Construction of patent claims and

patent equivalents under Art. 69 EPC

presented at

EJTN Judicial Training – IP law seminar

20 September 2017, Bucharest, Romania

by

Dr. Klaus Grabinski

Federal Court of Justice , Germany

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I. Article 69 (1) EPC:

The extent of the protection conferred by a European patent or a

European patent application shall be determined by the claims.

Nevertheless, the description and drawings shall be used to

interpret the claims.

Construction of patent claims and

patent equivalents

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Protocol on the Interpretation of Article 69 EPC

Article 1 - General principles

1Article 69 should not be interpreted as meaning that the extent of the protectionconferred by a European patent is to be understood as that defined by the strict,literal meaning of the wording used in the claims, the description and drawingsbeing employed only for the purpose of resolving an ambiguity found in theclaims.2Nor should it be taken to mean that the claims serve only as a guideline and thatthe actual protection conferred may extend to what, from a consideration of thedescription and drawings by a person skilled in the art, the patent proprietor hascontemplated.3On the contrary, it is to be interpreted as defining a position between theseextremes which combines a fair protection for the patent proprietor with areasonable degree of legal certainty for third parties.

Article 2 - Equivalents

For the purpose of determining the extent of protection conferred by a Europeanpatent, due account shall be taken of any element which is equivalent to anelement specified in the claims.

Construction of patent claims and

patent equivalents

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2-Step Test for determining the scope of

protection of a patent claim

1) Does the product/process infringe the patent

claim as a matter of normal interpretation?

• If yes, the patent is infringed by literal means.

2) If no, does the product/process nonetheless

infringe because it varies the invention in a

way or ways that is or are immaterial?

• If yes, the patent is infringed by equivalent means.

• If no, the patent is not infringed.

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II. Interpretation of the Patent Claim

1) Patent Claim

– No strict philological interpretation.

– The technical meaning has to be ascertained from the

point of view of a person skilled in the art at the

priority day.

– All features are important.

– Each feature to be interpreted in the overall context of

the patent claim.

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2) Description and drawings

The patent claim has to be interpreted always with regard to

• the description and

• the drawings.

Patent specification is a dictionary of its own.

In case of doubt the patent claim is to be construed in a

way that there are no contradictions between the claim

and the description.

An example embodiment in the description does not as a

rule permit a restrictive interpretation of a patent claim that

specifies the invention in general.

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Example 1: „Occlusion device “

Federal Court of Justice, 10 May 2011 – X ZR 16/09, 881 IIC 2011

– The patent relates to an intravascular device

• that is collapsible for deployment through a catheter and

• upon exciting the distal end of the catheter in a patient’s vessel

• will resiliently return to its expanded configuration

• in order to be accurately placed and firmly fixed in the patient’s vessel

• so that the vessel is occluded,

• e.g. to stop the blood flow through an artery to a tumor or other lesion.

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Patent claim

1) A collapsible medical device (60) comprising a metal fabric.

2) The metal fabric is formed of braided strands.

3) The device (60) has

a) a collapsed configuration for delivery through a channel in a patient's vessel, and

b) has a generally dumbbell-shaped expanded configuration.

4) The generally dumbbell-shaped expanded configuration has

a) two portions with expanded diameter (64)

b) which are separated by a reduced diameter portion (62) formed between opposed ends of the device.

5) Clamps (15) are adapted to clamp the strands at the opposed ends of the device.

Construction of patent claims and

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Allegedly patent infringing embodiment -

an occlusion implant to treat atrial septum defects

Construction of patent claims and

patent equivalents

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Allegedly infringing occlusion implant

– is made of a fabric with monofilament wires of a nickel-titanium alloy (nitinol).

– The wires are inverted upon themselves by roughly 180°, resulting in the ends of the threads all being located at the proximal end of the finished device.

– Following heat treatment to give shape, a nitinol sleeve is fitted over the end of the bundle of wires.

– The bundle is cut off at the proximal end of the sleeve.

– An end section is welded to the sleeve.

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patent equivalents

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Literal Infringement?

Claim construction

• Feature 5 requires that clamps are adapted to clamp the strands at the opposed ends of the device.

