(As published in the October issue of the CIPA Journal)
Avago Technologies International Sales Pte. Limited v Tesla Germany GmbH, Tesla Manufacturing Brandenburg SE UPC_CFI_52/2023
Order of 30 August 2024 (ORD_598434/2023[1])
The Claimant, Avago Technologies, sued the Defendants, Tesla Germany and Tesla Manufacturing, for infringement of a European Patent. The Patent was only still in force in Germany. Although the Patent was granted in English, the proceedings were conducted in German.
This decision follows a decision[2] from the Hamburg Local Division between the same parties for another of Avago Technology’s patents.
The Defendants denied infringement and counterclaimed for revocation. In response to the Counterclaim, the Claimant filed an Auxiliary Request. The Defendants asserted that the Claimant’s Application to Amend was filed outside the requisite period, and was therefore inadmissible. The Defendant also argued that the Application to Amend should not be allowed later, even with permission of the Court.
The field of the patent related to communications systems, particularly for providing an improved signal transmitter. At point B.II.2, the Court agrees with the Defendants’ characterisation of the skilled person, noting that this was not disputed by the Claimant.
For the interpretation of the claims, the Court adopted the (now commonplace) Harvard v Nanostring standard.
Given the highly technical nature of the patent, the Court deemed it necessary to dedicate a significant portion of the decision (12 out of 40 pages) to interpreting various features of the claims.
For the interpretation of claim 1, the interpretation of Feature 1.1.2 was most consequential. Feature 1.1.2 is reproduced as follows:
“to convert the outbound data (94) into at least one of: a normalized complex signal (140), offset information (142), and transmit property information (144) when the programmable hybrid transmitter is in a second mode (136)”.
To understand this feature, the Court examined the use of English in the examples “at least one: of A, B, and C” and “at least one of: A, B, or C”. The Court set out that, in standard English, the use of “and” is understood to mean that the listed elements cumulative, i.e. “at least one of A, and at least one of B, and at least one of C”. This was compared with the use of “or”, where the listed elements are understood as being provided in the alternative, i.e. “at least one of A, or at least one of B, or at least one of C”.
The Claimant had argued that Feature 1.1.2 would be satisfied if the outgoing data were converted into a normalized complex signal. The Defendants had argued that Feature 1.1.2 is fulfilled if the outgoing data is converted into a normalized complex signal and/or offset information and/or transmit property information.
The Court rejected both of these positions.
Looking to elements that appear later in the claim which define the second mode, the Court noted that definite articles were used in respect of “normalized complex signal”, “offset information”, and “transmit property information”. The Court interpreted this to mean that the listed features of Feature 1.1.2 are necessarily and, therefore, cumulatively claimed.
Consequently, Feature 1.1.2 was interpreted to mean that the claim requires “at least one totality of all three elements” when in the second mode. That is, when the transmitter is in the second mode, the baseband processing module converts the outgoing data into a normalized complex signal and offset information and transmission property information.
The Court reasoned that no other interpretation would be understood by the skilled person from the description or figures of the patent.
It may have been the case that, had Feature 1.1.2 been the only mention of the list of elements in the claim, the phrase “at least one of” could have been interpreted to mean that the elements of the list are selectable in the alternative or cumulatively. However, by looking at the feature in the context of the rest of the claim and of the description and figures, the Court arrived at a more limiting interpretation than either of the claimant and defendant’s positions. In any case, the Court’s approach should caution practitioners to carefully consider the wording of claims.
The Court went on to find that the independent claims lacked novelty in view of the prior art.
In the Claimant’s Auxiliary Request, Feature 1.1.2 was amended to explicitly require all three elements cumulatively. As this did not differ from the Court’s interpretation of granted claim 1, the Court found that this did not limit the claim any further, so the validity assessment would arrive at the same conclusion. Thus, the Court felt no need to assess whether the Application to Amend was filed in due form and time.
By virtue of the finding of invalidity, the Court dismissed the infringement action and order the Claimant to pay the costs of the proceedings.
27 September 2024
[1] https://www.unified-patent-court.org/en/node/1046
[2] https://www.unified-patent-court.org/en/node/1045