Decision of the Court of First Instance of the Unified Patent Court on infringement by equivalence
The Hague Division of the court of First Instance of UPC issued a ruling (Registry number ACT_549536/2023, date of decision 22 November, 2024) regarding the infringement by equivalence of European Patent EP2137782, which was granted on November 15, 2017.
The invention
The invention relates to a “Microbial Cell Factory.” The cell includes a reactor with an anode compartment and a cathode compartment. The anode compartment contains a living plant and anode-friendly microorganisms that can oxidize organic compounds thus being electron donors, to produce electrical power.
The court examined if there is an infringement of the method claim of the patent. The claim (claim 11) reads as follows:
11. Method for converting light energy into electrical energy and/or hydrogen, wherein a feedstock is introduced into a device that comprises a reactor, where the reactor comprises an anode compartment (2) and a cathode compartment and wherein the anode compartment comprises a) an anodophilic micro- organism capable of oxidizing an electron donor compound, and b) a living plant (7) or part thereof, capable of converting light energy by means of photosynthesis into the electron donor compound, wherein the microorganism lives around the root (8) zone of the plant or part thereof.
The alleged infringement
In 2022, Bioo (the defendant) exhibited a working “Bioo Bench” containing several “Bioo Panels,” and a Dutch company announced that it would bring the Bioo Panel product to the Dutch market. The Bioo Panel data sheet explains how the Bioo Panel works:
“How it works?
Bioo Panel is a biological battery capable of producing electricity by feeding on natural soil and using plants to maintain the ecosystem without damaging it. Bioo Panel is composed of a soil area in the upper part (acting as an extra source of organic matter) and the Microbial Fuel Cell (MFC), located in the lower part. The MFC generates electricity by a Redox reaction happening in the soil of the second layer, between the anode, where the bacteria is fuelled by the organic matter of the soil, and the cathode in contact with the oxygen from the air. The only residue is water.“
More information on the Bioo Panel could be found on Bioo’s website. It is understood that Bioo Panel consists of two layers (parts) assembled into a single device. The anode, which contains the bacteria (microorganisms), as well as the cathode are located in the lower layer of the device, whereas the plants are located in the upper layer.
Literal infringement
The court concluded that Bioo Panel has all features of claim11 except for the feature “… wherein the microorganism lives around the root (8) zone of the plant or part thereof.“, because the bacteria are in the lower layer and the plants are in the upper layer. Thus, there is no literal infringement.
Infringement by equivalence
The court then examined whether Bioo Panel infringes the European patent as an equivalent of the invention. To this end, according to the court, it must be assessed whether the method by which Bioo Panel, which has two layers, operates in an equivalent manner as the method of claim 11, which requires that the plant with its roots and the microorganism are both arranged in the anode compartment.
The court applied a criterion which, according to the decision, is based on the practice of various national jurisdictions. According to this criterion “… a variation is equivalent to an element specified in the claim if the following four questions are answered in the affirmative.“
i. Technical equivalence: does the variation solve (essentially) the same problem that the patented invention solves and performs (essentially) the same function in this context?
The court found that both the invention and the Bioo Panel create an MFC that does not require externally supplied fuel. This is achieved by introducing a living plant into the system as a constant supplier of organic material to the reactor. The decision includes a detailed explanation.
ii. Is extending the protection of the claim to the equivalent proportionate to a fair protection for the patentee: in view of his contribution to the art and is it obvious to the skilled person from the patent publication how to apply the equivalent element (at the time of infringement)?
The court acknowledged that incorporating a plant into an MFC creates a new type of fuel cell. Bioo argued that the claimed method did not work, so they implemented a solution in which the plant was not arranged in the anode compartment to prevent its roots from damaging the anode. However, despite the alleged advantages of the Bioo Panel, the court found that Bioo had applied the teaching of the patent.
iii. Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally?
The court determined that the purpose of the patent is to add a plant to an MFC, thereby making the invention independent of externally supplied raw materials.
iv. Is the allegedly infringing product novel and inventive over the prior art? (i.e. no successful Gillette/Formstein defence)
The court ruled that considering the state of the art on the priority date of the application for which the patent was granted, Bioo Panel was neither known nor obvious.
Discussion
i) To reach that decision, the court considered the skilled person as “… an individual (or a team) with a scientific background (PhD) in biochemistry, electrochemistry, and possibly microbiology or environmental engineering and about 3 to 4 years of working experience in the technical field of microbial fuel cells“. That definition of the skilled person was proposed by the claimant and the defendant did not object to.
ii) From my understanding of the decision, I believe that the court broadened the scope of protection provided by the claim, a) by judging the contribution of the invention to the art to be broader than the teaching of the claim, and b) because it did not consider the feature “the microorganism lives around the root of the plant or part thereof” as essential to the teaching of the invention.
iii) Furthermore, the court did not find any reason not to extend the protection (criterion iii)). In my opinion the drafting of the description is of importance when addressing criterion iii).
iv) No decision of the Court of Appeal related to the above case has been retrieved until 07 September 2025.
