Literal interpretation of

claims in Scandinavia,
focus on Sweden
Professor Bengt Domeij
Uppsala University, Sweden
Scandinavian patent law
z The Patents Acts of the Scandinavian
Countries were jointly introduced in 1968.
Finland, Sweden, Norway and Denmark,
have subsequently become members of the
European Patent Organization (EPO) and
through case law harmonized their
interpretations of the Patent Acts with case
law from EPO and other EPO-member
countries.
Patent cases in Sweden
z Patent cases have been centralized to
Stockholm District Court, Svea Court of
Appeal and the Swedish Supreme Court.
z The District Court and Court of Appeal have
technically trained members on the bench.
z 40-50 patent cases initiated per year in
Stockholm District Court. On average 12-15
judgements per year, usually with both
infringement and invalidity issues. Average
litigation costs of 120.000-300.000 euros.
Starting points for Scandinavian
claim interpretation
z Section 39 in all the Scandinavian Patent Acts
(identical to Art. 69 EPC).
z Scandinavian law maintains that there is distinction
in patent law between the skilled person’s
literal/technical understanding of the claim, and the
additional protection sometimes available to the
patentee under the doctrine of equivalence.
z Usually there is no additional protection available
under the doctrine of equivalence. Courts have
developed a number of circumstances that prevent
an application of the doctrine of equivalencer.
Not Wortlaut (wording) but
Wortsinn (the meaning of the
words), NU 1963:6 s. 186
z ”It is always important to remember that the claim is
the embodiment of the invention and that the
description and drawings, if any, are mere aids in
the [claim] interpretation. The whole purpose of the
claim is to create clarity in what the patent protects,
and therefore the protection may never be allowed
to expand to something which cannot reasonably be
seen as the result of an interpretation of the claim.
This, however, does not prescribe a mere literal
interpretation of the claims, but it does require that a
patent holder is not given a chance to profit from
unclear claims.”
Same interpretation in different
contexts
z Necessarily the same claim interpretation in
invalidity and in infringement cases.
z If a patent holder argues for a narrow
interpretation in an invalidity case, the same
understanding must be applied in a parallell
infringement case.
Characteristic Swedish claim
interpretation, Stockholm District
Court, T 6579-03 of 23 June 2004
z ”The District Court will next determine if the defendant’s
disc-element is perforated in the sense of feature g) of
the claim in suit. The term ’perforated’ carries in ordinary
language the meaning that the material has originally
been devoid of holes, and thereafter been subjected to a
process for making holes. This understanding of the term
’perforated’ agrees with how the term is used in the
patent, where it is stated that the disc-elements can be
manufactured through punching, etching, laser cutting,
etc. [p. 9 lines 22-26 in the description]. The defendant’s
product, on the other hand, uses a woven metal net. This
net cannot in the view of the District court be considered
’perforated’ in the sense of the patent claim.”
z No infringement (there was no scope for equivalence)
Presumed coherent use of
technical terminology in a patent
z Terms have the same meaning in the claims and in
the description.
z A dependent claim is presumed to have a more
narrow scope of protection than an independent
claim. Added features are presumed to limit the
protection.
z This may also entail that the independent claim is
broader than otherwise would be the case. If a
dependent claim has an additional feature, this
feature is not seen as necessary in the independent
claim.
Use of description
z The description is important if two interpretations of
the claims are possible. This is true even if,
occasionally, something is described as essential in
the description. It is nevertheless not a limitation
(unless recited in the claim).
z The general, first, part of the descripton is more
useful for claim interpretation than the specific
examples in the second part of the description and
any drawings.
z The summary is never used in the interpretation.
Use of foreign patents for the
same invention
z Foreign parallel patents for the same
invention may sometimes be used. In the
Norwegian Supreme Court, the Lift-Up case
(Rt 1997 p. 1749), decided before Norway
joined the EPO, the EPO patent was used to
interpret the Norwegian patent. However, this
must be done with considerable care,
because it is not sure that the patents are
intended to have the same scope of
protection.
Literal interpretation based
preferably on technical
dictionaries or standards
z Swedish Supreme Court, NJA 2000 s. 497: The
claim feature was ”SIM-card”, i.e. Subscriber Identity
Module. According to the GSM standard in force, a
SIM-card was one physical unit, not two units as in
the defendant’s product.
z The Swedish Supreme Court held that if a disputed
claim feature is defined in a technical standard,
there is a presumtion that the feature has this
meaning.
z A clear intention on the part of the patentee, as
evidenced by the description or in a subordinate
claims, is needed in order to give the feature a
meaning different than the one in the standard.
z Technical dictionaries are sometimes referred to.
Description and literal
interpretation, Swedish Supreme
Court, NJA 2000 s. 497
z The Supreme Court also noted that the
description only exemplified SIM-cards made
of one physical unit.
z If examples with two units had been
described the outcome would presumably
have been different. The description would
probably have been considered more
important than the GSM-standard.
