UPC claim construction: Exemplified embodiment is not restricting

In a decision on the merits handed down by the Paris Central Division of the UPC (UPC_CFI_230/2024), Ballinno’s European patent No. EP 1944067 B1 was revoked. The description of the patent in suit related to a method and system for determining an offside situation in a game of football.

The central point of contention in this decision focussed on the interpretation of the two independent claims, directed respectively to a method and system “for detecting a contact with a ball by a first player in games and sports”. In their interpretation, the panel noted that the claims were not limited in their construction to application in football or offside detection. Thus, although the description of the patent exemplified the method and system in the context of an offside situation in football, the Court held that the generalised wording of the claims took precedence over this exemplified embodiment. The claims were therefore broadly construed such that the method and system were held to encapsulate other games and sports, and were not limited in scope to detecting offside situations.

This opened the patent to attacks through prior art relating to sports other than football, in this case prior art for detecting impact in cricket and other racquet games. On this basis Ballinno’s patent was found to lack novelty. 

In interpreting the claims in this manner, the UPC mirrored the EPO’s general approach to claim interpretation. The appropriateness of this approach is presently being considered by the EPO’s Enlarged Board of Appeal in G 1/24. We expect and keenly anticipate a decision in this matter to issue very soon.