SEPs at the UPC and can “yes or no” mean just “yes”

The Unified Patent Court ‘UPC’ has issued its first ever decision on a SEP related matter. On 13 September 2024 the Munich Local Division (LD) issued a decision (in German) in favour of the patent holder Philips against infringer Belkin. The patent was a ‘Standard Essential Patent’ (SEP) relating to an inductive (wireless) power transmitter, as set out in the wireless charging standard known as “Qi”. An injunction was granted against Belkin and costs were awarded to Philips.  

The granting of an injunction gives a clear message that the UPC will grant an injunction even if the patent is a SEP, although the decision does not discuss the issue of a FRAND defence (usually run in SEP infringement cases). So this case did not address a prime consideration of most SEP cases – can a defendant before the UPC adopt a FRAND defence to avoid an injunction?

The case focussed on claim construction, with the court adopting an approach similar to that set out in the ‘Protocol to Art 69 EPC’, that the claims are to be construed in light of the description. The court decided that the implementation in question was described in the patent and also met “the objective of the patent-in-suit”. 

The LD did not stay the UPC proceedings in favour of national German proceedings.  

Claim construction 

Issue for the court

The independent claims include the feature of the power transmitter sending an acknowledgement, “the acknowledgement being indicative of an accept or rejection of the request to enter the requested negotiation phase” (identified as claim feature 20.6.1). 

The court had to consider whether power transmitters that always confirm requirements for entering a required negotiation phase with an acceptance (and do not send a rejection) fell within the scope of the independent claims. The patentee argued that they did; Belkin argued they did not. 

The court considered whether: 

1. the description of the patent in suit also describes a situation in which a declaration of acceptance is always sent to the power receiver as confirmation of the power transmitter’s response to a corresponding request and 
2. if so, whether this falls within the wording of the claim. 

Court’s decision

The court considered that the patent met condition (a) by the implementation described in paragraph [0046] and that this implementation also met “the objective of the patent-in-suit, namely to create the possibility of carrying out a negotiation phase in accordance with the patent”. 

For condition (b), when construing the claim, the court adopted an approach similar to that set out in the ‘Protocol to Art 69 EPC’, that the claims are to be construed in light of the description. “The skilled person reads the claim in a way that makes technical sense and takes into account the entire disclosure of the patent. Claims are read with a willingness to understand them in context”.  

The court stated that “The question now is whether, in view of the objective of the patent and the core of the invention (enabling entry into the negotiation phase in order to achieve a higher charging capacity, for example), a claim-compliant power transmitter must also be able to reject a request, or whether the wording of feature 20.6 also includes embodiments that always accept requests from power receiver to enter the negotiation phase, i.e. do not provide for rejection.” 

The court held that linguistically the claim “can easily be understood to mean that the answer (acknowledgement) can be either "yes" or "no". That the answer according to the wording of the feature 20.6 must also be able to read "no" is difficult to justify from a purely linguistic point of view”.

The court held that this was also the case from a technical point of view: the patent aimed to enable a negotiation phase. All that was necessary to do this was to send a “yes”. The court stated that “the description gives no indication that such a negative decision by the sender must also be possible in the initiation phase”. The court also stated that that “The essence of the invention is that the power transmitter and the power receiver can, if possible, enter a (bidirectional) negotiation phase in order to (in particular) achieve a higher performance. This goal is even optimally achieved with a power transmitter that always declares itself willing to enter this phase of negotiations.”

The court went on to state “According to the defendant's interpretation, such an embodiment would be excluded from patent protection and could be used without any consideration. This is not adequate protection in the sense of the interpretative protocol, especially since it is clear from the description that entering this…