T 1628/21 - Claim interpretation

Key points

• "The question ... arises as to the extent to which the description and drawings can be used to interpret the claims. Neither Article 69 nor its Protocol explicitly addresses this topic. Nevertheless, the principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result. Similarly, the principle, established by case law, according to which "limiting features which are only present in the description and not in the claim cannot be read into a patent claim" is also fully compatible with Article 69 EPC and Article 1 of the Protocol (cf. T 1473/19, Reasons 3.16.1)."
• "the description itself is of course not without any function when considering the patent. When referring to the description, the reader is informed inter alia of the technology involved and the background used by the skilled person in understanding the patent, as well as prescribing particular embodiments of interest. The claims are thus not to be seen in a pure vacuum, but, having regard to the description, in the context of the area of technology addressed by the patent. Nevertheless the description should not normally be used to derive possible limitations to claim scope; it is the purpose of the claims and indeed the wording of the claims themselves which define a certain scope and thus the protection sought. It may be that the reader is presented with specific definitions in the description in cases where terminology in the claims is e.g. unusual or where special meanings are attributed. However such definitions, if relevant for validity, should normally be included in the claims, for example where the normal meaning of a term in the claim is no longer intended."
• "How such a definition might be presented in the description and whether it might have a special significance for the scope of the claim in a particular case, is however of no relevance in the case at hand since there is no such definition of "engaged with" in the description. Instead, in the paragraphs mentioned by the respondent, the references are far more general."
• "as discussed during oral proceedings before the Board, none of the passages of the description forms a definition of what "engaged with" must be understood to mean. Instead, the respondent [proprietor] attempts to rely on these "disclaimer-like" statements in the description to try to limit the claims, without however introducing any restricting definition or disclaimer into the claims themselves."
• Claim 1 at issue is held to be not novel.
• The case is remitted for auxiliary request 1. 
• "Although the Board notes that the patent expires in 2028 at the latest, this fact is not of itself a sufficient reason to override the parties' requests in the present case, noting that possibilities for requesting accelerated prosecution exist. Issues concerning the format of the claim, currently in an (incorrect) two-part form, may also be addressed by the parties."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t211628eu1

1. Main request

1.1 Interpretation of claim 1

1.1.1 The issue of contention between the parties regarding interpretation of claim 1 related to how the expression 'engaged with' in feature 2 was to be interpreted.

1.1.2 As a fundamental starting point, the Board sees that a claim should be interpreted as broadly as technically reasonable in the relevant art, in the present case the field of articles of apparel made of textiles/fabrics. With this background, the Board regards the expression 'engaged with' as broad in the sense that it includes both:

- the lower back position feedback system being an element separate from and attached to the garment structure; and

- the lower back position feedback system being integrally incorporated into the garment structure.

1.1.3 The second interpretation above entails the garment structure being of one piece with the lower back feedback system. The Board can see no reason why the integral incorporation of the lower back feedback system into the garment structure would be a technically unreasonable interpretation of feature 2 of claim 1, i.e. why it should not mean that the lower back feedback system is 'engaged with' the garment structure. Contrary to the respondent's opinion, this is not seen to extend the 'normal reading' of the expression 'engaged with'.

1.1.4 As to the respondent's contention that the claimed article of apparel necessarily included both a garment structure as a shirt and a lower back position feedback system, also the second interpretation of claim 1 above, in which the feedback system is integrally incorporated into the garment structure, satisfies this requirement. Even when integrally incorporated into the garment structure, the lower back position feedback system is identifiable as such. This is because it is structured so as to exhibit a higher compressive force application capability than the fabric element making up a largest proportion of the garment structure (see features 2.1 and 2.2 of claim 1). It is thus inherently the case that the lower back position feedback system would still be identifiable when considering the second interpretation of claim 1. In A9 paragraph [0020] it will be observed that the stretchable material, of which the entire shirt is made, is referred to as having "sections" with a strong contracting force and a "section" with a low contracting force. It is also noted that, contrary to the respondent's allegation, even with the feedback system integrally incorporated into the garment structure, the garment structure as a shirt is still present and recognisable as such (i.e. when considering the form of the garment of A9 without the high contractibility areas).

1.1.5 In further support of its contention in this regard, the respondent referred to the grammatical structure of the claim in which a semi-colon clearly separated features which were comprised in the article of apparel. Whilst this may be one possible reading of the claim wording, this is not the sole reading. Immediately following the semi-colon, the characterising portion of the claim is introduced with the wording 'and characterised by', which can be understood as introducing further limitations to the garment structure comprised in the article of apparel, rather than defining a necessarily "separate" further component. Had the claim been intended to define an article of apparel comprising a garment structure and, additionally, a lower back position feedback system as a separate, non-integrally incorporated element, this could have been unambiguously achieved in the claim with more specific definition of the relationship between these features. Consequently, claim 1 as drafted includes the interpretation that the lower back position feedback system can be an identifiable portion of the garment structure, and thus a structure which can be engaged with the garment structure by being integrally or otherwise incorporated therein.

