In a recent decision on an application for a preliminary injunction (case number UPC_CFI_292/2023), the Local Division of the UPC in Munich has referred to the prosecution history of a patent as an aid to interpreting the granted claim. The decision does not provide basis for this method of claim interpretation but it may reflect the practice in the Netherlands – the legally qualified judge in the case is a patent judge in the district court of The Hague. The UPC does not yet have a consistent body of case law which can be expected to be followed in future cases but this is perhaps another hint that until the UPC's jurisprudence settles, decisions may be flavoured depending on the background of the judge.
In this case, SES-imagotag SA had made an application for a preliminary injunction at the Munich Local Division, arguing that the defendants infringed their European patent EP3883277, which relates to an electronic label for displaying information in a sales area.
The meaning of the claim features was disputed between the parties so the Division interpreted the claims and, in doing so, referred to the original version of the claim and the amendments made during prosecution as an aid to interpreting the granted claim. The Division then dismissed the application for provisional measures since they were not convinced that infringement was taking place.
Traditionally, the influence of prosecution history on claim interpretation in Europe has varied between jurisdictions although it is understood that it is common practice to make use of this information in the Netherlands, following the case Dijkstra v Saier (ECLI:NL:HR:2006:AZ1081, 22 December 2006).
Given that traditions have varied on this question across the participating states of the UPC, practitioners will be interested to see whether SES-imagotag SA takes the issue to the UPC Court of Appeal. A decision on whether or not to refer to the prosecution history in interpreting the claims from the Court of Appeal could have a significant bearing on the future direction of the UPC as a whole. At the time of writing, it is not yet known if SES has appealed, and if the Court of Appeal would follow the same interpretation as the Munich Division.
One of the aims of the UPC Agreement is to enhance legal certainty, and it would surely be beneficial to applicants and defendants to know the method of claim interpretation which will be invoked by a court.
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