Plant-e Knowledge B.V. and Plant-e B.V. v. Arkyne Technologies S.L.

This case before the Court of First Instance of the Unified Patent Court, Local Division The Hague (case number UPC_CFI_239/2023), concerned European Patent EP 2 137 782 ('EP 782'), entitled 'Device and Method for Converting Light Energy into Electrical Energy.' The patent was granted on 15 November 2024 (actually 15 November 2017) upon an international application filed on 17 April 2008, claiming priority from a Dutch national application of 17 April 2007. No opposition was filed, and the patent was in force in the Netherlands, Belgium, Luxembourg, Germany, France, and Italy.

Claimant 1, Plant-e Knowledge B.V., is the proprietor of the patent, and Claimant 2, Plant-e B.V., is its licensee. Plant-e is a Dutch start-up founded in 2009 as a spin-off from Wageningen University that develops and sells products converting light energy into electricity using living plants. The Defendant, Arkyne Technologies S.L. (referred to as 'Bioo'), is a Spanish start-up established in Barcelona in 2015 that researches, manufactures, and markets products extracting energy from nature using microorganisms in soil. Bioo offered for sale products including the Bioo Ed (educational biofuel cell), Bioo Sensor, Bioo Panel (large biofuel cell with lighting for gardens/parks), and Bioo Bench.

The patent's independent device claim 1 covers a device for converting light energy into electrical energy and/or hydrogen comprising a reactor with an anode compartment containing an anodophilic micro-organism and a living plant, where the root zone of the plant is essentially placed in the anodic material. Independent method claims 11-16 cover corresponding methods.

Plant-e became aware of Bioo's allegedly infringing activities in 2017 when Bioo set up crowdfunding for the Bioo Ed. The parties entered into a non-exclusive licence for the Bioo Ed on 3 August 2018, which was terminated effective 29 March 2019. Plant-e subsequently brought infringement proceedings, and Bioo filed a counterclaim for revocation of the patent.

The court assessed the scope of protection in two steps: first evaluating literal infringement, and then assessing equivalence if literal infringement was not found. The court applied a four-question test for equivalence based on case law from various national jurisdictions as proposed by both parties: (1) Technical equivalence: does the variation solve essentially the same problem and perform essentially the same function? (2) Fair protection for patentee: is extending protection proportionate? (3) Reasonable legal certainty for third parties: does the skilled person understand the scope is broader than literal claims? (4) Is the allegedly infringing product novel and inventive over the prior art?

The court found that the patent was valid and that Bioo's products (Bioo Panel, Bioo Ed, and Bioo Bench) infringed the patent by equivalence. The court rejected Bioo's arguments regarding added matter, sufficiency, and inventive step, finding the patent valid as granted.

The court ordered Bioo to: (I) cease and confirm cessation of infringing activities in the Benelux, France, Germany, and Italy; (II) recall infringing products from the market; (III) provide information regarding infringing products and third parties involved; (IV) place a specific corrective notice on its website's homepage for one month; (V) pay penalties of up to EUR 2,000 per infringing product or per day of non-compliance, up to a maximum of EUR 200,000; (VI) compensate Plant-e for damages (to be determined in separate proceedings); (VII) pay provisional damages of EUR 35,000 within three weeks of service; and (VIII) pay the costs of proceedings. The decision was declared immediately and directly enforceable in the Benelux, France, Germany, and Italy without requiring a security payment.