Tesla demolishes Avago in two UPC cases

Late August 2024 saw two UPC cases decided in Avago’s patent litigation battles with Tesla, with Tesla coming out in front in each case. In the first decision, by the UPC Local Division Hamburg, Avago’s patent EP1612910B1 was narrowed to such an extent that there was no infringement of the amended patent Tesla Model Y. In the second case, the UPC Local Division Munich revoked Avago’s patent EP1838002B1.

Functional claim interpretation – when warranted by the description

In each case, the UPC Local Division referred to the UPC Court of Appeal decision in the NanoString/10X Genomics case when considering claim interpretation – summed up as the claims must always be interpreted using the description and drawings.

When considering how to interpret the terms “power supply circuit,” “integrated circuit,” and “third electrical device” in claim one of EP 1612910 B1, the Hamburg Local Division looked to the description to decide whether these terms should be interpreted functionally, or whether there are any spatial-physical requirements for these features. In their view, the description did not imply such spatial-physical requirements. As a consequence, these terms were interpreted purely functionally, giving the terms their broadest possible meaning. In our view, the European Patent Office (EPO) would likely interpret these terms in the same way.

How are lists of features interpreted? 

The Munich Local Division needed to interpret the following feature in the claims of EP 1838002 B1: “to convert the outbound data into at least one of a normalized complex signal, offset information, and transmit property information when the programmable hybrid transmitted is in a second mode” (emphasis added).

They considered that based purely on the wording of the claim alone this should be interpreted as: “at least one of A, and at least one of B, and at least one of C”, meaning that the elements are to be understood cumulatively such that all three elements are required by the claim.  The notional features A, B, and C are the features in bold text in the list. 

The court emphasized that the embodiments in the description supported their interpretation. In their view, the patent consistently required the outbound data to be converted into all three elements in the second mode, and as such, this reinforced the interpretation that all three elements are required by the claim. 

Although perhaps not unexpected in context, this reading of what is, in effect, a Markush grouping would be totally unexpected in other technical areas. A normal Markush grouping would have been interpreted as requiring A, B, or C.  

This decision really emphasizes how much weight the UPC is putting on disclosures in the description when interpreting the claims.  

Is prosecution history relevant for the interpretation of the claim?

The Hamburg Local Division was completely unwilling to engage with this question, saying that in this case “it does not matter under what conditions and to what extend the grant history is relevant for the interpretation of the claim before the UPC.”

At issue was whether the deletion of the following sentence from the description should affect the interpretation of the claim: “Accordingly, the scope of various aspects of the present invention should not be limited by characteristics of a particular location or level of integration for the electrical device 630.”

While the deletion of this sentence did not change the court’s view on the relevant interpretation of the claim in this case, it does not seem that the court intended to make a more general proclamation that the prosecution history can never be relevant to claim interpretation. The UPC Court of Appeal has also notably avoided this issue, and so we are waiting for further UPC guidance on this.

UPC approach to “partial invalidity”

In EPO opposition, a set of claims must be entirely valid in order for the patent to be maintained in amended form.  Otherwise, the patent will be revoked. 

At the Hamburg Local Division, Auxiliary Request 1 included two independent claims. Independent claim three was invalid, but amended independent claim one was valid. The Hamburg Local Division decided that this did not mean that the patent had to be revoked in its entirety. The proprietor (Avago) did not even need an auxiliary request on file deleting the invalid claim three to maintain the patent in amended form.  

The divergence of practice between the UPC and EPO emphasizes that the purpose of the UPC is to resolve disputes between opposing parties, and the court is showing a willingness to provide procedural flexibility to get to the right result efficiently. 

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