Originally posted on IPKat.
The recent decision of the UPC Hamburg Local Division in Agfa v Gucci (UPC_CFI_278/2023) is another addition to the case law on claim interpretation and the impact of description definitions. The Local Division found Agfa’s patent for decorating leather valid, yet simultaneously ruled that Gucci’s products did not infringe. The entire case pivoted on the interpretation of the word “achromatic” in view of conflicting description definitions. In contrast to the recent Board of Appeal interpretations of G1/24 finding that description definitions do not override clear claim language, the UPC Local Division found that a narrow description definition should be used to interpret the claims.
Legal background: The patent as its own lexicon
The UPC has been steadily building its jurisprudence on claim interpretation under Article 69 EPC and its Protocol. NanoString v 10x Genomics (UPC_CoA_335/2023) established that whilst the patent claim is the “decisive basis” for determining the scope of protection, the “description and the drawings must always be used as explanatory aids” (Evolve Insights). This principle, echoed in subsequent decisions such as DexCom v Abbott (UPC_CFI_230/2023), established that claim interpretation does not depend solely on the strict, literal meaning of the words used (Evolve Insights). Notably, the order of the Enlarged Board of Appeal in G1/24 on claim interpretation used similar wording to that of the UPC, requiring that the description is always “consulted” for claim interpretation (Evolve Insights).
A fashionable dispute
The case in Agfa v Gucci involved the Belgian technology company Agfa NV and the luxury fashion house Gucci. The case related to Agfa’s patent EP 3388490 claiming a manufacturing method for decorating natural leather. The invention sought to overcome the quality and flexibility issues associated with previous digital printing techniques on leather. The claimed solution involved applying a base coat to crusted leather, where the base coat contained a pigment providing an “achromatic colour different from black, and then inkjet printing a colour image on top.
Agfa alleged that several products from Gucci’s “Pikarar Collection”, a collaboration with illustrator Angela Nguyen, infringed its patent, including the Padlock Gucci animal print mini bag and Rhyton Sneaker with animal print. In response, Gucci filed a counterclaim for the revocation of the patent in its entirety.
Black and white definitions
At the heart of the dispute was the meaning of the feature “achromatic colour different from black” in the claims. As normally understood, achromatic colours are colours that lacks hue and saturation having no discernible tint of any colour of the rainbow, i.e. black, white, and all the shades of grey in between.
Agfa argued for a broad interpretation of the term achromatic colour. Agfa specifically argued that the term should not be limited to “perfect” achromatic colours but should also encompass base coats with small amounts of chromatic pigments, that may nonetheless appear achromatic to the naked eye including off-white or ivory white. To support this broader interpretation, Agfa pointed to two sections of the patent’s description, including a paragraph explicitly describing an embodiment where the base coat contained both achromatic and chromatic pigments to create an “off-white or a pale clay colour”, and an example describing a base coat that was “pale yellow”.
By contrast, Gucci argued for a stricter and technical interpretation of achromatic based on an explicit definition provided elsewhere in the patent. The description specifically defined achromatic colour as a colour wherein “all wavelengths are present in approximately equal amounts”.
Leaning heavily on the principle that a patent may be used as its “own lexicon”, the Local Division sided with Gucci. The Local Division in particular considered the explicit and narrowing description definition cited by Gucci as being highly influential. Interestingly, the Local Division also found that other parts of the description, which Agfa had relied upon to argue for a broader meaning, could no longer be considered part of the invention. An embodiment describing an “off-white or pale clay colour” in the description was in particular deemed to have fallen out of the granted claim given that the term “chromatic colour” had been deleted from the claim during prosecution to distinguish the invention from the yellow and blue colours used in the prior art.
The Local Division noted that its interpretation thus created an inconsistency between the description and the claims based on this broader definition. However, for the Local Division, the clear narrower definition provided elsewhere in the description had to prevail for the purposes of claim interpretation. Notably, Headnote 3 to the decision in Agfa v Gucci emphasised that “[s]pecifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim“. In other words, for the Local Division, description definitions may narrow but not broaden the meaning of a term used in the claims.
The Local Division thus concluded that an ivory base coat, despite being “white”, was not within the scope of the patent limited to a narrow definition of achromatic.
