Decoding a preliminary injunction order of the UPC’s Local Division in Munich: Jurisdiction, Claim Interpretation, and Implications

Is there a file wrapper estoppel at the UPC?

Overview:

The UPC’s Local Division in Munich recently rejected a request for preliminary measures in a patent dispute. SES-imagotag SA, the applicant, sought to prohibit the alleged infringement of their European Patent (EP) 3 883 277 by Hanshow Technology Co. Ltd and its affiliated entities. SES-imagotag asserted that the defendants were directly infringing EP 3 883 277, a patent for electronic labels used in retail settings.

The patent, granted on August 9, 2023, covers electronic labels with unique identifiers, RF communication modules, memory, display screens, microcontrollers, and RFID/NFC devices.

SES-imagotag filed a request for preliminary measures on September 4, 2023, at the Local Division in Munich (UPC_CFI_292/2023).

The defendants, including Hanshow Technology Co. Ltd and its subsidiaries, challenged the competence of the Munich Division and the merits of the infringement allegations.

Order and grounds of the Munich Division:

1. Jurisdiction of the Munich Local Division

The Munich Local Division is competent to decide on the application for interim measures based on Article 33.1 UPCA. 

The court finds the allegations of patent infringement, as presented in the application, to be sufficient for establishing its jurisdiction. The specific product names, instances of patent infringement, and references to a Munich supermarket support the claim. According to the Munich Division, the legal assessment of the assertion of an action occurring in Germany as patent infringement is not a subject of the jurisdictional examination; in this regard, a plausible presentation (“schlüssiger Vortrag”) is deemed sufficient. The court deems the defendants' objections regarding the timing and sources of information as insufficient to deny jurisdiction.

No Patent Infringement:

The disputed patent involves an electronic label for product and price labeling, addressing limitations in existing electronic label systems.

Claim 1 of the patent outlines the components of the electronic label, including a printed circuit board, and a radiofrequency peripheral device with an antenna and electronic chip. The interpretation of certain claim features is disputed, particularly the spatial arrangement of the printed circuit board with the chip and the antenna. The court is not convinced that the accused products infringe the patent and emphasizes that the original wording of a European patent claim can be utilized, in connection with changes made during the granting procedure, as an interpretative aid.

Costs:

The applicant, as the unsuccessful party, is ordered to bear the costs of the proceedings and other costs incurred by the defendants, including the costs associated with submitting a protective brief.

Our take aways:

• Competence of the Local Division in Munich: It is irrelevant to the question of jurisdiction whether, from a legal perspective evaluated by the court, a patent infringement follows from a plausibly asserted allegation (“schlüssig vorgetragenen Behauptung”). The legal assessment of the assertion of an action occurring in Germany as patent infringement is not a subject of the jurisdictional examination; in this regard, a plausible presentation is deemed sufficient.
• Claim interpretation: The original wording of a claim of an European patent can be utilized, in connection with changes made during the granting procedure, as an interpretative aid.
• Costs: The court ruled that the claimant, as the unsuccessful party, must bear the costs of the legal proceedings, including the costs associated with the submission of protective briefs by the respondents.