• Does this mean that there always have to be more than one clamp?

• Clamps and ends can be interpreted as generic terms.

• However, as a result of the wording “at the opposed ends” there have to be necessarily two clamps.

• This is confirmed by feature 4 b in which the “opposed ends of the device” are already mentioned.

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– What about the description and the drawings?

• In the description it is mentioned that a flat sheet of woven

fabric can be used as shown in the following Figure 1B:

• Furthermore, it is explained that with such a fabric, the fabric

can be inverted upon itself to form a recess or depression and

the fabric can be clamped about the recess to form an empty

pocket (not shown) before the fabric is cut.

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3) File history to be taken into consideration for the interpretation of the patent claim?

Germany:

• Statements of the patent applicant or the examiner may give an indication of how the person skilled in the art would have interpreted the patent claim (Federal Court of Justice 34 IIC 302 (2003) – Permetrexed).

Netherlands

• Only if the question how the claim must be interpreted is still open after the description and the drawings have been taken itoconsideration (Hoge Rad, 28 IIC 748 (1995) – Ciba-Geigy AG/Oté Optics BV).

UK

• Reference to the file is only appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and the claims and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest (UK Supreme Court, [2017] UKSC 48,

para 88 – Actavis/Eli Lilly).

France

• Quite ready to refer to the file history.

Construction of patent claims and

patent equivalents

III. Doctrine of Equivalents

German Approach

Element equivalent to an

element specified in the claim

i. Does it have essentially the

same effect?

ii. Was it obvious to the psa

that it has the same effect?

iii. Would the psa have been

able to find as having the

same effect by

considerations oriented to

patent claim?

UK Approach

Element equivalent to an

element specified in the claim

i. Does it have essentially the

same effect?

ii. On being told what it does

was it obvious to the psa

that is has the same effect?

iii. Would the psa have

concluded that strict

compliance with the literal

meaning of the claim was

essential?Construction of patent claims and

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Example 1: „Occlusion Device“

Is the attacked embodiment

is an equivalent infringement of the patent claim?

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1) Essentially the same effect?

– Yes.

2) Variant obvious to the psa?

– Yes.

3) Considerations oriented to the patent claim lead to the

variant?

No.

• In the description “alternative” ways of fixing the ends of the metal strands are mentioned like clamping, soldering, brazing, welding or any other manner.

• From these alternatives the claim makes a selection by requiring the strands to be “clamped” instead of requiring them just to be “fixed” in order to prevent them from unraveling.

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As a rule, it can be said that if an element is

disclosed in the description

but not specified in the patent claim

it may be concluded that it is not considered to be an

equivalent element by the psa.

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Example 2: „Pemetrexed”Federal Court of Justice, 14 June 2016 – X ZR 29/15, 208 IIC 2017 [English translation]; UK Supreme Court, 12 July 2017, [2017] UKSC 48 – Actavis/Eli Lilly; Swiss Federal Patent Court, 6 December 2016, 415 sic! 2017 [in German]

Claim:

• Use of pemetrexed disodium

• in combination with vitamin B12 as a medicament for treating tumor growth in mammals.

Allegedly infringing product:

• a medicament containing pemetrexed dipotassium in combination with vitamin B12 as an active substance.

• Pemetrexed is an anti-folate. Pemetrexed disodium and pemetrexeddipotassium are salts of pemetrexed.

• The claim specifying pemetrexed disodium cannot be interpreted as meaning (generic) pemetrexed.

• Pemetrexed dipotassium is not an element specified in the patent claim.

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Is pemetrexed dipotasium an equivalent element?

1) Essentially the same effect?

– Yes.

2) Variant obvious to the psa?

– Yes.

3) Considerations oriented to the patent claim lead to

the variant?

Yes (German and UK Supreme Courts; dissenting Swiss Patent Court)

• The description refers to “anit-folates” but not to pemetrexedsalts other than pemetrexed disodium.

• No plausible reason why the claim should have been limited to only pemetrexed disodium.

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Thank you very much for your attention!

Construction of patent claims and

patent equivalents