Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.

Our latest edition - 11 August 2023 - is below:

UK

Amending the description to exclude embodiments can add matter

On 26 June 2023, Miss Charlotte May KC (sitting as Deputy High Court Judge) handed down a decision in Ensygnia v Shell [2023] EWHC 1495 (Pat), finding that a post-grant description amendment which added the phrase that certain embodiments “fell outside the scope of the claims” added matter. Decision here.

Ensygnia sued Shell for infringement of GB 2489332 C2 (the Patent). Shell counterclaimed that the Patent was invalid. The Patent relates to a method for identifying a user so that the user can obtain access to a registered service. It involves the use of a graphical object (e.g. a barcode or QR code) that is displayed on a display of a computing apparatus and scanned by the users mobile device. The server then establishes the identity of the user to determine if the user is registered, and if so, authorises the user to access the service.

The alleged infringement is a mobile payment system comprising a mobile phone app which can be used by registered customers at a Shell petrol station to purchase fuel. It requires the user to scan a QR code that is displayed on a piece of paper that is located on or near the petrol pump.

The description and claims of the Patent were amended post-grant under s.27 Patents Act 1977. The claims were amended to specify that the “display” of a computing apparatus displaying the graphical object is a “sign”. The amendments to the description included various statements that some of the embodiments and figures are “outside the scope of the claims”, including an embodiment specifying that the graphical object is provided on an “electronic display” and can be “periodically updated”.  This amendment was ostensibly made to bring the description in line with the amended claims, as required by the EPO Guidelines for Examination: "the applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought".

Ensygnia argued that the “sign” specified by the claims should be construed as being static, i.e. one that is not electronic and does not change between transactions. The parties agreed that the Shell payment system, which uses a paper sign, infringes on this construction. However, Shell argued that their payment system does not infringe because the “sign” should be limited to an electronic display on a computer screen.

When addressing the issue of construction, the Judge referred to the principles set out in Virgin Atlantic v Premium Aircraft [2010] RPC 8 and the recent judgment in InterDigital v Lenovo [2023] EWCA Civ 105. The case law is clear that claims must be considered in the context of the description and the inventor’s purpose. Under a natural reading, the Judge agreed that the sign on a display forming part of a "computing apparatus" would generally be understood to be an electronic one. However, in view of the amendment to the description that excluded an embodiment having an electronic display from the scope of the claims, the Judge concluded that Ensygnia’s construction was correct. The “sign” specified in the claims was not electronic.

In reaching this decision the Judge explained that the skilled person does not ignore the teaching of embodiments that are expressed to be outside the scope of the claims when construing the claims. They still serve to help the skilled person understand the scope of the claims and what the words of the claims mean in that context. However, the Judge acknowledged that if the express teaching that an embodiment is outside the claims impacts on what the claims mean and that teaching was added by amendment, it may be that matter has been added or protection has been extended.Indeed, that was the case here.

The amendment to the description to exclude embodiments with “electronic displays” was critical to the Judge’s finding that the “sign” in the claims should be construed as a static sign. There was no clear and unambiguous disclosure in the application as filed or the B specification that a sign could be static; the teaching was limited to electronic displays. Consequently, the Judge held that the amendments added matter to the application as filed and extended protection beyond the patent as granted.The Patent was also found to be obvious over one prior art citation.

GEORGIA

Georgia Amends Patent Law

On 2 June 2023, several amendments to Georgian patent law to harmonise it with the European Patent Convention (EPC), European legislation and the Patent Law Treaty entered into force. Georgia is not currently a contracting state to the EPC, however, a validation agreement signed on 31 October 2019 between the Government of Georgia and the European Patent Office (EPO), which required these amendments to Georgian patent law will allow Georgia to become a validation state, meaning that, once the agreement comes into force, it will be possible to validate European Patents in Georgia.  Key amendments include the introduction of the Bolar Exemption and the introduction of SPCs as well as providing clarity on the patentability of both first and second medical use claims. Compulsory licencing has also been introduced and the range of remedies available in successful infringement actions extended. It is expected that the agreement will come into force from 1 January 2024.

UPC

Decisions and Orders now published

The UPC has published several orders and decisions of the Court made in the last two months.  Many of the orders contain procedural decisions regarding exhibits to claims, the form of statements of defence and payment of fees.  There have also been three more substantive decisions; two from the Milan Local Division and one from the Dusseldorf Local Division.

In the decisions from the Milan Local Division here and here, the patentee discovered that its competitor was presenting at an exhibition, two machines that potentially infringed its patents.The patentee filed an application to the Court for an evidence protection order under art. 192 of the Unified Patent Court Agreement (UPCA) and the relevant Rules of Procedure (RoP) for copies of all technical and commercial documentation, in any format, available at the exhibition booth, with the appointment of a court expert to assist the bailiff in the execution of the measure.

