Infringement & Freedom To Operate - Food Valley

Infringement &
Freedom To Operate
Utrecht, 21 April 2010
Bert Oosting
Maarten Ketelaars

Infringement
Two sides of IP right
1. Accusation of infringement on 3 rd party’s IP right
2. Owner of IP right notices infringing product/service

Infringement
Definition of Infringement in Patent Laws:
Right of patent owner :
‘To make, use, put on market or resell, hire out or deliver the patented product
or otherwise deal in it, in or for his business, or to offer, import or stock it for any
of those purposes’
‘To use the patented process in or for his business or to use, put on the market,
or resell, hire out, deliver the product obtained directly as a result of the use of
the patented process, or deal in any other way, in or for his business, or to offer,
import or stock it for any of those purposes’
Art. 69 EPC + Protocol:
Harmonization in Europe ?

Infringement
Definition of Infringement in Patent Laws (2):
Direct Infringement:
Literal Infringement or Infringement by Equivalence
Indirect (or Induced) Infringement:
‘Providing essential elements of patent claim’
additional requirements!

Infringement 1 (being accused...)
The IP right mentioned should be valid > check
Register (EPO; NL-Octrooicentrum)
Do the claims as granted actually cover your product?
Special circumstances in your defence:
Prior use right
Patent right exhaustion
‘Gillette’ defence
Data available which is relevant to possible nullity of IP right
Protective letter procedure

Infringement 1 (being accused...)
Team of IP Lawyer and Patent Attorney
Each has special knowledge in Procedures / Patent Law
May advise in negotiating deal with IP owner
Management and control of:
Infringement procedure at Court
Nullity procedure at Court
Nullity advice from NL Octrooicentrum
Protective letter

Infringement 2 (‘get them...’)
Before taking steps towards a possible infringer:
Make sure your IP right is enforceable
Patent granted/ accelerate grant
Know the relevant prior art (additional search?)
Know the accused infringer’s product in detail:
gather evidence, new possibilities in civil law in Europe for
(descriptive) seizure!
Evidence of infringement in case of process claims (reversal of
burden of proof)

Infringement 2 (‘get them...’)
First steps:
Talk/ Warning letter
If no satisfactory result, initiate legal procedure:
In NL:
‘Kort Geding’: quick, cost is limited
‘Bodemprocedure’
Other countries: use local legal knowledge, and
possibilities for co-ordination

Construction and Infringement
Claim Construction: Limited Harmonisation
Harmonized Approach to Claim Construction (Determination of scope of
protection in Art. 69 European Patent Convention (EPC) and the
Protocol on its Interpretation
Determination of Scope of Protection under Article 69 EPC:
Art. 69 (1) EPC: scope of protection determined by the claims, description and
drawings used to interpret (the wording of) the claims
Not by a strict, literal meaning of the wording used in the claims
Not by using claims as a guideline and a consideration for the description and
drawings by a person skilled in the art, to determine what the patentee has
contemplated ("Inventive Concept" – Germany / "Essence of the Invention" – The
Netherlands)
But a position between the extremes – fair protection for the patentee (not too
strict/literal meaning of wording of the claims) and a reasonable degree of certainty for
third parties (not too broad/using claims merely as guideline)
General Guidelines only
Determination of infringement under national law (64(3) EPC) – different national
approaches to infringement
Limited harmonisation

Revision of the Protocol on the Interpretation of Art. 69 (EPC)
in EPC 2000 and the Protocol on Interpretation – More
harmonisation?
Equivalents and Prosecution File (statements during
prosecution):
The present provision governing the extent of protection conferred by a
European patent, ie Article 69 EPC and the Protocol on its
interpretation, have turned out not to achieve, to the extent desired, the
goals of ensuring as uniform an application and interpretation as possible.
In particular, this is the case regarding the treatment of so-called
equivalents and the importance of prior statements made by the
applicant for or proprietor of a patent in the application or in the
specification or during prosecution before the EPO or in proceedings
concerning the validity of the patent.
In order to strengthen and clarify the extent of protection under Article 69
EPC, and to contribute to a more uniform court practice in Europe, the
Protocol on its interpretation should be supplemented by a few rules
regarding the significance of equivalents and limiting statements
during prosecution in assessing the extent of protection.

