The Local Division in the Hague

Infringement based on the doctrine of equivalence at the UPC

On November 22, 2024, the UPC’s Local Division in the Hague, delivered a highly relevant decision (UPC_CFI_239/2023) concerning European Patent EP2137782 owned by
Plant-e Knowledge B.V. This decision may well have settled the ground for future cases based on the doctrine of equivalence in UPC proceedings.

Content of the decision

Infringement by Equivalence:

While the defendant’s devices did not meet all literal features of the patent, particularly the location of the roots of a plant relative to an anode compartment, the court found these devices infringed by equivalence.

The court applied a four-step test to determine equivalence, focusing on whether the variation solved the same problem and performed the same function, among other factors. Bioo’s attempt to isolate the plant from the anode compartment was deemed an equivalent variation of the claimed invention. In detail, the Division in The Hague found "that a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative.

1) Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?

2) Fair protection for patentee: Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee?

3) 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?

4) Is the allegedly infringing product novel and inventive over the prior art?"

Comparing these questions – in light of the detailed reasoning of the Local Division - with German practice, it appears as if 1) corresponds with step one of the German “test”; step 2) at least resembles step two of the German “test”; step 3) at least resembles step three of the German “test”; and step 4) corresponds - in effect - with the so-called Formstein defence (explicitly mentioned by the Local Division in The Hague at no. 88 of the decision).

Our Takeaways: 

- The Division in The Hague finds that a variation is equivalent to an element specified in the claim if four questions are answered in the affirmative. In short equivalent infringement requires

• a technical equivalence,
• a fair protection for the patentee (in this context relevant: is the allegedly infringing product obvious over the patent or not),
• a reasonable legal certainty for third parties (does the wording of the patent allow for protection extending to equivalent means) and
• novelty and inventiveness of the allegedly infringing product over the prior art.

- Comparing it with German practice there are considerable similarities. In German practice equivalent infringement requires:

• a same effect
• obviousness over the patent, 
• parity (“Gleichwertigkeit”; considerations must be based on the wording of the patent) and
• noelty and inventiveness of the allegedly infringing product over the prior art (note: from a procedural point of view this only plays a role if the so-called “Formstein-objection” is raised by the defendant).

To the decision To the Blog Overview