The recent decision by the Munich Local Division in SES vs Hanshow (UPC-CFI-292/2023) has caused a few raised eyebrows. SES-imagotag SA brought the case against several Hanshow entities for infringement of SES’s patent  EP 3883277.

 

The patent in dispute related to an electronic label for a sales area to provide pricing information to a consumer. In particular dispute was the interpretation of the claim features:

 

1. a printed circuit board accommodated in the housing on the side of the rear surface of the housing.
2. the antenna… being disposed on or in the housing on the side of the rear surface of the electronic label.

 

The description of the patent makes clear in paragraphs [0034]-[0040] that the antenna and a chip on the printed circuit board are to be separated from one another to reduce interference between the antenna and the chip.

 

With regard to the above features, Hanshow in effect argued that the relevant components were restricted to being directly disposed on their respective surfaces, whereas SES in effect argued the opposite. The Local Division considered that the above two features had to be interpreted together and that, as explained throughout the description, “the patent claim is obviously an attempt to regulate the technically existing interaction between chip and antenna through the spatial arrangement of both components”. Then, out of nowhere comes the statement:

 

“The original version of the claim, which can be used as an interpretation aid in connection with changes made in the granting process, had already established a direct connection between the chip arranged on the printed circuit board and the antenna”.

 

It was in view of the amendments made during the grant procedure to the original claim, and the technical purpose of the features explained in the description that the Local Division concluded that the relevant components were restricted to being arranged on the side of their respective surfaces in their entirety. The potentially infringing article was deemed not to infringe because a significant part of its antenna was at least almost in contact with the rear of the housing.

 

The decision by the Munich Local Division to include a statement that the original claims in connection with the amendments during prosecution bear on the claim interpretation of a granted patent is rather odd. Other patent systems of course do use prosecution history in claim interpretation (e.g. US). It is nevertheless curious that the Local Division would pronounce on such a fundamental aspect of patent law when it is still finding its feet as a forum for legal disputes - especially as the pronouncement stands in such stark contrast to most European patent law. The decision appears all the more peculiar given that justification for the Local Division’s interpretation seems perfectly possible without recourse to the prosecution history (e.g. interpreting the claims to achieve the technical effect purported in the description irrespective of the original claim wording).

 

The possibility exists that later decisions may rein in the above statement. If not, it remains to be seen whether more patentees, not wishing to be constrained by the prosecution history in any potential infringement action, may opt out of UPC jurisdiction for their patents. Given the proliferation of unexpected consequences that can occur when deviating too far from the status quo, one cannot help but think the Munich Local Division ought to have stepped a little more lightly.