1.1.6 As to a requirement for the lower back position feedback system to be a separate item from the garment structure with which it is engaged, this is not defined in claim 1. The word 'engaged' does not imply, at least in the context of claim 1, that the two engaged elements must be separate items. It can be accepted that both elements must be identifiable in the article of apparel since they are individually defined with respect to one another, but this is the case also in the second interpretation discussed above and as reasoned in point 1.1.4. The respondent's argument that the claim required the article of apparel to have both a shirt which covered and provided a close fit to at least the lower back portion of a human torso, and a separate lower back position feedback system which was engaged with the shirt is therefore not accepted. Both parties' references to dictionary definitions of the verb 'to engage' in various contexts are also not decisive for how the verb should be understood in the context of articles of apparel made of textiles/fabric. A piece of fabric 'engaged with' another piece of fabric is satisfied both by one being placed on the surface of the other and being bonded together (e.g. stitched or even adhered) as well as their being 'engaged with' each other in the sense of both sections together forming a continuous area of fabric material.

1.1.7 Whilst the expression 'engaged with' in claim 1 is viewed to be broad enough to cover both of the interpretations mentioned above, the Board does not find the expression to be unclear in its context. Consequently there is no need to refer to the description in order to interpret the scope of the claim. This was in fact confirmed by the decisions cited by the respondent in this context (T 881/01, T 58/13 and T 299/09) in which limitations to a claim's interpretation could not be derived from the description. This is also well established case law of the Boards of Appeal, see inter alia T 223/05, T1404/05 and T 1127/16 in which it was held that a technically skilled reader does not normally need any further description-based guidance on claim interpretation, these essentially being read and interpreted on their own merits.

1.1.8 The respondent argued further that Article 69 EPC should be used to interpret the meaning of the claim, at least in the general sense which had been referred to in UK case law, with regard to Lord Hoffmann's 2004 judgement in Kirin-Amgen. Although no further details were given by the respondent about the exact case or principles referred to, upon questioning by the Chairman this was confirmed by the respondent to essentially be a reference to an approach in UK patent court decisions, according to which the wording of a claim should be understood to mean what the author intended it to mean. Transposing this to the present case, the respondent argued that "engaged with" should be seen to be something distinct from garment structures where one section was integrally incorporated into another. It also argued that several paragraphs of the description used the "engaged with" wording only in relation to separate material pieces being attached to one another rather than being otherwise incorporated.

1.1.9 It should be noted at the outset that the Board does not consider it necessary in the present case to analyse in extenso the question, controversially discussed in the case law (cf. Case Law of the Boards of Appeal, II.A.6.3.2), of application of Article 69 EPC for the purposes of examining novelty and inventive step in opposition or opposition appeal proceedings. According to the respondent's line of argument, an application of Article 69 EPC would lead to the term "engaged with" being restrictively interpreted in the sense of certain passages of the description. However, this does not hold true in the present case for several reasons, so that the question of application of Article 69 EPC is not decisive.

1.1.10 Firstly, consideration of the passages of the description referred to by the respondent would not lead to its restrictive interpretation of the phrase "engaged with" (cf. points 1.1.17 to 1.1.22 below).

1.1.11 Secondly, the respondent's argument implies that an interpretation would only fulfil the requirements of Article 69 EPC if the passages of the description cited by it were used to interpret the term "engaged with" in a restrictive manner. However, the Board cannot agree with this view for the following reasons.

1.1.12 The fact that the EPC is based on the principle of primacy of the claims in the determination of the scope of protection is clear from the first sentence of Article 69 EPC ("The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims."; cf. also T 1473/19, Reasons 3.16.1). However, as mentioned in the second sentence of this provision, "the description and drawings shall be used to interpret the claims".

1.1.13 In this context, however, it should be emphasised that, according to Article 69 EPC, the claims and the description, including the drawings, do not have the same status. As mentioned in Article 1 of the Protocol to Article 69 EPC, under the principle of primacy of the patent claims, two "polar" models of interpretation are in principle possible, i.e. an isolated interpretation of the wording of the claims alone on the one hand and an interpretation which understands the wording of the claims merely as a starting point in the context of the overall disclosure on the other.

1.1.14 The established case law of the Boards of Appeal does not favour either of these "polar" models of interpretation, but something lying between these poles. In decision G 2/88, Reasons 4, the Enlarged Board of Appeal already stated that the "object of the Protocol is clearly to avoid too much emphasis on the literal wording of the claims when considered in isolation from the remainder of the text of the patent in which they appear; and also to avoid too much emphasis upon the general inventive concept disclosed in the text of the patent as compared to the relevant prior art, without sufficient regard also to the wording of the claims as a means of definition."

