UPC decision on the interpretation of amended patent claims

SES-imagotag v Hanshow


The Munich Local Division recently addressed a significant issue concerning the interpretation of European patent claims in the context of amendments made during prosecution. The court considered whether the original claims of a European patent as filed could be used as an aid to interpretation of amendments made during the patent’s prosecution. This arose in the context of an application for interim measures. The applicant alleged infringement by several defendants, but the court faced the challenge of interpreting the amended patent claims, particularly regarding the spatial arrangement of components to mitigate electromagnetic interference.

Central to the court’s deliberation was a patent claim concerning the spatial separation between a chip and an antenna. While the original claim introduced this concept, it was further elaborated through amendments during prosecution. Despite these amendments, ambiguities remained, especially concerning the placement of the antenna relative to the display screen. The Local Division faced the question of whether the positioning behind the screen was covered by the claim, given the lack of explicit clarity in the claim’s language. The court, upon reviewing the defendants’ products, found that they did not clearly infringe the patent in question, due to discrepancies between the patent’s claims and the products’ technical specifications.

The court ultimately dismissed the application for interim measures. It held that original versions of patent claims could indeed serve as aids in interpreting amended claims. However, the alleged infringement was not sufficiently substantiated to justify the interim measures. Additionally, while the defendants raised the issue of the patent’s validity, the court did not address this, focusing instead on the lack of clear infringement. As a result, the applicant, having been unsuccessful, was ordered to bear the legal costs and additional expenses incurred by the defendants, with the dispute’s value set at €2 million and a cap of €200,000 for reimbursable costs. This decision underscores the importance of clear claim drafting and the role of original claims in interpreting amendments, shaping future patent litigation strategies under the UPC regime.

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