Plant-e v Arkyne (UPC_CFI_239/2023)
Decision date:
22 November 2024
Osborne Clarke summary
- This was a dispute between two start-ups relating to Plant-e's patent claiming a device and a method for converting light energy into electrical and/or hydrogen energy. Plant-e claimed that Bioo (Arkyne Technologies) directly and indirectly infringed its method claim with three of its products. Arkyne counterclaimed for revocation, claiming the patent lacked novelty or, alternatively, it lacked inventive step over the prior art. It also made insufficiency and added matter arguments.
- The Hague LD found the patent to be valid and, for the first time in the UPC, infringed by equivalence.
- As for inventive step, the court followed the problem-solution approach, as had been suggested by the parties. The protection afforded by the patent was in line with the contribution it made to the art.
- As for infringement, the court took a two-step approach, first evaluating 'literal' infringement and then assessing infringement by equivalence. In determining the test to be applied for assessing infringement by equivalence, the court relied on case law from various national jurisdictions which had been proposed by the parties. It held that a variation is equivalent to an element specified in the claim if four questions are answered positively:
- Does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function?
- Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee, both in view of the patentee's contribution to the art and whether it is obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of the infringement)?
- Does the skilled person understand from the patent that the scope of the invention is broader than what is literally claimed?
- Is the allegedly infringing product novel and inventive over the prior art?
- Does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function?
- The court ordered the grant of an injunction covering the UPC territories where the patent was valid, which was subject to a recurring penalty payment for breach. The court also granted an order to recall all of the infringing goods and for their destruction.
- Arkyne argued that the court could not impose specific text for the recall letter because this was not stated in Article 64 UPCA. The court rejected this, holding that Article 64 UPCA is based on Article 10 of Directive 2004/48 (IP enforcement directive). The court stated that it would apply EU law and can also use national law (by which the directive has been implemented) as sources of law. As such, the use of specific text for a recall letter and/or for website publication was permissible to ensure that the measure is effective and to avoid unclear or confusing messages.
Issue
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