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Overview · Filed: Jul 12, 2023

UPC_CFI_239/2023

DEVICE AND METHOD FOR CONVERTING LIGHT ENERGY INTO ELECTRICAL ENERGY

InfringementMain Infringement ActionThe Hague LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Plain-English summary

Plant-e brought infringement proceedings against Arkyne Technologies (Bioo) for the Bioo Panel, Bioo Bench, and Bioo Ed products alleged to infringe EP 2137782 covering a bio-electrochemical method using living plants and micro-organisms to convert light energy into electricity. The Hague Local Division, after rejecting Bioo's revocation counterclaim, found infringement by equivalence using a four-question test drawn from national case law. The court ordered an immediate injunction across Benelux, France, Germany, and Italy, product recall with specific customer communication text, damages, and a website publication.

Accepted arguments
What the court agreed with — by party.

  • Infringement of EP 2137782 by equivalence through supply of Bioo Panels, Bioo Benches and Bioo Ed products

    ClaimantLegal basis: Art. 69 EPC and Protocol on Interpretation; Art. 64 UPCA

    Note: Court applied a four-question equivalence test derived from national jurisdictions and found all four questions answered in the affirmative.

  • Patent EP 2137782 is valid; counterclaim for revocation should be rejected

    ClaimantLegal basis: Art. 65 UPCA

    Note: Court upheld validity and dismissed the revocation counterclaim in full.

  • Court has power to order specific wording of customer recall letter and website publication

    ClaimantLegal basis: Art. 64 UPCA; Union law

    Note: Court ordered specific texts for recall letter to professional customers and a homepage notice for one month.

Rejected arguments
What the court did not agree with — and why.

  • Bioo products do not literally infringe claim 11 of EP 2137782

    RespondentLegal basis: Art. 69 EPC and Protocol

    Reason: While literal infringement was not found, the court found infringement by equivalence under the four-part test; the variation performed the same function solving the same problem.

  • Counterclaim for revocation of EP 2137782

    RespondentLegal basis: Art. 65(2) UPCA

    Reason: Revocation counterclaim rejected in its entirety; patent found valid.

  • Bioo Ed and other products are not essential components for the patented method

    RespondentLegal basis: Art. 64 UPCA (indirect infringement)

    Reason: Court ruled that the Infringing Products each constitute an essential component for application of method claim 11.

Key legal principles
Doctrines and rules cited in the reasoning.
Two-step infringement analysis: first literal infringement under Art. 69 EPC, then equivalence if literal infringement not foundEquivalence test (four questions): (1) technical equivalence solving same problem; (2) fair protection for patentee; (3) reasonable legal certainty for third parties; (4) alleged infringing product must be novel and inventive over prior artCourt may order specific text of customer recall letters and website publications under Art. 64 UPCA and Union lawIndirect infringement through supply of essential components under Art. 64 UPCA

Browse other cases on this principle.

Claim construction notes

The court conducted a two-step analysis: first assessed literal compliance of Bioo products with claim 11 of EP 2137782 (a method for converting light energy into electrical energy using a bio-electrochemical device incorporating living plants), finding no literal infringement; then applied the four-part equivalence test concluding infringement by equivalence.