April 2024 Decision No. UPC_CoA_335/2023
The question of whether and to what extent the description should be used to interpret the claims of a patent is a disputed topic in patent law, with there being a need to construe the claims as they are written whilst also reading them in the context of the patent as a whole. In its first substantive decision, the UPC’s Court of Appeal suggests the description can be used to decide whether arguably impractical embodiments are excluded from the scope of the claims.
The UPC’s rules of procedure provide that when deciding whether to grant a preliminary injunction, the court may require the party applying for the preliminary injunction to show with a “sufficient degree of certainty” that the patent in question is valid and infringed.
In 10x Genomics v NanoString, the UPC’s Munich Local Division held that 10x Genomics had satisfied this test, and issued a preliminary injunction against NanoString accordingly.
However, the UPC’s Court of Appeal has recently overturned this decision, holding instead that it was not sufficiently certain that the patent was valid to justify granting a preliminary injunction.
The Court of Appeal’s decision was based primarily on a difference in claim construction caused by a disclosure in the description.
The patent concerned a “method for detecting a plurality of analytes in a cell or tissue sample” which involved incubating the sample with detection reagents to facilitate binding of the reagents to the analytes, followed by detecting the reagents bound to the analytes.
At first instance, the Munich Local Division held the relevant features of the claim should be interpreted as meaning there should be a single process of incubation followed by detection. The prior art taught towards a cyclical approach of incubation then detection, followed by dissociation, then further steps of incubation and detection, and so on. The patent proprietor argued the skilled person would consider such a cyclical approach impractical and thus would not consider such cyclical methods encompassed by the claim. The Munich Local Division agreed, holding that this provided a sufficient degree of certainty that the claim involved an inventive step.
However, the Court of Appeal noted the description of the patent disclosed that the incubation and detection steps could take up to 48 hours in some cases, and concluded the skilled person reading the claim in the context of this disclosure would not consider a cyclical method impractical when such a relatively long period of time was used. Thus, the Court of Appeal held that the Munich Local Division was wrong to decide such methods were not encompassed by the claim, and decided it was more likely than not that the claim was invalid for lack of inventive step.
The Court of Appeal therefore held that the preliminary injunction should not have been granted, as it had not been shown with a “sufficient degree of certainty” that the patent was valid.
Conclusions
The difference in claim construction between the Munich Local Division and the Court of Appeal in this case highlights the conflict between the need to construe patent claims as they are written whilst also interpreting them in the context of the patent as a whole.
This decision also highlights that a “sufficient degree of certainty” that the patent is valid presupposes that the claims are construed correctly when assessing inventive step.
From this decision, it seems the UPC is willing to rely on disclosures in the description when there is a dispute as to whether the skilled person would consider an embodiment impractical enough to be excluded from the scope of the claim. Thus, if there are embodiments the proprietor wishes to exclude from the claim, then a sensible approach is to carefully make sure this is reflected in the wording of the claim itself.