Revision of the Protocol on the Interpretation of Art.
69 EPC in EPC 2000: Equivalents
Only more harmonisation on equivalents
Article 2 of the Protocol on the Interpretation of Art. 69 EPC:
For the purpose of determining the extent of protection conferred
by a European patent, due account shall be taken of means
which at the time of the alleged infringement are equivalent to
the means specified in the claims.
No harmonisation on Prosecution File

Application of Art. 69 EPC and the Protocol on its
Interpretation and Claim Construction in The
Netherlands
Art. 69 EPC: scope of protection determined by the claims
(description and drawings serve to interpret the claims)
Always start with the claim language (claims are starting point)
Use description and drawings (and prosecution file) to interpret
claims if claim language is ambiguous
No limitations of scope based on description and drawings when
claim language is clear
Protocol: fair protection of patentee (not too strict/literal
interpretation of wording of the claims) vs. reasonable degree of
certainty for third parties (not too broad: claims (not "essence of
the invention") are starting point,
If this leads to overly broad scope not commensurate to the
invention correction based on description and drawings – Supreme
Court in Lely v. Delaval: "essence of the invention" is not starting
point but still a viewpoint)

Approach to Claim Construction and Infringement in
The Netherlands: Equivalents and Prosecution File
Literal and equivalent infringement/Liko v. Impro:
(i) literal infringement/literal wording (Wortlaut)
(ii) sensible meaning (Wortsinn)
(iii) equivalent infringement)
Equivalents
Function-way-result
Insubstantial differences
Inventive equivalents: no infringement
Prosecution File: Ciba Geigy v. Oté Optics
Prosecution file may be used by patentee for interpretation of claims if doubt
ambiguity remains after reading claims and specification
Prosecution file used more to disadvantage of patentee because any ambiguity in
claims which is not resolved by specification is for risk of patentee
Abandonment during prosecution only in very clear cases
Prosecution File: Sayer v. Dijkstra
Prosecution file may always be used by third party (e.g. Defendant)
NL Supreme Court explicitly deviates from Courts in UK and Germany

Equivalents in The Netherlands
Function-way-result (mechanical cases)
Substantially different (e.g. inferior) result: no equivalent
infringement
Equivalence easily assumed in case of apparent “design around”
in “way”, but substantially same “function” and “result”
Insubstantial differences (chemical/pharmaceutical/ biotech
cases)
Inventive equivalents
Obvious (“glattes”) equivalence: “equivalence ends where the next
invention begins”
Only if the specific difference between patent and variant is
inventive

The Netherlands vs. UK and Germany
UK:
Purposive construction (Catnic)
Improver – 3 step purposive construction test
Does difference between the alleged infringing product and product specified in claim have a material
effect on the way invention works? NO?
Would this have been obvious to skilled man? YES?
Would skilled man nevertheless have understood from language of the claim that the patentee
intended to protect only claimed product? NO?: INFRINGEMENT
House of Lords in Amgen v. TKT:
Improver-questions are not rigid checklist “only guidelines more useful in some cases than others”;
Only one compulsory question: what would skilled man have understood the patentee wanted to
cover with the claim language?
No Prosecution File
No protection “outside the claims” – no doctrine of equivalents
Germany:
Literal infringement: Wortlaut and Wortsinn
Custodiol II tripartite equivalence test
Same technical effect (to a practically relevant extent);
Discoverable for skilled man (at the priority date) “without making an invention” (Bratgeschirr: Overall
Discoverability Test);
Variant is in line with inventive concept;
No Prosecution File

Freedom To Operate
Usually done as part of Due Diligence (mergers etc.), or prior to
initiating monetary investment
Depending on scope of exercise, cost may be high: Frequent
feedback is required to steer FTO process
1. Determine scope: what is the relevant product/service
2. Determine ‘playing field’: competitors, suppliers,...
3. Perform Search and Analysis

Freedom To Operate
Perform prior art search:
1. Publications (patents/
Non Patent Literature) >
20 years old
This is ‘free’ technology

Freedom to Operate
Perform prior art search (continued):
2. Publications (patents) < 20 years old
Provides List of Possible Problems...
[note: non-published applications not visible...]
Reduce size of list:
a. geographically limitations
b. patentee limitations

Freedom to Operate
Perform prior art search (continued):
3. Categorize publications of List of Possible Problems
a. highly relevant; moderately relevant; irrelevant
b. Based on: claims as desired (publication) and
description of product
4. Further analysis of highly relevant items:
a. Has patent been granted:
analyse claim as granted vs product
b. If not yet granted:
analyse possible grant of claim

Freedom To Operate
After Search & Analysis:
Monitor relevant applications
Negotiate with owners of possible problematic
patents/applications
Discuss possible Work Around in product
RIM Details BlackBerry Patent Workaround
February 9, 2006
Research in Motion has announced BlackBerry Multi-Mode Edition, its plan to keep BlackBerry
wireless service running in the U.S. even if it loses a patent dispute with NTP.

Questions
www.lovells.com
www.octrooibureau.nl
Bert Oosting
Lovells LLP
Keizersgracht 555
t 020 55 33 600
e bert.oosting@lovells.com
Maarten Ketelaars
Nederlandsch Octrooibureau
Bennekomseweg 43, Ede
t 0318 707005
e ketelaars@octrooibureau.nl