- within Intellectual Property topic(s)
1. Key takeaways
Squeeze of claim interpretation and added matter
Claim interpretation
Principles
The interpretation of a patent claim is a matter of law (Court of Appeal UPC_CoA_405/2024, 19 June 2025 – Alexion/Amgen). Therefore, the Court cannot leave the judicial task of interpreting the patent claim to an expert but must construe the claim independently (Court of Appeal, UPC_CoA_768/2024, Order of 30 April 2025 – Insulet v EOFlow). It is true that the understanding of the person skilled in the art of the terms used in the patent claim in the context of the patent claim as a whole and considering the description and drawings, is the basis for claim construction. But this does not mean that the Court must follow a party's expert´s opinion. The skilled person is a notional entity that cannot be equated with any real person in the technical field of the invention. The decisive factor is not the individual knowledge and abilities of a person, but rather the general specialist knowledge that is customary in the relevant field of technology, as well as the average knowledge, experience, and abilities in this specialist field. It is for the Court, not the expert, to assess these circumstances (Court of Appeal, UPC_CoA_768/2024, Order of 30 April 2025 – Insulet v EOFlow).
Case at hand
Contrary to the Claimant, the Court is of the opinion that, in the case at issue, a claimed normalization step (feature/step 3) is carried out with a single reference (here: reference gene). Even if a further step involving a further reference gene may not be excluded by claim 1 ("comprising" language"), the endogenous reference gene of step 2) as referenced in step 3) would remain the same. In this context, the Court heavily relied on common technical knowledge about the use of reference genes and problems surrounding the use of several reference genes, which problems were not solved by the patent's description. In addition, the Court also relied on on grammatical arguments (e.g. the use of the the singular in step 3 of the claim).
Added matter
The application as filed also does not clearly and unambiguously disclose that there is only one reference gene for the normalizing step, thus not disclosing what is claimed according to the Court's claim interpretation.
Importantly, the Court stipulated that the disclosure of a feature as such is not sufficient. Rather, it is necessary that it be directly and unambiguously disclosed as belonging to the invention. This was not apparent in the case at issue.
2. Division
LD Munich
3. UPC number
UPC_CFI_437/2024
UPC_CFI_681/2024
4. Type of proceedings
Infringement action and Counterclaim for revocation
5. Parties
Claimant:
GXD-Bio Corporation
Defendants:
Myriad International GmbH
Myriad GmbH
Myriad Service GmbH
Myriad Genetics GmbH
Myriad Genetics S.A.S.
Myriad Genetics B.V.
Myriad Genetics S.r.l.
Myriad Genetics Inc.
Eurobio Scientific
6. Patent(s)
EP 3 346 403
7. Jurisdictions
Austria, Belgium, Germany, France, Italy, Luxembourg, the Netherlands,
8. Body of legislation / Rules
Art. 65(2) UPCA, 61, 69 (1), 138(1)(c) EPC
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.
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