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This article looks at the position in the UK, Germany, where the doctrine of equivalents has been established over time by national case law and how the Unified Patents Court has dealt with this issue.
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The doctrine of equivalents is a rule in some patent systems that allows a court to hold a party liable for patent infringement if the infringing product or process does not fall within the literal scope of a patent claim but is nevertheless equivalent to the claimed invention.
UK
In 2017, the Supreme Court, in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, changed the way in which UK courts approach patent infringement by equivalents under Article 69 of the EPC by providing a potentially much broader scope of claim.
To summarise, the case concerned an appeal against the CoA’s decision that Actavis’s generic pharmaceutical product did not infringe Eli’s patent for a cancer treatment. The chemical concerned was “Pemetrexed” which had therapeutic effects on cancerous tumours, but could result in serious side effects if used alone. Eli’s patent set out that these side effects could be largely avoided if the chemical compound “pemetrexed disodium” was given alongside vitamin B12. Actavis sought a declaration of non-infringement as it intended to launch a generic pemetrexed compound product mixed with B12, however instead of “pemetrexed disodium” it would use “pemetrexed diacid, ditromethamine or dipotassium”.
Three questions were set out in the judgment to determine infringement under the doctrine of equivalents:
- Notwithstanding that it was not within the literal meaning of the relevant claim of the patent, does the variant achieve substantially the same result in substantially the same way as the invention?
- Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
- Would such a reader of the patent conclude that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim of the patent is an essential requirement of the invention?
To establish infringement where there was no literal infringement, the answer to the first two questions should be “yes”, and the answer to the third question should be “no”. The doctrine has been argued with mixed success in the English Courts since the Actavis case.
Germany
In Germany, the general approach for assessing equivalent infringement has been defined in the German Federal Court decision “Cutting Blade I” (BGH “Schneidmesser I”, 12 March 2002, X ZR 168/00), and the so-called “cutting blade questions” still form the basis for applying the doctrine of equivalents in Germany:
- Equivalent effect: Does the modified embodiment achieve the same technical effect as the patented solution?
- Findability: Was the modified embodiment obvious to the person skilled in the art on the basis of his knowledge and considerations, so that they could recognise the deviating solution as having the same effect?
- Equivalence: Does the skilled person rely on the considerations of the patent claim when finding the modified solution, so that the skilled person can regard the modification as an equivalent implementation of the invention?
In subsequent years, the interpretation of the “cutting blade questions” and the definition of the equivalent scope of protection in Germany have been further defined by a fairly large body of case law.
The Federal Court decision “Occlusion Device” (BGH “Okklusionsvorrichtung”, 10 May 2011, X ZR 16/09) introduces the principle that the equivalent scope of a claim does not extend to alternative embodiments that are disclosed in the patent but are not claimed. (“Disclosed but not claimed means disclaimed”.)
However, this rather severe restriction of the equivalent scope has since been somewhat lifted, because the Federal Court decision “V-shaped guide arrangement” (BGH “V-förmige Führungsanordnung”, 23 August 2016, X ZR 76/14) states that, despite the patent providing a fairly narrow definition of the V-shaped cross section of a specific element and excluding other shapes that had been implied by the description as originally filed, the assessment regarding equivalent infringement would depend less on the spatial-physical design of the potentially infringing product and more on its function in the context of the patent’s technical teaching.
In the German parallel proceedings to the above-mentioned Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48 decision, BGH “Pemetrexed”, 14 June 2016, X ZR 29/15, a further option has been introduced in how an assessment of equivalent infringement can somewhat deviate from the approach as defined in “Okklusionsvorrichtung”. The “Pemetrexed” decision acknowledges in its headnote that, as a rule, there is no infringement by equivalent means if the description discloses several possibilities for achieving a particular technical result, but only one of these possibilities has been included in the patent claim. However, the “Pemetrexed” decision then further states that an alternative solution that is not explicitly disclosed but is merely “discoverable” based on the disclosure of the patent is not excluded from equivalent patent protection.
The assessment of the “equivalent effect” according to the first “cutting blade question” has been considered in the Federal Court decision “crane arm” (BGH “Kranarm”, 17 November 2020, X ZR 132/18. In the “crane arm” case, the hosepipes of the challenged embodiment did not run between the two swivel bearings of the swivel joint on the crane arm side, as required by the patent claim. Instead, the hosepipes were routed around a separate component between the two swivel bearings. The Federal Court found that no equivalent effect was achieved in this case, since the protection of the hosepipe was not achieved in the same section of the pipe as in the claimed device.
In summary, Germany has a long-established body of case law regarding doctrine of equivalents, and alternative solutions are generally found to be infringing the equivalent scope of a patent when the “cutting blade questions” can be answered in the affirmative.
Plant-e v Arkyne – UPC Local Division The Hauge
Towards the end of 2024, the Hague Local Division handed down the UPC’s first decision of the doctrine of equivalents. The UPC found the patent to be valid and infringed by equivalence, and granted a permanent injunction covering the UPC territories in which the patent is in force namely, Netherlands, Belgium, Luxembourg, Germany, France and Italy.
Read the decision here: Plant-e v Arkyne.
Background
Plant-e’s patent relates to a device (claims 1-10) and method (claims 11-16) for converting light energy into electrical energy using living plants.
Arkyne’s product is a ‘biological’ battery, advertised as being capable of generating an electric current through micro-organisms that oxidise feedstock in the soil. The product is called a Bioo panel. The Bioo panel also includes a top compartment containing soil, plants and the plants’ roots. Chemical energy of organic material in the soil, and generated by the plants via photosynthesis, is then converted into electrical energy.
Plant-e alleged that Bioo’s product infringes claims 11-16 of the patent.
The court found the patent to be valid and infringed, not literally, but by equivalence.
The Bioo Panel met all of the features of the claim except for the location of the plant and its roots in the anode compartment so there was no literal infringement of the patent in suit. However, by analysing the scope of protection of the patent using the doctrine of equivalents, for the first time at the UPC, infringement was found.
Doctrine of equivalents
The UPC stated that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative:
- Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
- Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
- Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
- Is the allegedly infringing product novel and inventive over the prior art?
In this case, the answer to each of the above was yes.
Impact
This is a first instance decision from The Hague Local Division that appears to be applying and adopting the precedent already set in its own national courts.
Whilst the UPC intends to borrow principles from the case law of several European jurisdictions, we do not yet know how it will provide harmonisation between varying European equivalence tests. As seen above, the UK and Germany have differing tests.
It remains to be seen if the UPC’s Court of Appeal will uphold or depart from this decision.
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Visit our UPC and UP latest updates page to read more insightful articles and analysis by our experts on the latest developments on Unified Patent Court and Unitary Patent matters.
This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.
