ARTICLE
6 November 2024

LD Duesseldorf, October 31, 2024, Decision, UPC_CFI_373/2023

BP
Bardehle Pagenberg

Contributor

BARDEHLE PAGENBERG combines the expertise of attorneys-at-law and patent attorneys. As one of the largest IP firms in Europe, BARDEHLE PAGENBERG advises in all fields of Intellectual Property, including all procedures before the patent and trademark offices as well as litigation before the courts through all instances.
The claim must not be limited to the scope of preferred embodiments. The scope of a claim extends to subject-matter that the skilled person understands...
Germany Intellectual Property

1. Key takeaways

Preferred Embodiments Not Limiting for Claims

The claim must not be limited to the scope of preferred embodiments. The scope of a claim extends to subject-matter that the skilled person understands as the patentee's claim after interpretation using the description and drawings. A claim interpretation which is supported by the description and drawings as a whole is generally not limited by a drawing showing only a specific shape of a component.

Relevance of Prior Art for Claim Construction

Pursuant to Art. 69(1) S. 1 EPC, the extent of the protection conferred by a European Patent shall be determined by the claims. It is therefore the claim that defines the outer limit of the scope of protection. Nevertheless, the description and the drawings shall be used to interpret the claims. Prior art is not mentioned there. The limitation to the description and the drawings as interpretation material serves the purpose of legal certainty, since the scope of protection can be conclusively determined from the patent itself. This does not mean that prior art is irrelevant to the definition of the scope of the patent and thus to claim construction. If this prior art is discussed in the description of the patent in suit, the relevant considerations must be taken into account. If the patent distinguishes itself from the prior art in a particular way, an interpretation that negates that distinction must be avoided.

Publication of Decision Pursuant to Art. 80 UPCA Only Under Special Circumstances

The right of publication includes a further element of punishment. Publication should therefore only be granted if the protection of the Claimant is not provided effectively and sufficiently ensured by other measures ordered.

2. Division

LD Duesseldorf

3. UPC number

UPC_CFI_373/2023, ACT_580849/2023, ORD_598499/2023

4. Type of proceedings

Infringement proceedings (proceedings on the merits)

5. Parties

Claimant: SodaStream Industries Ltd.

Defendant: Aarke AB

6. Patent(s)

EP 1 793 917

7. Body of legislation / Rules

Rule 118.8, 152.2, 158 RoP, Art. 25(a), 63, 64, 67, 68, 69, 80, 82 UPCA

To view the full article, click here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Find out more and explore further thought leadership around Intellectual Property Law and Copyright Laws

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More