Unified Patent Court Insights: Claim Construction

A recent decision from the Düsseldorf Local Division in UPC_CFI_351/2024 provides an interesting look at the Unified Patent Court's (UPC) evolving approach to claim construction and the role of prosecution history. The case, involving a supply container for a printer, highlights a fundamental distinction between the boundaries of a product claim and a system claim.

At the heart of the infringement dispute was the interpretation of the term "mountable". The defendants argued that because the claim described a container "detachably mountable" to a developer receiving apparatus (e.g. a printer), the printer itself—or at least its receiving components—must be present to realize the invention. Under this interpretation, the claim should be understood as a system claim, and a standalone bottle (as sold by the defendants) would not infringe. 

However, the Court reached a different conclusion. It ruled that "mountable" (and similar functional language like "capable of supporting") defines the suitability of the product for its intended use, rather than requiring the presence of the external apparatus. As a result, the claim was interpreted as a product claim for the container alone, and the Court found that the defendants' toner bottles directly infringed the patent as standalone items.