In late August 2024, two decisions issued by two different UPC Local Divisions in Avago’s patent litigation battles with Tesla, with Tesla coming out in front in each case. In the first decision, by the UPC Local Division Hamburg, Avago’s patent EP 1612910 B1 was narrowed to such an extent that there was found to be no infringement of the amended patent. In the second case, the UPC Local Division Munich revoked Avago’s patent EP 1838002 B1.
These cases provide detailed insight into the developing UPC approach to claim interpretation and also some useful pointers on procedural matters.
Background
The patents are in different technical fields, with EP 1612910 B1 protecting electrical power control systems for determining power adjustments in a power supply circuit. On the other hand, EP 1838002 B1 defines a programmable hybrid transmitter. The patents would expire in 2025 and 2026, respectively.
Avago alleged that, for example, the Tesla Model Y equipped with an interior radar system would infringe EP 1838002 B1 and that the power supply arrangements for the infotainment system of the Tesla Model Y would infringe EP 1612910 B1.
Tesla argued against infringement and counterclaimed for invalidity of the patents.
Functional claim interpretation
In each case, the UPC Local Division referred to the UPC Court of Appeal decision in the NanoString/10X Genomics case when considering claim interpretation:
“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 does not depend solely on its exact wording in the linguistic sense…Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.”
Building on this, when considering how to interpret the terms “power supply circuit,” “integrated circuit” and “third electrical device” in claim 1 of EP 1612910 B1, the Hamburg Local Division looked to the description to decide whether these terms should be interpreted functionally, or whether there are any spatial-physical requirements for these features.
In their view, the description did not imply such spatial-physical requirements. As a consequence, these terms were interpreted purely functionally, in effect giving the terms their broadest possible meaning.
A “power supply circuit” was not limited to a single circuit as distinct from several independent and merely interacting circuits, but could comprise several modules with independent outputs.
As the patent did not specify the position of the “third electrical device”, there was no requirement that the “third electrical device” must be distinct from the “integrated circuit”, and as such that “third electrical device” could form part of the “integrated circuit”. In our view, the European Patent Office (EPO) would likely interpret these terms consistently with this approach.
How are lists of features interpreted?
The Munich Local Division needed to interpret this feature in the claims of EP 1838002 B1:“to convert the outbound data into at least one of: a normalized complex signal, offset information, and transmit property information when the programmable hybrid transmitted is in a second mode.”
They considered that based purely on the wording of the claim alone this should be interpreted as: “at least one of A, and at least one of B,andat least one of C”, meaning that the elements are to be understood cumulatively such that all three elements are required by the claim. The notional features A, B and C are the features in bold text in the list. The Munich Local Division emphasised that this would be in contrast to the situation where the word “or” was used, which they noted would require “at least one of A, or at least one of B, or at least one of C” (ie only one of the three elements).
The court emphasised that the embodiments in the description supported their interpretation. In their view, the patent consistently required the outbound data to be converted into all three elements in the second mode, and as such, this reinforced the interpretation that all three elements are required by the claim.
This decision emphasises how much weight the UPC are putting on disclosures in the description when interpreting the claims. If the description had disclosed embodiments in which the outbound data was converted into only one or two elements of the three in the second mode, would this feature have been interpreted more broadly? Therefore, this decision emphasises the need for care both in claim drafting but also in drafting of the detailed description – if A, B and C are truly intended as alternatives, this must be made clear in the embodiments.
Is prosecution history relevant?
A significant unanswered question at the UPC is whether the prosecution history of the patent application should be taken into account when interpreting the claims. The issue arose before the Hamburg Local Division case. But the court was completely unwilling to engage, saying that in this case “it does not matter under what conditions and to what extend the grant history is relevant for the interpretation of the claim before the UPC.”
Of interest to the parties was whether it was material that the following sentence from the description was deleted during prosecution: "accordingly, the scope of various aspects of the present invention should not be limited by characteristics of a particular location or level of integration for the electrical device 630”, on the basis that there was at least argument that this sentence might otherwise lead to a different interpretation of the claim.
While the deletion of this sentence did not change the court’s view on the relevant interpretation of the claimin this case, it does not seem that the court intended to make a more general proclamation that the prosecution history can never be relevant to claim interpretation. The UPC Court of Appeal has also notably avoided this issue, and so we wait for further UPC guidance on this.
UPC approach to partial invalidity
It is common in EPO opposition proceedings that patents are amended in order to overcome objections that are raised in the opposition. This is often done using amended sets of claims submitted as a series of auxiliary requests. The patentee must normally submit the claim amendments as early as possible, with the risk that late-filed auxiliary requests may not be admitted.
However, where a claim set includes some claims that are allowable and other claims that are not allowable, the EPO insists that the unallowable claims are deleted from the claim set. It is always the case that the entire set of claims must be considered to be valid before the EPO will maintain the patent in amended form. Otherwise, the patent will be revoked.
In the case heard by the Hamburg Local Division, Auxiliary Request 1 included two independent claims. Independent claim 3 was found to be invalid, whereas amended independent claim 1 was found to be valid.
The Hamburg Local Division decided that, in view of Art. 65(3) UPCA: “a patent can therefore also only be revoked in nullity proceedings before the UPC to the extent that the grounds for revocation are sufficient, so that a patent can also remain (partially) valid to the extent of individual independent patent claims within the scope of the complete set of claims filed as a main or auxiliary request, if this corresponds to the procedural concerns of the patent proprietor.”
Therefore, simply because claim 3 was found to be invalid, did not mean that the patent had to be revoked in its entirety. The proprietor (Avago) did not even need an auxiliary request on file deleting the invalid claim 3 to maintain the patent in amended form.
Avago did actually file such an auxiliary request called auxiliary request 1bis very late in the proceedings. But the court stated “the alternative maintenance of claim 1 in the version of auxiliary request 1 with deletion of claim 3 is to be carried out independently of the admission of auxiliary request 1bissince such a result was part of the plaintiff’s defence against the action for annulment from the outset.”
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