In Appeal Decision APL_64374/2024, dated May 1, 2025, the Court of Appeal of the UPC gave more details on how claim construction should be handled at the UPC.
The matter concerned a fluid delivery device for medical use, which was marketed in Italy by a South Korean company EOFlow. An American company Insulet asserted European Patent with unitary effect EP 4 201 327 against the fluid delivery device marketed by EOFlow.
Insulet requested provisional measures against EOFlow, which were denied by the Milan Local Division, based on an apparent lack of novelty of the subject matter of claim 1 in view of a prior art US’994.
The Court of Appeal was requested to set aside the impugned order, and among various requests, examine whether the apparent lack of novelty was indeed well founded.
In the course of the proceedings, EOFlow provided an expert report, which detailed how the different features of the claims should be construed. On the contrary, Insulet merely produced pleadings drafted by its attorneys, without any expert report per se.
In its arguments, EOFlow stated that only the expert report should be considered by the Court, as the “attorney opinion cannot possibly hold sway in light of the assessment provided by EOFlow´s party expert”.
The Court of Appeal did not receive this argument well. It clearly stated that “interpretation of a patent claim is a matter of law. Therefore, the Court cannot leave the judicial task of interpreting the patent claim to an expert but has to construe the claim independently.”
Regarding the use of experts, the Court asserted “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.”
The Court of Appeal however slightly mitigated its strong assessment by stating “if these circumstances concern facts that can be proven, the Court shall consider the expert opinions submitted by the parties with respect to such facts”.
De facto, the Court of Appeal appears to consider that expert reports are not necessary or compulsory in claim constructions, depending on the case and parties submissions. The UPC Courts should in any case define a claim construction from the patent claims, in view of description and drawings. In accordance with the spirit of the UPC Agreement and Rules of Proceedings, a UPC judge does not necessarily need to be supported by an expert, contrary to patent proceedings in some jurisdictions (e.g. before the UK or US courts).
In any case, in the decision, the Court of Appeal adopts a very precise and rigorous claim interpretation. It provides a claim chart and details the construction of many terms including some that may be considered quite simple, such as “permanent engagement” or even “nut”, in a way that is quite similar to what is done in a Markman Hearing in US Courts.
This confirms that the judges of the UPC should be very keen on technically understanding and defining the scope of protection conferred by patents that will be enforced before the UPC and not just weighing expert reports or pleadings by representatives.
It is likely parties will thus have to rely on multi-professional teams including patent attorneys and attorneys at law to cautiously build the most appropriate claim construction in view of validity and infringement issues raised at the UPC.
Lavoix UPC Representatives remain available at any time to discuss your strategy in potential or ongoing patent proceedings at the UPC.