2024-11-29:
The decision by the UPC (Unified Patent Court) Local Division in Düsseldorf in the case UPC_CFI_373/2023, delivered on 31 October 2024 revolves around a patent infringement action concerning the European Patent EP 1 793 917 B1, held by Israel based SodaStream Industries Ltd., against the Swedish company Aarke AB. The patent pertains to a device for carbonating liquids contained in a container using pressurized gas. The decision encompasses several important aspects, including claim interpretation, infringement determination, the applicability of the so-called Gillette-Defense* and the legal consequences of patent infringement.
Most important, the decision confirms the Court of Appeal decision UPC_CoA_335/2023 that the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim. Of course, we are now eager to find out whether or not the European Patent Office will also line up with this in the referral to the Enlarged Board of Appeal G1/24.
Claim Interpretation
The court’s interpretation of the patent claims forms a significant part of the decision. The primary issues revolved around the interpretation of several terms within the patent claims.
1. “Receiving Flask”: The court determined that the term “flask” should not be limited to a bottle-like shape. Instead, it can be any container capable of receiving a liquid container and forming a burst protection in conjunction with the filling head. The court emphasized that the flask, along with the filling head and locking means, contributes to burst pro¬tection by forming a substantially closed cavity.
2. “Movable Components”: The claim’s requirement that the receiving flask and filling head are movable “in relation to each other” was interpreted to mean that either component or both could be movable. This interpretation allows for flexibility in design, accommodating various configurations where one or both components move.
3. “Insertion Position and Carbonating Position”: The court explained that the insertion position requires the filling head to be spaced away from the receiving flask to allow placement of the container. In the carbonating position, the components must form a substantially closed cavity to ensure burst protection.
4. “Interlocking Connection”: The court clarified that the patent does not limit the interlocking connection to a bayonet connection but includes any form of interlocking that achieves the technical objective of forming a secure cavity.
Infringement Determination
The court found that Aarke’s “Carbonator Pro” infringed the patent in suit. The challenged embodiment was determined to fulfill all the features of the patented claim.
1. “Receiving Flask”: The court concluded that the assembly of a drip tray, rubber seal, and plastic ring in the Aarke device constitutes a receiving flask capable of forming a substantially closed cavity with the filling head.
2. “Movable Components”: The filling head in Aarke’s device was found to be movable in relation to the flask, meeting the claim’s requirements for transitioning between insertion and carbonating positions.
3. “Interlocking Connection”: The spring lock mechanism in the Aarke device was dee¬med to function as an interlocking connection, consistent with the patent’s claims.
Gillette-Defense
The court rejected the applicability of the “Gillette-Defense,” which the defendant argued should limit the scope of the claim to exclude free prior art. The court emphasized that the extent of patent protection is determined by the claims, interpreted in light of the description and drawings, and that the prior art discussed in the patent must be taken into account to avoid negating the patent’s distinguishing features.
Legal Consequences
1. Injunction: The court ordered an injunction against Aarke, preventing further infringement activities within the specified territories. The court rejected arguments of disproportionality, asserting that the patent holder has a legitimate interest in enforcing its exclusive rights.
2. Information Disclosure: Aarke was ordered to provide information on the extent of infringing activities, including origin, distribution channels, quantities, and prices of the infringing products.
3. Destruction and Recall: Aarke was required to surrender or destroy infringing products and recall them from commercial customers.
4. Damages: The court declared Aarke liable for compensating SodaStream for damages incurred due to the infringement. An interim award of EUR 250,000 was set to cover anticipated costs of the damages proceedings.
5. Publication: The court refused to grant SodaStream’s request for publication of the decision, determining that other measures provided sufficient protection for the claimant’s rights.
6. Costs: The court ruled that Aarke must bear the costs of the litigation, including those related to the relief granted.
Key Takeaways
Claim Interpretation: The decision underscores the importance of interpreting patent claims in light of the description and drawings, ensuring that the technical functions of each feature are understood in the context of the patent as a whole.
Scope of Protection: The rejection of the “Gillette-Defense” emphasizes that claim construction should not negate the distinguishing features of a patent, even when considering prior art.
Legal Remedies: The decision illustrates the range of legal remedies available in patent infringement cases, including injunctions, information disclosure, destruction, recall, and damages.
Proportionality in Injunctions: The court’s rejection of the disproportionality argument reinforces the patent holder’s right to enforce its exclusive rights, regardless of market dynamics or customer segments.
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*) The Gilette Defense is used in patent infringement lawsuits, where the accused argues that their product or process was already in the public domain before the patent in question was filed. The Gilette defense posits that if an invention has been previously known or is an obvious extension of existing knowledge, then the patent claims are too broad and should not have been granted in the first place. In essence, the Gillette Defense is grounded in the fundamental principles of patent law. Patents are meant to reward inventors for genuine innovation, not for claiming ownership over what’s already known. By invoking the Gilette defense, the defendant puts the patent holder’s claims under scrutiny with respect to the concepts of novelty and obviousness.
Text: Joakim Wihlsson
Källa: The Unified Patent Court
