(As published in the October issue of the CIPA Journal)
UPC_CFI_54/2023 (Hamburg Local Division)
Decision issued 26 August 2024[1]
Avago Technologies International Sales Pte. Limited (Avago) brought an infringement action against Tesla Germany GmBH and Tesla Manufacturing Brandenburg SE (Tesla) on 1 June 2023, accusing Tesla of infringing Avago’s patent EP 1 612 910. Tesla contested Avago’s ownership of the patent, as well as counterclaiming for the invalidity of the patent.
Avago was listed as the registered proprietor of the patent in suit, having been previously assigned the patent by Broadcom. Tesla disputed the legality of this assignment, alleging that as the same person acted as the representative signing the assignment on behalf of both Avago and Broadcom, this assignment constitutes an inadmissible self-dealing. The Court disagreed with Tesla, ruling that German law (particularly Section 181 of the German Civil Code (BGB)) does not apply in this instance, and rather Singapore or Californian law is to be applied, which do not have a comparable restriction.
Tesla also disputed the chain of representation, to which the Judge-rapporteur ordered the production of documents referenced in the Power of Attorney documents signed by Avago and Broadcom, including resolutions from both companies’ board of directors (ORD_28831/2024[2]). However, Tesla was denied access to an authorisation document for Avago being assigned documents, as this was not considered relevant.
The Court dismissed Tesla’s claim that Avago’s auxiliary requests in response to the revocation counter-claim were inadmissible due to Avago’s non-use of CMS. The Court noted that there is no explicit statement in the Rules of Procedure that applications submitted outside CMS are to be excluded, and the UPC was in its initial phase at the time. So, the Court concluded that the amendments were admissible, particularly considering that they were submitted within the time limit outlined in Rule 30.1 RoP in conjunction with Rule 29 (a) RoP. It does appear that the Court does not intend to continue to allow non-use of CMS as the UPC matures. However, the decision refrains from any specificity on “whether and from what point in time the UPC started work stricter standards should be applied”.
With regard to the interpretation of the claims of the patent, the Court cites its own case law, NanoString/10x Genomics (UPC_CoA 335/2023[3]), and Article 69 of the EPC. In particular: “The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense… Rather, the description and drawings must always be used as explanatory aids”.
The decision also notes that “In the case in dispute, it does not matter under what conditions and to what extent the grant history is relevant for the interpretation of claims before the UPC”. Following the Court of Appeal’s decision earlier this year in VusionGroup v. Hanshow (UPC_CoA_1/2024[4]), it appears that the Division has chosen to avoid the issue of the use of the file wrapper in interpreting claim features in this case.
Based on this claim interpretation, independent claims 1 and 3 were found to be invalid for lacking inventive step, as were all auxiliary requests pertaining to claim 3. However, limiting claim 1 to the features of claim 2 was found to be valid. Article 65(3) UPCA describes that “where the grounds for invalidity relate to only part of the patent, the patent shall be limited by a corresponding amendment to the claims and declared partially invalid”, without prejudice to Article 138(3) EPC.
None of Avago’s submitted auxiliary requests covered amending claim 1 to claim 2 and deleting claims 3 and 4 entirely. Avago submitted auxiliary request 1bis at the end of the oral hearing, covering the limitation of claim 1 to claim 2 and the deletion of claim 3.
However, irrespective of the admission of auxiliary request 1bis, the Division determined that auxiliary request 1 with the deletion of claim 3 is legally valid. This is because this amendment was “part of the plaintiff’s defence against the revocation action from the outset”, and the two independent claims 1 and 3 are not based on each other in such a way that the cancellation of one claim would require the cancellation of the other.
Based on claim 1 of auxiliary request 1, the Court went on to find that Tesla did not infringe.
The Court ordered that Avago pay 85% of the costs, taking into account that the infringement action was unsuccessful and that the revocation counterclaim was unsuccessful in part.
27 September 2024
[1] https://www.unified-patent-court.org/en/node/1045
[2] https://www.unified-patent-court.org/en/node/805
[3] https://www.unified-patent-court.org/en/node/576
[4] https://www.unified-patent-court.org/en/node/717