Deriving meaning from a claim: Narrower, broader … or contrary to the wording?

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Case No. O2020_001 | Hearing of 4 July 2021

BD logo

As mentioned earlier on this Blog here, Becton, Dickinson and Company has sued Ypsomed AG for infringement of EP 2 825 227 B1; see EPO Register and Swissreg for further bibliographic information.

The attacked embodiment is Ypsomed’s UnoPen™:

Ypsomed logo

It appears that BD is envoking EP 227 not as granted, but only to limited extent inter partes — presumably in accordance with the main request currently on file at the EPO in opposition proceedings. The parties used a feature analysis in accordance with the numbering in the first column of the following table (taken from the preliminary opinion of the OD):

I understand that the patentee’s amendments are addressing allegedly unallowable amendements / generalisations during prosecution. In my understanding of what has been pleaded, the juge-rapporteur had spotted multiple unallowable amendments; see also the preliminary opinion (p. 4-9) of the OD in EPO opposition proceedings in this respect.

Metes and bounds of claim construction

This is where it gets really interesting. According to the wording of the claim (emphasis added), the pen is configured such as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

The parties fundamentally disagree how this is to be understood. The defendant holds that the claim wording is clear by and in itself; no claim construction even needed. On the other hand, the plaintiff argues that this should be understood as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

Plaintiff submitted that in light of the claim as a whole and the embodiments outlined in detail in the specification, the skilled person would readily understand that nothing else could be meant. But isn’t that quite the contrary of what the mere wording of the feature might suggest, at least at the face of it?

There are pros and cons for both positions. The preliminary opinion (p. 10/11) of the OD in EPO opposition proceedings is in line with plaintiff’s position:

Anything else would not make sense for the man skilled in the art and would be therefore disregarded.

On the other hand, the most recent decisions of the Swiss Federal Supreme Court, i.e. 4A_581/2020 and 4A_317/2020, might arguably be more in line with defendant’s position:

convince me!

It will be interesting to see how the FPC finally decides on this issue. The judge-rapporteur apparently followed defendant’s position in his expert opinion. But the President made very clear in his opening remarks that the judges have no uniform opinion on the issue yet, and mentioned to the attorneys before the pleadings:

Bitte fühlen Sie sich dadurch nicht unter Druck gesetzt.

Even at the end of the hearing, the President said that he changed his mind at least twice during the day. This highly interesting aspect of claim construction really appears to be a close call.

Patentability

Novelty has apparently been acknowledged in the judge-rapporteur’s expert-opinion. The discussion at the hearing focused only on three documents, i.e. WO 2006/084876 A1, WO 2010/072427 A1 and WO 2021/125876 A1.

However, I understood from the pleadings that the expert-opinion had held that the claimed subject-matter was obvious in view of the prior art.

Livestream
live stream

On request of the plaintiff, a live stream of the hearing had been made available to allow foreign counsel to attend the hearing, i.e. Freshfields attorneys who are handling corresponding litigation in Munich / Germany for the plaintiff, as well as some BD personnel.

It was the very first time that the FPC provided this service; much appreciated! Even though it did not work out without hiccup (room change on the spot; no video signal anyway; sensitivity of microphones; …). Still, I hope this service is here to stay. Maybe, even for the public to attend remotely … ?

(No) Stay of proceedings / TIMING

Plaintiff had apparently requested that proceedings be stayed pending the decision in opposition proceedings at the EPO. In view of the time constraints at the hearing, defendant’s counsel enquired whether pleadings on this issue were necessary (which would have taken him about 30 min more), or whether the court was inclined to deny the request anyway. The President informed the parties after a break that the request will be denied, and defendant’s counsel omitted that part of his pleadings accordingly.

The President signaled that one might reasonably expect a decision only after judicial vacation, i.e. after 15 August 2021.

Finally, defendant’s counsel encouraged the court to consider issuing the operative part of the judgment as soon as it is available, to remove the legal uncertainty as soon as possible. The President explained that this is not possible (likely in view of the reference in Art.  239(3) CPC to the Supreme Court Act; Art. 112(1) SCC appears to rule this out).

Reported by Martin WILMING

Oh, on the funny side: When the end of the hearing was approaching and someone formally requested a restroom break, laughter broke out at the other end of the court room after a short delay. Perhaps someone imagined what would happen if this request was not granted(?).

BIBLIOGRAPHY

Case No. O2020_001 | Hearing of 4 July 2021

Becton, Dickinson and Company
./.
Ypsomed AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Lorenzo PARRINI

Judge-rapporteur:

    • Christoph MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
    • Markus FRANTZ (SSM), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

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3 Replies to “Deriving meaning from a claim: Narrower, broader … or contrary to the wording?”

  1. The FPC is not bound by the case law of the BA, but recourse to the description should only be made to the description if the claim lacks clarity and the lack of clarity cannot be solved by the wording of the claim itself.
    What is in the claim is clear in itself and there is no need to look at the description. The drafting of the claim is the responsibility of the proprietor. If the claim does say what the proprietor wanted to say, he should have drafted it differently.
    I suspect this drafting has been chosen to try squeezing a possible competitor/opponent.
    But it is not possible to have a cake and eat it.

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