Has the UPC just taken its first steps in developing its own doctrine of equivalents?

In a recent decision on the merits issued by the Mannheim Local Division of the UPC (UPC_CFI_471/2023), the Court dismissed an infringement action concerning EP 2479680 as neither a literal nor equivalent infringement of the patent in suit was found. EP 2479680, owned by Dish Technologies LLC, relates to a method of presenting rate-adaptive streams.

In their finding, the Court first considered the position on literal infringement. It was concluded that the method used in the defendants’ streaming services was not found to be directly infringing the claimed method, as distinct differences relating to the encoding of the videos were found to be present in the contested embodiments.

The Court then moved to considering if the variant infringed by making equivalent use of the teaching of the patent in suit. In doing so, the Court provided welcome commentary on the UPC’s position regarding a doctrine of equivalence, stating the following:

 “There is much to suggest that the UPC will have to develop its own doctrine of equivalence for acts that are subject to the substantive law of the UPCA, possibly with recourse to the traditions of the UPC Member States.”

This statement was also underpinned by the fact that the UPC applies its own principles of claim interpretation in cases of literal infringement, and not the principles of interpretation as they apply to the case law of individual UPCA Member States. Additionally, the Court specifically cited a previous finding of infringement by equivalence by the Hague Local Division (UPC_CFI_239/2023), where Dutch case law was applied on agreement by the parties (see our comments here). However, the Court clarified that a single test for determination of infringement by equivalence is required to harmonise the scope of protection of a European patent bundle across UPC Member States.

Somewhat anticlimactically, however, the Court determined that a final decision on this matter was not required in this instance. In particular, the Court issued the following statement:

“All doctrines of equivalence or equivalence tests of UPC Member States rule out equivalent patent infringement if there is no technical-functional equivalence of the substitute means in the sense that the modified means do not fulfil essentially the same function in order to achieve essentially the same effect.”

In the present proceedings, the contested embodiments were not found to satisfy this condition, and the infringement action was accordingly dismissed. Although this decision has only been issued by a Court of First Instance, we await the prospect of an appeal on this finding such that the Court of Appeal may provide some clarity on the UPC’s position on a doctrine of equivalence.