SodaStream v Aarke
SodaStream has successfully enforced patent EP 1 793 917 against Aarke before the Düsseldorf Local Division (LD) at the Unified Patent Court . The decision reaches back over a century to consider the Gillette defense, and is instructive for other bits of UPC practice too.
The original decision is linked at the end of this article, and is appealable.
?? Gillette defense at the UPC
A bit of background: the Gillette defense is a legal doctrine originating from Gillette Safety Razor Co v Anglo-American Trading Co Ltd [1913] RPC 465. Here's Wikipedia's glossary entry:
Gillette defense - A defense in patent litigation. More precisely, this is "the argument in infringement proceedings (...) that the defendant's product implements prior art technology, such that any patent which it infringes must be invalid."
You may prefer the explanation given by Goff LJ in Hickman v Andrews [1983] RPC 14 (CA) - an excellent snippet captured by Dr Peter Groves in A Dictionary of Intellectual Property Law (2011):
If a defendant to an infringement action can show that he has merely developed an existing article other than the patentable article itself with no more than non-patentable changes of size or substitution of mechanical equivalents, then he shows that the alleged infringement is not novel, from which it must follow, without even reading the specification, that the plaintiff is impaled on one or other of the horns of dilemma. Either his invention is also not novel and the patent is invalid, or there is no infringement.
Back to the UPC: how did the Gillette defense fare in its first outing? Not successfully, at least "in the way the Defendant presented it" on this occasion.
[...] the description and the drawings shall be used to interpret the claims. Prior art is not mentioned there. The limitation to the description and the drawings as interpretation material serves the purpose of legal certainty, since the scope of protection can be conclusively determined from the patent itself [...] Therefore, there is no additional room for a Gillette defence understood in the way the Defendant presented it.
?? The patent as its own dictionary
What is a "flask"? The decision goes into the possible meanings at length, but also explores a familiar EPO doctrine regarding how terms are defined in a patent. Here's the EPO's Case Law of the Boards of Appeal, II-A, 6.3.3:
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In several decisions the boards have stated that terms used in patent documents should be given their normal meaning in the relevant art, unless the description gives them a special meaning [...]. According to the established case law, the patent document may be its own dictionary [...]
There's a referral pending at the EPO's Enlarged Board of Appeal on the role of the description in the interpretation of the claims (G 1/24, "Heated aerosol"), so watch this space. But for the time being, the LD in this decision gave a reasonably similar statement:
The description and the drawings may show that the patent specification defines terms independently and in this respect may represent a patent's own lexicon. Therefore, even if the terms used in the patent deviate from common usage, it may therefore be that the meaning of the terms resulting from the patent specification is ultimately authoritative.
?? UPC remedies - not just monetary
SodaStream secured remedies including injunction and interim damages against Aarke, but also availed itself of the UPC's "power to order the communication of information" under Article 67(1) UPCA. Here's the LD's ruling on that, including three specific types of information that SodaStream secured in this decision:
II. The Court orders the Defendant [...] to provide the Claimant with information on the extent to which they have committed the acts referred to in paragraph II.1 since 20 January 2010, stating the following a) the origin and distribution channels of the infringing products, b) the quantities produced, manufactured, delivered, imported, received or ordered and the prices paid for the infringing products; and c) the identity of all third parties involved in the manufacture or distribution of infringing products, manufacturers, suppliers and other previous owners, as well as commercial buyers and sales outlets for which the products were intended [...]
Aarke argued that these requests were punitive and may require it to disclose trade secrets, and asked that this information only be disclosed to certain named persons under the UPC's confidentiality framework. The LD disagreed, arguing that only the presentation of information was requested (not the presentation of documents), and that the fact that this information may involve trade secrets is common in infringement proceedings.
?? Case details and footnotes
#UPC #unifiedpatentcourt #upcnugget #patentlitigation
Any views expressed apply solely to the parts of the decision(s) under discussion. Such views are those of the author(s) at the time of writing, and do not necessarily represent their current views or the views of their employer. This article provides a summary of the subject-matter and should not be acted on without first seeking legal advice.
Intellectual Property Solicitor - Senior Associate at Carpmaels & Ransford
3 周Thanks for sharing John, a sparkling take on the classic infringement/invalidity squeeze (the best a defendant can get?)