1. 1 Claim Interpretation and the Doctrine of Equivalence – German Approach Dr. Klaus Grabinski Judge at the Federal Court of Justice, Germany Chengdu, 10 September 2009

2. 2 I. Legal framework European Patent Convention (EPC) of 5 October 1973 EPC came into effect on 7 October 1977 Currently 34 Contracting states (all member states of the EU, CH, HR,TR,...) EPC encompasses substantive and procedural law. Claim Interpretation and the Doctrine of Equivalence - German Approach

3. 3 Article 69 (1) EPC – Extent of protection Purpose: to ensure a uniform interpretation of patent claims in all Contracting States  „The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and the drawings shall be used to interpret the claims“ Claim Interpretation and the Doctrine of Equivalence - German Approach

4. 4 Protocol on the Interpretation of Article 69 EPC:  Article 1: „Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims... nor should it be taken to mean that the claims serve only as a guideline... it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.“ Claim Interpretation and the Doctrine of Equivalence - German Approach

5. 5  Article 2: „For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims“ (Art. 2 came into effect only on the 13 December 2007 by a revision of the EPC [called EPC 2000] ) Claim Interpretation and the Doctrine of Equivalence - German Approach

6. 6 II. Claim Interpretation Point of view  The patent has to be interpreted from the point of view of  an average person skilled in the art  at the application/priority date of the patent.  Criteria for determining the average person skilled in the art: Expertise in the technology of the patent Professional qualifications (skilled worker, master craftsman, academic education) Practical experience Engagement in the development of technical innovation Claim Interpretation and the Doctrine of Equivalence - German Approach

7. 7 The role of the patent judge  Claim interpretation is a question of law.  The judge has to interpret the patent.  Therefore, he must not leave claim interpretation to an expert.  However, the trial judge may take expert evidence if he needs help with regard to claim interpretation in establishing what is the person skilled in the art‘s general knowledge/abilitiy/experience at the priority date. Claim Interpretation and the Doctrine of Equivalence - German Approach

8. 8 Admissible interpretation material  Patent claim  Description and drawings  File history No: DE, FR, UK; Yes: NL  Prior Art only when and insofar as mentioned in the description Claim Interpretation and the Doctrine of Equivalence - German Approach

9. 9 Interpretation rules  No strict philological interpretation of the patent claim.  The patent claim has to be interpreted purposively with regard to the overall technical context.  The patent claim has to be interpreted always in the light of the description and the drawings.  As part of the description and the drawings there have to be taken into account: Prior art mentioned in the description General explanations of the invention (problem to be solved, advantages of the invention, etc.) Examples of the invention explained in the description and shown in the drawings Examples do not restrict a broad claim. Claim Interpretation and the Doctrine of Equivalence - German Approach

10. 10  The patent specification is a dictionary of its own (Federal Supreme Court of 2 March 1999, GRUR 1999, 909 (German); 30 IIC 932 (1999) (English translation) – Tension Screw). Claim Interpretation and the Doctrine of Equivalence - German Approach

11. 11 Example 1: What is an Ω-shaped groove? Claim Interpretation and the Doctrine of Equivalence - German Approach

12. 12 The Greek character „Ω“ (omega) ist quite often written like this:  The character has two straight bars at its bottom before it extends to its circular form. Claim Interpretation and the Doctrine of Equivalence - German Approach

13. This is a drawing from the European Patent 1 223 268. Do you know what it shows? Claim Interpretation and the Doctrine of Equivalence - German Approach

14. It shows a floor strip for bridging a joint in a floor. The exact definition of the invention can be taken from the claim of the European Patent 1 223 268. Claim Interpretation and the Doctrine of Equivalence - German Approach

