T 0447/22 - Claim interpretation and reverse positions

Key points

• "The present case is one where the understanding of claim 1 as granted has given rise to a considerable discussion between the parties. Since the claim interpretation was of prime importance for the outcome of the case, as it formed the basis for the subsequent findings on added subject-matter and novelty, it seems appropriate to deal with this aspect before turning to any other matter. "
• " In view of above considerations, the steering device of feature c. is construed as an actual physical component of the machining device which is adapted for actively controlling the direction of the machining device in relation to the longitudinal axis of the pipe having a smaller diameter in the pipe system."
• " The patent proprietor argued that a dedicated steering device was not required, since various passages in the description of the patent indicated that the protruding parts, by maintaining the direction of the machining device, already acted as a steering device. The board disagrees for the following reasons."
• Note, typically proprietors advocate a narrower claim interpretation before the EPO. 
• "The board is well aware that the Regional Court of Düsseldorf [in an infringement case about the patent] arrived at a different conclusion in its judgment concerning infringement proceedings 4a O 40/19 based on the patent in suit"
• The Board finds claim 1 to meet Art. 123(2)
• " the board concludes that document D22 discloses all features of claim 1 as granted, the subject-matter of which thus lacks novelty."
• AR-2 is held to be allowable.
• The opponents had argued that: "the broader claim understanding of the Regional Court of Düsseldorf in the parallel infringement cases against the opponents, namely the assumption that the protruding parts could also act as a steering device, would likely result in a finding of infringement despite the fact that the patent had an embodiment which was anticipated by the prior uses "INTEC" and documents BR12 and BR12b. "
• "Whilst it is understandable that opponent 1 deplores that claim 1 of auxiliary request 2, in particular the steering device of feature c., if it were understood in a less restrictive manner, could have resulted in a different assessment of novelty and inventive step, which in turn might affect the way national courts of competent jurisdiction decide on questions of infringement, the board cannot accept the premise that it should re-open the debate and examine the objections of novelty and inventive step anew for a broader claim interpretation, which neither the board nor the opponents endorse, in order to thwart potential findings of infringement negatively affecting the opponents."
  

On claim interpretation

13.1 There is an extensive body of case law of the Boards of Appeal according to which, within certain limits, a claim may be interpreted with the help of the description and the drawings for understanding the subject-matter to be assessed under the requirements of the EPC.

It is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole (see e.g. T 556/02, Reasons 5.3; T 1646/12, Reasons 2.1, T 1817/14, Reasons 7.3, and T 169/20, Reasons 1).

The extent to which description and drawings can provide an aid to interpret the claims is however subject to certain limitations.

A decision often cited in this context is T 190/99, which in point 2.4 of the Reasons states that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent; the patent must be construed by a mind willing to understand not a mind desirous of misunderstanding.

The present board concurs with T 1408/04 (Reasons 1) that this statement must be understood to mean only that technically illogical interpretations should be excluded (see also T 1582/08, Reasons 16, and T 169/20, Reasons 1.3.3). A claim can thus be interpreted in the light of the description and the drawings to the extent that they contain logical and technical sensible information.

Furthermore, interpreting the claims in the light of the description and the drawings does not make it legitimate to read into the claim features appearing only in the description or the drawings and then relying on such features to provide a distinction over the prior art. This would not be to interpret claims but to rewrite them (see T 881/01, Reasons 2.1). In this context, it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording. The preparatory material available on the discussions leading up to the European Patent Convention shows that even in the framework of Article 69 EPC and its Protocol on Interpretation (see for instance Armitage, "Die Auslegung europäischer Patente", in GRUR Int. 1983, 242; Decker in Stauder/Luginbühl, "Europäisches Patentübereinkommen", 9th edition, Art 69, marginal no. 22, with reference to Stauder, "Die Entstehungsgeschichte von Art 69(1) EPÜ und Art 8(3) StraßbÜ über den Schutzbereich des Patents", GRUR Int. 1990, 793, 799), it was never the scope to exclude what on the clear meaning was covered by the terms of the claims. Accordingly, many decisions of the Boards of Appeal have concluded that a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (see, for example, T 431/03, Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14, Reasons 1.5). The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader (T 1018/02, Reasons 3.8; T 1391/15, Reasons 3.5). On a similar note, the board in T 197/10 (Reasons 2.3) held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.

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/t220447eu1

13.1 There is an extensive body of case law of the Boards of Appeal according to which, within certain limits, a claim may be interpreted with the help of the description and the drawings for understanding the subject-matter to be assessed under the requirements of the EPC.

It is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole (see e.g. T 556/02, Reasons 5.3; T 1646/12, Reasons 2.1, T 1817/14, Reasons 7.3, and T 169/20, Reasons 1).

The extent to which description and drawings can provide an aid to interpret the claims is however subject to certain limitations.

A decision often cited in this context is T 190/99, which in point 2.4 of the Reasons states that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent; the patent must be construed by a mind willing to understand not a mind desirous of misunderstanding.

The present board concurs with T 1408/04 (Reasons 1) that this statement must be understood to mean only that technically illogical interpretations should be excluded (see also T 1582/08, Reasons 16, and T 169/20, Reasons 1.3.3). A claim can thus be interpreted in the light of the description and the drawings to the extent that they contain logical and technical sensible information.

Furthermore, interpreting the claims in the light of the description and the drawings does not make it legitimate to read into the claim features appearing only in the description or the drawings and then relying on such features to provide a distinction over the prior art. This would not be to interpret claims but to rewrite them (see T 881/01, Reasons 2.1). In this context, it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording. The preparatory material available on the discussions leading up to the European Patent Convention shows that even in the framework of Article 69 EPC and its Protocol on Interpretation (see for instance Armitage, "Die Auslegung europäischer Patente", in GRUR Int. 1983, 242; Decker in Stauder/Luginbühl, "Europäisches Patentübereinkommen", 9th edition, Art 69, marginal no. 22, with reference to Stauder, "Die Entstehungsgeschichte von Art 69(1) EPÜ und Art 8(3) StraßbÜ über den Schutzbereich des Patents", GRUR Int. 1990, 793, 799), it was never the scope to exclude what on the clear meaning was covered by the terms of the claims. Accordingly, many decisions of the Boards of Appeal have concluded that a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (see, for example, T 431/03, Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14, Reasons 1.5). The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader (T 1018/02, Reasons 3.8; T 1391/15, Reasons 3.5). On a similar note, the board in T 197/10 (Reasons 2.3) held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.