UPC: First decision on equivalent infringement

Plant-e Knowledge v Arkyne Technologies

UPC_CFI_239/2023

In a first for the UPC, the Hague Local Division of the Court of First Instance (CFI) has found infringement by equivalence in Plant-e Knowledge v Arkyne Technologies (UPC_CFI_239/2023). The Court proposed a four-step Doctrine of Equivalence test based on practice in “various national jurisdictions”, whilst citing only the Eli Lilly pemetrexed case from the Dutch national courts (Hague Court of Appeal, ECLI:NL:GHDHA:2020:2052).

The patent in suit (EP2137782) describes a novel method of generating electricity using a plant-microbial fuel cell (PMFC), which leverages compounds released by the roots of a plant as fuel, unlike conventional microbial fuel cells that rely on feedstock fuels (such as glucose). The Court upheld the patent’s validity (notably, by using the European Patent Office’s (EPO) problem-solution approach as a tool), and assessed infringement. No literal infringement was found, as the Court decided that the patented invention and the defendant’s variant device differed in where the roots of the plant were positioned.

Accordingly, the Court  moved to assess infringement by equivalence, noting that “in the absence of guidance within the applicable sources of law on the actual test to be used for taking equivalent elements into account, the Court  will apply a test based on the practice in various national jurisdictions” (emphasis added). Each step of the four-step test subsequently proposed by the Court (paragraph 88 of the decision) was answered in the affirmative and infringement by equivalence was found. However, the decision does not provide any particular discussion of national practice, and the proposed test is essentially the same as that put forward by the Dutch National Court in 2020.

The four point test is as follows:-

1. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
2. 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)?
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? (i.e. no successful Gillette/Formstein defence) 

Other local divisions of the UPC may of course hold different views; indeed, we expect that this is likely to only be the start of long process in the development of a doctrine of equivalence at the UPC which will need to be clarified by the Court of Appeal. Nevertheless, this is an important first decision on the subject at the UPC and means that care needs to be taken when advising potential infringers on the potentially broad scope of patent claims.