1.1.15 The Board wishes to note that - in line with established case law - it also sees no reason to avoid using a course between the two poles of interpretation of the claim in the present case. The interpretation of the disputed word sequence "engaged with" is not a matter of an isolated interpretation of only the wording of the claim in the sense of a purely linguistic consideration of the same, rather the feature must be interpreted in the light of general knowledge of the person skilled in the technical field concerned. This first requires an identification of the technical field resulting from the overall disclosure of the patent in order to determine the person skilled in that specific field. Furthermore, the general knowledge of the skilled person ensures that the technical context in which the claims are situated is taken into account when interpreting the claims (see also T 1646/12, Reasons 2.1).

1.1.16 The question then arises as to the extent to which the description and drawings can be used to interpret the claims. Neither Article 69 nor its Protocol explicitly addresses this topic. Nevertheless, the principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result. Similarly, the principle, established by case law, according to which "limiting features which are only present in the description and not in the claim cannot be read into a patent claim" is also fully compatible with Article 69 EPC and Article 1 of the Protocol (cf. T 1473/19, Reasons 3.16.1).

1.1.17 As stated above, the Board finds that there is no reason, when reading claim 1 and interpreting it in relation to the field of technology with which it is concerned, for the skilled person to exclude other equally technically sensible and credible meanings of the claim, particularly in the field of textiles where it is known that sections of material can be separately added, produced, or otherwise incorporated into articles of apparel. Further, claim 1 is a product claim, not a method, and nothing in the claim defines two temporally pre-existing components which must later be joined together (see e.g. points 1.1.5 and 1.1.6 above). It is merely required that these defined structures are identifiable.

1.1.18 That said, in regard to point 1.1.15 above, the description itself is of course not without any function when considering the patent. When referring to the description, the reader is informed inter alia of the technology involved and the background used by the skilled person in understanding the patent, as well as prescribing particular embodiments of interest. The claims are thus not to be seen in a pure vacuum, but, having regard to the description, in the context of the area of technology addressed by the patent. Nevertheless the description should not normally be used to derive possible limitations to claim scope; it is the purpose of the claims and indeed the wording of the claims themselves which define a certain scope and thus the protection sought. It may be that the reader is presented with specific definitions in the description in cases where terminology in the claims is e.g. unusual or where special meanings are attributed. However such definitions, if relevant for validity, should normally be included in the claims, for example where the normal meaning of a term in the claim is no longer intended.

1.1.19 How such a definition might be presented in the description and whether it might have a special significance for the scope of the claim in a particular case, is however of no relevance in the case at hand since there is no such definition of "engaged with" in the description. Instead, in the paragraphs mentioned by the respondent, the references are far more general. For example, "Section A" of the description, in paragraph [0024] in column 4, lines 54 to 56, starts by referring to "separately engaged ... feedback systems", which are then further described. In paragraph [0028] it is stated that "Body position feedback systems according to examples of this invention may be engaged with the garment structure in any suitable or desired manner...". and "In some more specific examples, the body position feedback system will include at least one surface that directly engages a surface of the garment structure..". Thus, all the examples in this section are related to a "separate" piece of material being used when forming the article, which is, as noted above, not something defined in claim 1.

Turning to "Section B" of the description, examples are given of "integrally formed" systems where certain paragraphs have a type of disclaiming clause, stating that these "do not form part of the present invention" (which clause was added at these junctures after the application was filed and before grant). Examples are given concerning what the author of the description amendments considered to "not form part of the present invention". Likewise in paragraphs [0083 and 0084] also cited by the respondent, the disclaiming clause "do not form part of the present invention" in relation to particular described embodiments was again introduced before grant.

1.1.20 However, as discussed during oral proceedings before the Board, none of the passages of the description forms a definition of what "engaged with" must be understood to mean. Instead, the respondent attempts to rely on these "disclaimer-like" statements in the description to try to limit the claims, without however introducing any restricting definition or disclaimer into the claims themselves.

1.1.21 The appellant in turn cited further paragraphs of the description in rebuttal, arguing that the respondent's reliance on the description was anyway misplaced. For the purposes of this decision however, discussion of these further arguments can be omitted since, as stated above, the claims contain no such restriction and the description (even if it were to be used to assist in interpreting the claims) contains no definition of how "engaged with" is necessarily to be interpreted.

1.1.22 Therefore, considering all the above points, the Board finds that the expression 'engaged with' in claim 1 encompasses arrangements in which the lower back position feedback system is integrally incorporated into the garment structure.