The Judge overseeing the matter divided both decisions into four distinct sections; Fumus boni iuris - noting the prima facie validity and preliminary assessment of infringement of the enforced right, Periculum in mora  pertaining to urgency,  the issue of fee payment and the execution of the measure.

Turning first to the prima facie validity of the enforced right and preliminary view on infringement, the Judge confirmed that the patentee’s claims fell within the provisions of art. 32(1)(c) UPCA as the European Patent had not been opted out of the court’s jurisdiction.  Furthermore, the Milan Local Division was deemed competent according to art. 33(1)(a) of the UPCA, as Italy was identified as the place where the infringement of the patent is taking place or otherwise threatened and the applications for evidence preservation were submitted to the Division where the patentee intended to file the action on the merits, (RoP 192(1)).

In relation to the requirements outlined in RoP 192(2), the Judge found that the patentee had me the requirements for an order to be granted:

• there was a clear indication of the requested measures, including the precise location of the evidence to be preserved;
• the patentee had explained why the measures were required to safeguard relevant evidence (primarily to establish infringement and its scope); and
• the patent was within the jurisdiction of the Court, the applicant was the exclusive owner of the patent, no opposition had been filed with the EPO and a search of the UPC CMS database did not locate any protective letter being filed by the respondent.  The patentee had also submitted evidence from the exhibition in the form of photographs of allegedly infringing machines and posters from the exhibition stand and a technical opinion from a patent attorney on infringement.

The Judge held that the application for evidence preservation was essential to uphold the right to preserve evidence and, to a lesser extent, to protect the enforced patent itself.

With regard to urgency, the Judge considered that the requirement of extreme urgency had been met as the exhibition where the contested machines were shown would be ending the following day and on this basis the Order could be granted on an ex-parte basis, pursuant to RoP 197(1) and 60(5).  The Order could be granted on this basis due to the time constraints that prevented summoning the parties for a hearing before the exhibition’s conclusion, the risk that the evidence would become inaccessible to the patentee once the fair concluded, given that the respondent was based in India and the potential for evidence concealment or destruction.In balancing the interests of the parties and the application of the proportionality principle, as defined in art. 41 and 42 of the UPCA, an ex parte order was proportionate.

The Judge then turned to the national Italian law pursuant to RoP 196(4), concluding that the execution of the measures should, whenever feasible, occur outside of the times designated for public access to the exhibition, or during periods of reduced foot traffic at the respondent’s booth. Execution would be carried out by the bailiff being an expert selected by the Judge from a roster of patent experts generally appointed by the Court of Milan possessing the necessary expertise, independence, and impartiality as outlined in RoP 196(5); and the external legal and technical representatives of the applicant (excluding internal counsel). A detailed report to the Court outlining the actions undertaken and submitting the documents collected during the execution of the measures would be prepared. Taking confidentiality into account, access to the seized documents would be restricted to the two external legal representatives and one technical representative representing the patentee pursuant to Article 58 UPCA and RoP 196(1).

The decision from the Dusseldorf Local Division, found here, deals with an application for a preliminary injunction where a potentially infringing product was offered for sale on the defendant's website in both German and English.  The defendant’s website could be used to order the potentially infringing product from specialist dealers listed on the website.The potentially infringing product had also been made available at the “Eurobike 2023" trade fair in Frankfurt.  An inspection of the product had taken place by the patentee at the Swiss headquarters of the respondent and a warning letter had also been sent.

The Judge considered the preliminary validity of the enforced right and infringement in a similar way to the Milan Local Division - the patent was granted in 2015 and no opposition had been filed against the patent at the EPO nor had any national invalidity action been filed.  The respondent had filed a notice of opposition with the UPC in which it invoked patent exhaustion as well as denying infringement, but did not present any relevant prior art.

It was held that the urgency requirement had been made out pursuant to RoP. 209.2 due to the product being available already at the "Euro Bike 2023" trade fair.  It was therefore open to the Court to grant the measure on an ex parte basis as the patentee had shown to the satisfaction of the Court that it would suffer irreparable damage as a result of a delay under RoP 212.1.

On this basis, the Judge granted the interim injunction and a confiscation order pursuant to RoP 211.1(b).The respondent was ordered to cease and desist from using, offering, or placing the product on the market in Germany, the Netherlands, France and/or Italy and from importing or possessing for these purposes.  It was also ordered that the Order would be served in person at the "Eurobike 2023" trade fair.  Security should be provided in the amount of EUR 500,000 within 10 days of service of the Order and the Order would not be enforceable until the security had been provided in full.