court ruling – that it did.
Its case law was not, it found, incompatible with the EPC. According to the case law of the EPO boards of appeal, if a limiting feature not disclosed in the application as part of the invention was added to a claim, the patent would as a rule be revoked under Art. 123(2) and 100(c) EPC.
The Enlarged Board of Appeal had conceded in G 1/93 that its approach could operate rather harshly against applicants, because they risked being caught in an "inescapable trap" and losing everything by amending their application, even if the amendment limited the scope of protection. The Court's case law, by contrast, made it possible to avoid revoking the whole patent, without compromising the legitimate interests of third parties or the public.
Whether adding a feature not disclosed in the original application merely limited the claimed subject-matter or led to an aliud depended, the Court observed, on whether the added feature simply rendered more specific the technical teaching disclosed as part of the invention in that application or whether it introduced a technical aspect which would not have been understood to be part of the invention on the basis of that application, be it in that specific embodiment or even in abstract form. Applying this test, the Court found – contrary to the Federal Patent Court – that the feature added in this case could not be regarded as an aliud.
Paris District Court, 28 May 2015 (12/11963) – Nexira v San-Ei
Keywords: amendments to claims – intermediate generalisation – numerical ranges
San-Ei is the proprietor of European patent 1 611 159 for modified gum arabic from the Acacia senegal tree, which was granted on a PCT application. Gum arabic is an edible plant exudate that, owing to its physicochemical properties, can be used as an emulsifier in producing foodstuffs and cosmetics.
Nexira was seeking revocation of the French part of San-Ei's patent, asserting in particular that its subject-matter went beyond the content of the application as filed.
The Court observed that amended claim 1 did indeed give a range (of 42.3 to 138 nm) for the root-mean-square radius of gyration ("RMS radius") of the gum arabic, whereas no such range had been given in either claim 1 or the description as filed in the international application.
San-Ei contended that the range values were in the description, as it gave examples with an RMS-radius within that range.
The Court, however, found that these values related to specific embodiments. They had been obtained for worked examples given in the description in the application as filed that used gum arabic of a particular size, form and so composition. Their addition to claim 1 amounted to generalising the range to apply to any gum arabic.
Generalising a value range taken from an example was allowed, but such intermediate generalisation was admissible under Art. 123(2) EPC only if the skilled person could unmistakably ascertain from the application as filed that this feature was not closely related to the example's other features but rather applied directly and unambiguously in the more general context. To be admissible, therefore, an intermediate generalisation had to follow from unequivocal information that the skilled person would gather from considering the example and the content of the application as filed. In the case in hand, the skilled person could not unambiguously derive from reading the international application that the RMS-radius range at issue, which had been obtained on the basis of two worked examples using gum arabic of a particular size and composition, was not intertwined with those embodiments' other features and could instead be directly and unambiguously transposed to the more general context.
The insertion into claim 1 of this range not appearing in that claim as filed thus extended the subject-matter beyond the original international application. The Court therefore revoked the French part of the patent.
Paris Court of Appeal, 26 June 2015 (14/23888) – Arkema v INPI Director General
Keywords: amendments to claims – request for limitation of the French part of a European patent – opposition pending before the EPO
In 2013, the proprietor of European patent 1 716 216 had filed a request with INPI for limitation of the French part of that patent while opposition proceedings were taking place before the EPO. INPI had granted this request in 2014. Arkema lodged an appeal against INPI's decision with the Court, which now had to rule on whether it should be set aside. Arkema did not dispute that a proprietor could have INPI limit solely the French part of the European patent where that part was contested in revocation proceedings, and to that end did not have to seek a centralised limitation before the EPO. Rather, it was arguing that the rules applying to that limitation should take account of the European nature of the patent. In the light of the pending opposition, and citing the EPC's direct applicability in France, the hierarchy of laws, the practical difficulties involved and the legal uncertainty entailed, Arkema contended that INPI ought to have declared the request for limitation to be inadmissible.
The Court held that no provision precluded requesting that INPI limit the French part of the European patent while opposition proceedings were pending before the EPO.
The INPI limitation procedure, which was governed by Articles L 613-24 and R 631 24 of the French Intellectual Property Code, applied equally to national (Art. L 613-25) and European (Art. L 614-12) patents whose revocation was sought, and the exhaustive list of grounds for inadmissibility indicated in Art. R 613-45 of the Code did not include opposition proceedings pending before the EPO.
