On 13 May 2024, the UPC Court of Appeal handed down an Order upholding an earlier decision of the Munich Local Division that the preliminary injunction requested by SES-imagotag SA Electronics (recently renamed VusionGroup SA) (SES) against Hanshow Technology Co. and the Hanshow Group (Hanshow) should be refused. In doing so, the Court declined to address the question of whether the file wrapper should be consulted when construing patent claims, which will come as a disappointment to many readers as this aspect of the case was one of the most interesting parts of the first instance decision; the first instance court considered the file wrapper (the original version of the claim) when interpreting the granted claims. The Court of Appeal was chaired by President Klaus Grabinski and consisted of three legally qualified and two technically qualified judges.

SES claimed that Hanshow was infringing its patent EP 3883277 (EP 277) and applied to the UPC on 4 September 2023 for interim measures. EP 277 relates to an electronic labelling system used in retail spaces and the dispute focused on the positioning of a printed circuit board in relation to an antenna and electronic chip. According to the wording of the granted claims, the printed circuit board should be placed “on the back of the housing” and the antenna placed “on or in the housing on the side of the front of the electronic label”. The first instance court looked at the version of the claim originally filed which established a direct link between the chip arranged on the printed circuit board and the antenna such that they were required to be “at a distance” from each other. Hanshow’s allegedly infringing products had a substantial part of the antenna resting on the rear side of the housing. By interpreting the claim in the context of the amendments made during examination, the Court held that the antenna could not be arranged on the front and rear sides of the electronic label at the same time. Therefore, infringement could not be established and no interim measures were granted.

On appeal, SES argued that the Court had incorrectly interpreted the features of the patent claims. In its decision, the Court of Appeal cited the principles set out in 10x and Harvard v Nanostring (UPC_CoA_335/2023 App_576355/2023) for interpreting patent claims in accordance with Art.69 EPC, including the following:

• The patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent.
• The interpretation of a patent claim is not solely dependent on its exact wording in the linguistic sense. Rather, the description and the drawings of must always be consulted as explanatory aids for the interpretation of the patent claim and not only be used to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline.
• The patent claim is to be interpreted from the perspective of the person skilled in the art.
• When applying these principles, appropriate protection for the patent proprietor should be combined with sufficient legal certainty for third parties.

In light of the patent description and the general knowledge of the skilled person, the Court of Appeal came to the conclusion that the Court of First Instance had correctly construed the claims and agreed with its finding that infringement could not be established with a sufficient degree of certainty. The Court held that documents from the examination proceedings before the European Patent Office cited by the parties shed no new light on the interpretation of the patent claims. Therefore, it was not necessary for the Court of Appeal to address the question of whether the grant history should be taken into account when determining the scope of protection of a European patent.

The Court of Appeal found, following the standard for interim relief set out in 10x and Harvard v Nanostring, that there was not a sufficient degree of certainty that Hanshow’s products infringed the patent. As a consequence, SES’s appeal was dismissed and SES were ordered to pay the costs of the appeal proceedings.