15.  Claim of European Patent 1 223 268  A floor strip (10) for bridging a joint in a floor having a masking profile strip (12) and a base (14)  which can be fastened in place in the joint and  to which the masking profile strip (12) can be connected. the floor strip (10) has a hinge (16, 30) the hinge (16, 30)  connects the masking profile strip (12) to the base (14) in such a way that the masking profile strip (12) is pivotable about an axis of pivot extending in the longitudinal direction of the floor strip (10) the hinge has a hinge shaft (16)  which has a cylindrical surface the hinge shaft (16)  rests in an Ω-shaped groove (32) in the base (14)  has a groove extending in the longitudinal direction (36)  in which a tenon (18) engages as a retaining means via a latching connection  the tenon (18) is provided in the masking profil strip (12) Claim Interpretation and the Doctrine of Equivalence - German Approach

16. The argument of the defendant‘s lawyer:  The Greek character “omega“ typically has two straight bars at the bottom before it extends to its circular form.  Consequently, the „omega“-shaped groove has to have two straight bars at its bottom. The defendant‘s lawyer made this allegation with regard to the attacked embodiment, which you can see on the next slide. Claim Interpretation and the Doctrine of Equivalence - German Approach

17. The attacked embodiment has a groove in the masking profile strip (not in the base!). Is this groove „Ω(omega)-shaped“? Claim Interpretation and the Doctrine of Equivalence - German Approach

18. In the description of the patent it is said:  „The object of the invention is to suggest a floor strip which exhibits a good possibility to adaption to different high floor coverings.“  „With its spherical side faces the hinge wave lies in the Ω- shaped groove which has an undercut due to its cross- sectional shape.“ The Court concluded:  It is the technical function of the Ω-shaped groove to hold the hinge wave by the undercut of its circular cross sectional shape so that the wave cannot slip out of the groove.  For this function it does not matter whether the groove has additional straight bars at its bottom. Claim Interpretation and the Doctrine of Equivalence - German Approach

19. Result:  The attacked embodiment has a Ω-shaped groove at the bottom side of the masking profile strip. The patent is its own dictionary! Claim Interpretation and the Doctrine of Equivalence - German Approach

20. Example 2: The drum type washing machine  The patent concerns a driving unit for a drum type washing machine... having a plastic tub mounted inside a cabinet and a drum rotatably mounted in the tub by means of a shaft fixed to the drum for transmission of driving power to the drum, the driving unit comprising...  What is a drum type washing machine??? Claim Interpretation and the Doctrine of Equivalence - German Approach

21. Is this a drum type washing machine ? Claim Interpretation and the Doctrine of Equivalence - German Approach

22. Is this a drum type washing machine? Claim Interpretation and the Doctrine of Equivalence - German Approach

23. What does the description say?  „ In general, a drum type washing, making by using friction between a drum rotated by a motor and laundry in a state detergent, washing water, and the laundry are introduced into the drum, provides effects of beating and rubbing washing, but gives almost no damage to the laundry, and shows no entangling of the laundry.“ Claim Interpretation and the Doctrine of Equivalence - German Approach

24. The skilled person is taught by the description that a drum type washing machine is not a washing machine simply having a drum but is a term for a washing machine with a substantially horizontal axis. Even though the agitator washing machine like in the 2nd example has a spin tub and, therefore, a drum, it achieves the washing effect by the agitator and not by the rotation of the drum (causing friction between the drum and the laundry) as required by the description of the patent. The patent is its own dictionary! Claim Interpretation and the Doctrine of Equivalence - German Approach

25. 25 III. Literal infringement Determination of the invention as disclosed in the claims (see II.) Break down of the patent claims into a feature analysis Comparison of the challenged product oder process with the feature analysis. All elements of the claim have to be realized in the challanged product. The burden of proof lies with the claimant. If one element is not realized by the attacked embodiment the patent is not literally infringed. Claim Interpretation and the Doctrine of Equivalence - German Approach

26. 26 IV. Doctrine of Equivalence The doctrine of equivalence  is accepted in most European states (CH, BE, DE, FR, IT, NL, etc., exception: UK) and  provided for in Art. 2 of the Protocol of Interpretation of Art. 69 EPC. Claim Interpretation and the Doctrine of Equivalence - German Approach