There was therefore nothing in any of those provisions to prevent the proprietor of a European patent that was the subject of opposition proceedings before the EPO from, at the same time, having INPI limit the scope of its French part where he had an interest in doing so to counter an action for its revocation brought before the French courts; Art. 105a EPC served a different purpose, that of preventing the EPO from issuing two distinct decisions that would then apply throughout all the territories covered by the European patent, and so could not deprive the proprietor of his right to seek such limitation.
Thus INPI had rightly held the request to be admissible, so the appeal lodged against the decision had to be dismissed. Furthermore, given that Paris District Court was hearing an action for revocation of the limited patent, it was not open to Arkema to challenge the merits of INPI's decision as part of the appeal being decided here.
Editor's note: EP 1 716 216 having since been finally revoked by EPO board of appeal decision T 860/12, the Court of Cassation (Commercial Division) found in decision 15-24416 of 24 May 2017 that there was no need to decide on Arkema's appeal against the Paris Court of Appeal decision summarised above.
Paris Court of Appeal, 8 April 2016 (14/00580) – Exten.S and Eram v Calzados Hergar
Keywords: amendments to claims – added subject-matter
At issue in this case was Exten.S's European patent 1 383 402, granted following a PCT application that had claimed the priority of a French patent application. It was for a shoe sole that enabled different foot widths to be fitted easily. Exten.S had sued Calzados Hergar, a Spanish company, for infringement of claims 1 to 4, which the court of first instance had revoked instead on the ground of extension beyond the content of the PCT application as filed.
Ruling on Exten.S's appeal against that decision, the Court pointed out that, whereas claim 1 of the patent as granted stated that there were "one or several openings" in the front part of the sole's base, the PCT application – which was the only point of reference given that it was the basis of the contested patent – used the word "openings" (plural) in both the description (when referring to the sole base) and in claim 2. Nowhere in its description, claims or drawings did it mention a single opening in the base.
Exten.S argued that it was implicit that there might be a single opening in the front part of the sole base given that the openings worked in tandem with the protrusions and, as the single passage in the contested patent's description that it cited as evidence stated, "… this extensible insert is flat on the top and has one or several protrusions on the bottom that are intended to fit tightly into the sole base". The Court disagreed, observing again that the PCT application consistently mentioned "openings" (plural) and in any case, as Calzados Hergar rightly argued, even if there were a single protrusion on the insert, that would not necessarily mean that there would be only one opening in the base.
The Court added that, whereas claim 1 of the PCT application stated that the rigid sole base was glued or moulded onto an insert, that feature was absent from claim 1 of the patent in suit – which limited the protection conferred and stated instead that the insert was "glued or injection welded on said base" and "mounted … between said base's and said upper's gluing zones". Thus the Court upheld the first-instance decision.
Editor's note: See also Paris District Court, 3 October 2014 (10/10179) – Nestec S.A. and Nespresso France v Ethical Coffee Company and others.
Paris Court of Appeal, 7 October 2016 (14/16544) – PMT Italia v ABK Machinery
Keywords: amendments to claims – added subject-matter
At issue in this case was PMT's European patent 1 215 336, which claimed a counterblade assembly for a paper machine. PMT had sued ABK for infringement, but the court of first instance had instead revoked the patent's French part for extension of its subject-matter beyond the application as filed. PMT was appealing against that decision.
During the proceedings before the EPO, PMT had amended the original application's main claim and added to the description information on the articulated joint axes' relative orientation. PMT argued before the Court that the added feature had been disclosed at least implicitly in the description as filed; that it was no more than the expression in words of what had been shown in the original drawings; and that it was simply a clarification or limitation of the patent's scope since it was a restrictive feature limiting protection.
The Court observed that, under Art. 84 EPC, the claims had to be supported by the description, which, it added, could in turn refer to drawings; such drawings, however, could not replace the description, but simply clarify it by illustrating the form and arrangement of its elements. Although it was not contrary to Art. 123(2) EPC to reword the technical problem, provided that it had to be possible to derive the problem as then described and its solution from the overall content of the application as filed.
The Court agreed with ABK that nothing in the original application had taught the skilled person how to orient the articulated joint axes, i.e. perpendicular to the travelling path of the wires, so that he could carry out the invention as described in the amended claim. Information on the axes' relative orientation had not been disclosed implicitly in the original description or drawings. In general, the drawings, which were optional, served to supplement the description, the only mandatory element given that anything claimed but not described was not protected; thus the drawings aided interpretation of the description, but not vice versa.
The Court also agreed with ABK that PMT's attorney's written response to the EPO examining division's communication had implied that the new claim made a technical contribution, being more than a mere rewording of the technical problem and its solution as could be derived from the overall content of the application as filed.