Purpose and literal interpretation
Swedish Supreme Court,
NJA 2000 s. 497
z The Supreme Court held that the main
purpose for the invention, as stated in the
description (subscriber’s can debit calls to
different telephone bills), did not exist in the
infringing product. The analysis of the
purpose behind the invention was important
both for the literal understanding of the claim
as well as under the doctrine of equivalence.
Claim interpretation closely
relate to inventive step
z Norwegian Supreme Court, Window frame-case (Rt
1964 p. 1195): ”due to the relatively low level of
inventive step, there is no reason to give the claims
a broad interpretation”.
z A relationship between the breadth of the claim
interpretation (both literally and under the doctrine of
equivalence) and the amount of technical progress
is also firmly established in Swedish case law.
z It is generally believed in Scandianvian patent law
that the fair remuneration mentioned in the protocol
to art. 69 EPC indicates that claims to important
inventions are to be interpreted more broadly,
literally and/or under the doctrine of equivalence.
The Helsinki Court of Appeals’,
Waste container case, 19 November
1998, Molok Oy / Keski-Liikala.
z ”… refuse sack being emptied through the bottom …”
Simple solution, narrow claim interpretation.
Known but not claimed,
Stockholm District Court FMT vs
Safegate T- 7-552-95, T 7-824-95
z Method for parking airplanes in airports. Claim
feature ”microwaves”/radar. Infringing method used
laser.
z Stockholm District Court held that on the application
day laser was a known technology, and it was
therefore legitimate in the claim interpretation to
consider why the alternative laser had not been
included by the applicant. The Court held that it was
most likely that laser had been intentionally omitted,
and therefore the claim interpretation was not to
encompass a solution using laser.
Reverse doctrine of
equivalence?
z No recognized reverse doctrine of equivalence in
Scandinavia. Mere reproduction of the claim wording
is enough for a finding of infringement.
z However, an act literally within the terms of the
claims, but which only amounts to use in a trifling
respect, can be disregarded. One motivation for this
is that an invention, conceptually, always must be a
solution to a technical problem. If the technology is
not use purposfully, the invention is not used.
Reverse doctrine of
equivalence?
z The Swedish Svea Court of Appeal (case T
317/91 of 1993-06-11) held that a temporary
operational disturbance which make a
manufacturing plant operate according to a
patented process for a short time period,
should be disregarded in an infringement
case. No purposeful use.
Point in time for skilled person
to interpret claim features
z In invalidity case it is clear that the filing/priority date
determins the literal claim interpretation.
z In infringement situations the date for claim
interpretation is uncertain, but it is argued in the
literature (Finnish professor Godenhielm) that the
starting point is the understanding of the claim on
the application/priority date, but later-arising
technology may also fall within the claim if the skills
available on the application day would have sufficed
to understand that the later alternative, if it had been
presented to him/her, would also be suitable.
Patent on the infringing
product, of no significance
z Danish Supreme Court case 505/2005 of 27
March 2009, Danske Elektrolyse v. Guldager.
z ”The defendant’s patent on the accussed
product, and the alleged improvements, are
of no significance for the interpretation of the
claims in the claimant’s patent.”
File wrapper estoppel
z Patentee’s interpretations or claim limitations during
prosecution, create file wrapper estoppel in
Scandinavia.
z NU 1963:6 s. 186: ”Documents from the application
process may be of importance in the claim
interpretation. Has the applicant in writing or in an
oral proceeding e.g. interpreted the claim restrictivly
or emphasized differences between the claim and
the prior art, it is reasonable to use this information
in a later infringement case.”
File wrapper estoppel, NJA
2002 s. 660 (NIR 2003 s. 181).
z The Swedish Supreme Court held that documents in the
application file may: ”be used to interpret vague
terminology in the claims or in the description, if it leads
to a limitation on the scope of protection”.
z In the same case Svea Court of Appeal (Ö 4949-02,
2002-06-17) held that it was important that the claims in
suit stated that the disintegrants in the pharmaceutical
formulations ”were” natriumstarchglycolat, polymeric
derivatives of acrylic acid or crospovidon, while the first
filing stated that these three were merely ”suitable”
disintegrants. The exclusion of the word ”suitable”
indicated that the claim did not protect a further
disintegrant (crosscaramellose).
Conclusions
z Literal/technical interpretation in the context,
is almost always decisive. Very seldom scope
for the doctrine of equivalence.
z Possibly Scandinavian law differs from other
EPO-countries, in that the inventive step of
the patented invention is seen as important in
the claim interpretation.
z Scandinavian law is perhaps also different in
that the doctrine of file wrapper estoppel is
alive and well. The file is easily accessibel.