27. 27 Requirements – 3-Step-Test  Modified means have essentially the same technical effect with regard to the problem underlying the invention.  The person skilled in the art was able to find the modified means.  The person skilled in the art considers the modified means as a solution of equal quality to the terms of the patent claim. (German case law, cf. Federal Court of Justice of 12 March 2002, 2002 GRUR 511 (German); 34 IIC 302 (2003) (English translation) – Plastic Pipe) Claim Interpretation and the Doctrine of Equivalence - German Approach

28. 28 Prior Art Defence  The defence that the embodiment alleged to be an quivalent would not be patentable over the prior art is admissible. (Federal Court Justice of 29 April 1986, 1986 GRUR 803 – Formstein (German); 34 IIC 302 (2003) (English translation) – Moulded Curbstone) Claim Interpretation and the Doctrine of Equivalence - German Approach

29. 29 Example: The Snow Removal Plate (cf. Federal Court of Justice, 5 May 1999, 1999 GRUR 977 - Räumschild (German); 34 IIC 525 (2002) – Snow Removal Plate (English translation)) Claim Interpretation and the Doctrine of Equivalence - German Approach

30. 30  Patent claim (German Patent 29 54 134) A snow removal bar (1) for the snow removal plate (3) of a snow plough Consisting of a rubber or plastic element (4) Which is reinforced on both sides of the surface with steel plates (5) and which has its upper edge mounted on the lower edge of the snow removal plate Hard material granules (10) of a hard and brittle material are embedded in the rubber or plastic element (14).  Drawing from the patent specification: Claim Interpretation and the Doctrine of Equivalence - German Approach

31. 31  Patent specification Snow removal bars with a sandwich-type structure like it is described in the preamble of the claim are well known in the state of the art. However, high friction forces are in operation between the rubber or plastic element and the road surface that give rise to high fuel consumption and serious wear and tear of the rubber or plastic element. Claim Interpretation and the Doctrine of Equivalence - German Approach

32. 32  Attacked embodiment The attacked snow removal bar uses hard material rods in the rubber or plastic element between the steel plates of the snow removal plate. The hard material rods reduce the drive resistance and wear as if there were hard material granules embedded. An article about snow removal bars was published three months before the priority date of the patent. In this article an engineer discussed the possibility to embed hard material rods in the rubber element of a snow removal bar in order to reduce wear. The engineer came to the result that hard material rods might break easily and, therefore, are not suited for the purpose. Claim Interpretation and the Doctrine of Equivalence - German Approach

33. 33  Attacked embodiment The attacked snow removal bar uses hard material rods in the rubber or plastic element between the steel plates of the snow removal plate. The hard material rods reduce the drive resistance and wear as if there were hard material granules embedded. An article about snow removal bars was published three months before the priority date of the patent. In this article an engineer discussed the possibility to embed hard material rods in the rubber element of a snow removal bar in order to reduce wear. The engineer came to the result that hard material rods might break easily and, therefore, are not suited for the purpose. Claim Interpretation and the Doctrine of Equivalence - German Approach

34. 34  No literal infringement The rubber or plastic element of the attacked snow removal bar contains hard material rods instead of hard material granules as provided for in the patent claim.  Doctrine of Equivalence 3-Step-Test:  Essentially the same technical effect?  Yes, when embedded in the rubber or plastic material between the steel plates hard material rods like hard material granules reduce drive resistance and wear.  Was the person skilled in the art able to find the rods?  No, the article about snow removal bars that was published a few months before the priority date of the patent shows that the person skilled in the art had at the priority date the prejudice that hard material rods embedded in the plastic or rubber material might easily break and, therefore, would not be suitable. Claim Interpretation and the Doctrine of Equivalence - German Approach

35. 35  Does the person skilled in the art take the rods as a solution of equal quality to the terms of the patent claim into consideration?  No, since there is nothing in the patent claim or the patent specification that induces the person skilled in the art to replace hard material granules by hard material rods  Result:  No equivalent solution. Claim Interpretation and the Doctrine of Equivalence - German Approach

36. 36 Thank you very much for your attention!