Thus the Court upheld the first-instance decision.
GB United Kingdom
Patents Court, 22 September 2014 – CompactGTL v Velocys plc & Ors  EWHC 2951 (Pat)
Keywords: amendments to claims – corrections
In the infringement proceedings concerning European patents (UK) 1 206 508 and 1 206 509, Velocys applied to amend the main claims and corresponding passages of the description of both patents on the ground that they contained an obvious mistake. The application was to replace the references to "residence time" by "contact time". It was common ground that, unamended, the relevant claims were invalid for insufficiency.
The judge stated the applicable principles. No amendment to a patent could be allowed if it either (a) results in the specification disclosing additional matter or (b) extends the protection conferred by the patent (Section 76(3) Patents Act 1977, cf. Art. 123(2) and (3) EPC). As was common ground, the proposed amendments would violate both prohibitions unless the references to "residence time" were an obvious mistake. If an obvious mistake, they were not prohibited because they simply brought the wording of the claims into line with the meaning which the skilled person would understand them to bear anyway. Thus the court should apply the principles applicable to requests under R. 139 EPC (previously R. 88 EPC 1973). The judge accordingly cited the interpretation given to R. 88, second sentence, EPC 1973 by the Enlarged Board of Appeal in G 11/91, Reasons, 5-6. The Enlarged Board had also held that although Art. 123 EPC applied to requests for corrections under R. 88 EPC 1973, a correction permissible under that rule was incapable of extending the subject-matter or scope of protection, since "[t]he corrected information merely expresses what a skilled person, using common general knowledge, would already derive on the date of filing from the parts of a European patent application, seen as a whole, relating to the disclosure".
Velocys thus had to demonstrate that "residence time" in the claims was such an obvious error that a skilled person would immediately appreciate that it could not be meant to read as such; and also could unequivocally ascertain that the patentee meant to refer to "contact time". In the light of the disclosures and the expert evidence, the judge held that it would be immediately clear to the skilled person first that the references to "residence time less than 5 seconds" and "contact time less than 5 seconds"' were inconsistent with each other and could not be reconciled. A mistake must have been made. Secondly, a moment's consideration by the skilled person would lead to the conclusion that the patentee must have intended to refer throughout to, and certainly to have claimed, a "contact time less than 5 seconds". The mistake in the claims was therefore obvious, and the correction equally so.
GB United Kingdom
Patents Court, 24 April 2015 – IPCOM GmbH & Co KG v HTC Europe Co Ltd & Ors  EWHC 1034 (Pat)
Keywords: amendments to claims – added subject-matter – intermediate generalisation
The claimant, IPCOM, had applied to amend its European patent (UK) 1 841 268, entitled "Access of a mobile station to a random access channel in dependence of its user classes".
The defendants, HTC, submitted that the claim as amended would be bad for added matter as an intermediate generalisation, if it was construed as IPCOM contended so multiple bit patterns were covered and so also were multiple access class bits. By this they meant a generalisation wider than the narrow second embodiment (which disclosed only one physical access class bit and one bit pattern) and narrower than the wide general disclosure in the specification (which was not limited to bit patterns and allowed for any access class information in general). Birss J agreed with HTC that in terms of its coverage the claim did indeed cover something more general than the patent's second embodiment. In that sense, as a matter of coverage, the claim was an intermediate generalisation.
However, with reference to the line of cases from AC Edwards Ltd v Acme Signs and Displays Ltd  RPC 131 to AP Racing v Alcon  EWCA Civ 40 (for a summary of the latter, see "Case Law from the Contracting States to the EPC" (2011-2014), supplementary publication – OJ 2/2015, 113), Birss J stated that English patent law draws a distinction between coverage and disclosure. To amount to added matter the intermediate generalisation must be a generalisation in terms of disclosure, not coverage. Proving that a claim was an intermediate generalisation in terms of coverage did not establish added matter.
It was on the distinction between coverage and disclosure that HTC's argument foundered. The claim referred to transmission "as a bit pattern" and to an "access class bit". Read in the context of the specification as a whole, nothing further was disclosed beyond what was described in the second embodiment. The skilled addressee reading the claim was not given new information as compared to the second embodiment. The language might cover more schemes than the second embodiment but that was not the issue. Thus, according to Birss J, the added matter point failed.
Editor's note: Birss J's finding on the added matter point was upheld by the Court of Appeal, see IPCOM v HTC Corporation  EWCA Civ 9.