2024-11-22 - LD The Hague - Plant-e Knowledge v. Arkyne Technologies - UPC_CFI_239/2023
- Aktenzeichen:
- UPC_CFI_239/2023
- Datum:
- Spruchkörper:
- Court of First Instance - The Hague (NL) Local Division
- Art:
- Proceeding Decision
- Parteien:
- Plant-e B.V., Plant-e Knowledge B.V. v. Arkyne Technologies S.L.
Kernaussage: 1.
2024-11-22 - LD The Hague - Plant-e Knowledge
v.
Arkyne Technologies - UPC_CFI_239/2023
1.The patent is valid and infringed by equivalence.
2.The scope of protection in the case of infringement is assessed in two steps, applying Art. 69 EPC and the Protocol. The first step evaluates ‘literal’ infringement of the features of the patent in view of the claim construction is evaluated. In a second step, if the patent is not judged to have been literally infringed, equivalence is assessed.
3.The test applied to the assessment of infringement by equivalence is based on the case law in various national jurisdictions, as proposed by both parties in this case. This 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?
2)Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?
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?
4) Is the allegedly infringing product novel and inventive over the prior art?
4.The court can order a specific wording for a letter to be sent to customers or to be published on the website of the infringer based on Art. 64 UPCA and Union law.
The Court found the patent to be infringed by equivalence and ordered an injunction. The court explained the four-step-test for equivalence and further stated that it could order a specific wording for the letter to be sent to customers.
This is one of two parallel decisions (one for the infringement action, the other one for the counterclaim for revocation).
Stichwörter
Validity. Infringement by equivalence. Text for recall letter/publication on website.
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent survived (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“The novelty attack failed. Once the priority date stands, only Tender remains as prior art, and Tender does not unambiguously disclose a living plant rooted in the sediment of the fuel cell or micro-organisms living in the root zone. Containers submerged about four metres below mid-tide are not suitable for generating energy by photosynthesis, and Tender says nothing about power generation from a living plant [47]-[50].”
Inventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“Every inventive-step attack failed. Features 11.5 and 11.6 are absent from every proposed starting point and no pointer was shown that would prompt the skilled person to introduce a living plant into a microbial fuel cell reactor. Tender would have to be taken off the seafloor; combining Niessen with JP 891, which concerns harvested plants, or with a 1956 plant-science textbook is hindsight; and DE 734 is a different technical field, while US 879 teaches away because a living plant could not survive its anaerobic anode compartment [51]-[56].”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“The added-matter attack under Art. 138(1)(c) with Art. 123(2) EPC failed for the same reason as the priority attack. Deleting the words 'comprising an electron donor compound' from the claim as filed does not extend the subject matter, because the same gold-standard test measures the claim against the disclosure of the application as a whole, and the description of the application is the English translation of the priority document [45]-[46].”
Insufficiency of Disclosure
Patent survived (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“The insufficiency attack failed. Microbial fuel cells with their anodophilic micro-organisms, anodes and cathodes were state of the art at the priority date and the skilled person could make suitable choices for them. The term 'living plant' is broad but is read as an energy plant producing organic compounds as electron donors, and the requirements the defendant derived from a 2014 wetlands report belong to that specific environment, not to the invention [57]-[60].”
Priority
Patent survived (this ground)Art. 87 EPC · derivative
“The priority attack failed and the priority date is 17 April 2007. The 'same invention' test of Art. 87 EPC asks whether the subject matter of the claim is directly and unambiguously derivable from the previous application as a whole, not from its claims alone, and the priority document teaches, exactly as the patent does, that it is optional for the feedstock to contain an electron donor compound [41]-[44].”