In a recent decision issued by the Dusseldorf Local Division (LD) of the Unified Patent Court (UPC), Aarke AB’s “Aarke Carbonator Pro” was held to infringe SodaStream Industries Ltd.’s European Patent EP 1 793 917. The decision sets out some interesting points on claim interpretation, particularly where prior art is acknowledged in the description. It is also the first time that the UPC has dealt explicitly with whether or not defendants in infringement proceedings can make use of the so-called “Gillette defence” (which provides a defence if an alleged infringement is shown to practice what was disclosed in a prior art publication, on the basis that no relief can be obtained from an invalid patent).
SodaStream is a long-standing player in the field of at-home carbonation devices and alleged that Aarke’s Carbonator Pro infringed claim 1 of the patent (amongst others). The claim was directed to a carbonation device design that allows for a liquid container to be placed in a “receiving flask” and connected with a “filling head” to add pressurized gas, forming a “substantially closed cavity” to prevent breakage or leaks during carbonation.
The Carbonator Pro includes a drip tray (metal bowl), a rubber seal and a plastic ring fixed to a base portion. It also has a filling head with a shroud which covers a bottle placed on the drip tray. SodaStream alleged that the drip tray, rubber seal and plastic ring provided the feature of a ‘flask’, and that these formed a ‘substantially closed cavity’ when the filling head was placed over the bottle, as required by the claim.
In response, Aarke defended itself against the infringement action, but did not bring a counterclaim for revocation of the patent. Thus, the court dealt only with whether the patent was infringed and did not also consider whether the patent is valid. Aarke argued that SodaStream’s infringement arguments relied on an incorrect interpretation of the features. Interestingly, Aarke also attempted to rely on a “Gillette” defence. Both arguments failed to succeed, and the Court’s reasoning provides further insight into the Court’s evolving approach to interpreting the scope of protection conferred by the claims of a European patent.
Claim interpretation: Two-part form is not relevant, but prior art acknowledged in the description is
The court decided that when a patent discusses a problem with the prior art which the invention is supposed to improve upon, a claim feature should be interpreted in a way which yields at least some contribution to that improvement.
The principle point of difference for claim interpretation was what was meant by a ‘flask’. Aarke tried to establish that a ‘flask’ specified in the claim was required to be ‘bottle-like’ (rather than a dish-shaped, as in the alleged infringement).
As part of its arguments, Aarke attempted to rely on the formulation of the two-part form of the independent claim and a document cited in the grant procedure as an aid to interpretation of the term ‘flask’. It argued that, since the term ‘flask’ was in the pre-amble of the claim, this implied that the claimed ‘flask’ was of the form disclosed in a particular prior art publication. This argument failed, and the Court held that the grant procedure should not be relied upon as an interpretive aid because it is not mentioned in Art. 69(1) EPC (which dictates how the scope of protection of a European patent should be interpreted). Moreover, the Court held that the two-part form “does not have any implication for the interpretation of the claim with respect to the scope of protection regarding infringement issues”. Instead, the court held that “[a]s the claim must be interpreted as a whole, generally every feature – no matter where in the claim structure it appears – has to be taken into account”.
On the other hand, the Court did consider it appropriate to interpret the term “flask”, as part of the overall claim, in light of the prior art discussed in the description of the patent. The Court noted that where prior art was discussed in the description, it was to identify a deficiency in previous carbonation systems in which there was a risk of glass escaping if glass containers burst, due to protection being provided only by a protective shield which fits over the top of the bottle. On the basis of the discussion of the prior art in the description, the Court found that the only limitation which could be derived from the discussion of the prior art is that claim 1 cannot be interpreted as covering a design in which only the filling head acts as a burst protection, and the flask does not contribute in any way.
In the Carbonator Pro, although the drip tray, rubber seal and plastic ring were different to the flask which was illustrated in the drawings of the patent, the Court concluded that they acted (with the filling head) to close the cavity, and so fulfilled the purpose for the ‘receiving flask’ of claim 1.
A Gillette defence is not a defence to infringement at the UPC
The court decided that, at least in these circumstances where validity of the patent is not at issue, there is no basis in law at the UPC for a so-called Gillette defence.
As part of its defence, Aarke attempted to make use of the so-called ‘Gillette defence’. This is a long-standing part of UK patent case law, dating back to a 1913 decision, in which the defendant successfully argued that the alleged infringement is itself disclosed in or obvious from the prior art. Aarke sought to establish non-infringement of the patent based on a comparison between the alleged infringement and the prior art by arguing that the Carbonator Pro corresponds in substance to a prior art patent publication. According to the decision, Aarke argued that “there is no literal infringement if patent claim 1 is properly construed and interpreted” on the basis that “claim 1 cannot be interpreted so broadly as to cover also the free state of the art corresponding to the base and the moveable cover forming the burst protection”.
The Court rejected these arguments. The Court noted that according to Art. 69(1) EPC the extent of the protection conferred by a European Patent shall be determined by its claims. While these are to be interpreted in light of the description and drawings, it is the claims which determine the outer limit of the scope of protection. The Court noted that prior art is not mentioned in Art 69(1) EPC.
The Court noted that this does not mean that prior art is always irrelevant to the definition of the scope of the patent. In line with its interpretation of the “flask” feature (discussed above), the Court noted the following: “If this prior art is discussed in the description of the patent in suit, the relevant considerations must be taken into account. If the patent in suit distinguishes itself from the prior art in a particular way, an interpretation that negates that distinction must be avoided. In the case at hand, as it can be seen above, in interpreting the claim, the Court took into account the discussed distinction from the prior art in detail.”
Outcome
The Court concluded that, having regard to the drawbacks in the prior art which were discussed in the description of the patent, it was correct to interpret the claim in a way which did not require the “flask” to be shaped in the same way as in the drawings of the patent, but rather in a way which provided the functionality which was the purpose of the invention in light of the prior art. On this basis, the Carbonator Pro was held to provide all features of claim 1 and thus infringe the claim on a literal basis. Aarke’s attempt at a Gillette defence failed and so the Court found in favour of SodaStream, awarding an injunction of the Carbonator Pro, along with a number of other measures sought by SodaStream.
Conclusion
The decision seemingly rejects the notion that the “Gillette Defence” has a place in the UPC as a defence to infringement. The defence (even under UK law) is not a statutory defence at all, but rather is derived from case law over a century old. Therefore, it is perhaps unsurprising that the Court would be willing to admit the defence in infringement proceedings before the UPC.
However, it is notable that in rejecting the defence, the Court held that there was “no additional room for a Gillette defence understood in the way the Defendant presented it”. In this case, Aarke had presented the defence as an attempt to push the construction of the claim to a position in which there was no literal infringement, based on the prior art.
It is important to note in this context that validity was not at issue in this case because Aarke had not sought revocation of the patent through an invalidity counterclaim. It had only sought to defend itself against the infringement action. Even in UK, the Gillette defence is not necessarily regarded as an additional defence to an infringement action, per se, but rather an attack on the validity of the patent. In FujiFilm v AbbVie ([2017] EWCA Civ 1), the Court of Appeal noted that whilst the court will typically resolve issues of infringement and validity individually by reference to the claims, “a determination that there is nothing new or inventive about the defendant’s product may operate as a cross-check on the outcome of the action as a whole”.
It therefore remains to be seen if there is ‘room’ for a Gillette defence (or something like it) at the UPC when both infringement and validity are at issue, even if only to ‘operate as a cross-check’.