Infringement falls out of fashion
With the claim construction settled, the infringement case unravelled for Agfa. The Court found that the attacked Gucci products did not infringe because their base coats were not achromatic. The spectral response data for Gucci’s Pikarar bags, provided by both parties, showed a “clear emphasis in the yellow-red spectrum”. The reflectance values ranged from below 60% in the blue area to over 80% in the orange/red area. For the Local Division, a difference of “20 percentage points cannot be considered approximately equal in the meaning of the patent”. The Court dismissed Agfa’s arguments, concluding that the base coat on Gucci’s products was ivory, a chromatic colour, and therefore did not feature the claimed “achromatic colour”. The infringement action was consequently dismissed.
However, the very reasoning that defeated Agfa’s infringement claim also saved its patent from Gucci’s revocation counterclaim. Gucci’s invalidity attack was based, inter alia, on public prior use of its own “Flora” products, which it argued disclosed all the features of the patent claims. The Local Division was convinced that the Flora products were publicly available before the priority date. However, the invalidity attack failed on the same point of claim construction. The Local Division found that the Flora products, just like the Pikarar collection, comprised a “chromatic, ivory-coloured base coat”. Since the base coat was not achromatic, the Flora products could not be novelty-destroying. The written prior art cited by Gucci also failed to disclose the specific combination of features required by the claims. The patent was therefore found to be valid and the counterclaim for revocation was dismissed.
Final thoughts
When G1/24 was first issued it was hailed by many as an alignment of the UPC and EPO approaches to claim interpretation. However, in Agfa v Gucci, the Local Division explicitly followed the principle of claim interpretation whereby a patent may be used as its “own lexicon”, i.e. referencing the US approach to claim interpretation whereby the patentee may act as their own lexicographer (page 18, paragraph 2; Headnote 2). By contrast, Boards of Appeal applying G1/24 have found that, whilst the description should always be consulted, this does not mean that narrowing description definitions should be imported into the claims (T 1561/23 (Evolve Insights) and T 1999/23 (Evolve Insights)). The Board of Appeal in T 1999/23 found, for example, that “a restrictive definition of a term in the description may not be used to restrict the subject-matter of the claim, which would otherwise appear clearly broader to the skilled person”
We therefore currently have a divergence between the EPO and UPC approaches to description definitions and claim interpretation. It will be interesting to see if the other UPC Local Divisions and Court of Appeal will or will not now follow the Boards of Appeal.
Of course, claim interpretation remains a hot topic at the EPO now that the question of adapting the description to the claims has finally been referred to the Enlarged Board of Appeal in G1/25 (Evolve Insights). The decision of the UPC Local Division Agfa v Gucci is also an interesting addition to this debate. The decision particularly arguably adds weight to the argument that description amendments involving removal of language in the description that is broader than the claims are unnecessary. In this case, the Local Division were able to come up with a clear view on the interpretation of the claims despite inconsistencies between the claims and different parts of the description. For the Local Division, a broad definition in the description that was inconsistent with the claims could simply be ignored as clearly incorrect. On the other hand, the decision did also explicitly state that the offending language “should have been deleted” and has therefore been cited as supporting the need for description amendments (page 23).
Whatever your view, given the emerging divergence in attitudes of the EPO and UPC to narrowing description definitions, applicants may now be even more loath to amend the description pre-grant in view of the potential impact of these amendments on claim interpretation before the UPC.
At Evolve, we are experts in IP strategy. Do you need advice on how to protect your pharma or biotech innovation? We would love to hear from you: Contact us.
Author: Rose Hughes
Further reading
- First substantive decision of the UPC Court of Appeal overturns preliminary injunction in NanoString v 10x Genomics (UPC_CoA_335/2023)
- UPC takes strong stance on therapeutic antibody inventions (Sanofi v Amgen, UPC_CFI_1/2023)
- Board of Appeal back-pedals on referral in view of “unequivocal” lack of legal basis for the description amendment requirement (T 56/21)
- The description of a patent should “always” be used to interpret the claims (DexCom vs. Abbott, UPC_CFI_230/2023)
- Referral on description amendments finally confirmed! (G1/25 – “Hydroponics”)
- First interpretation of G 1/24 (the description must always be consulted) (T 1561/23)
- G 1/24 in the spotlight: Description definitions do not override clear claim language (T 1999/23)
Originally posted on IPKat.
