UPC Weekly - All of the fizz and none of the squeeze

2024 Week 44

SodaStream v Aarke is a decision on the merits of an infringement case based on EP 1793917 B1. The main interesting points come from the court’s interpretation of the claims in view of the prior art discussed in the patent. The defendant unsuccessfully tried to use a Gillette defence against infringement.

The patent had been opted out of the UPC, but then the opt-out was withdrawn and UPC infringement proceedings launched in October 2023. True to aim, the UPC Local Division Düsseldorf held the oral hearing within 12 months and the decision issued on 31 October 2024.  

As we have done in other reports, first we have Part One which gives an overview, suitable for all, and then Part Two which delves into the (simple) technical details of the patent, alleged infringement, the details of the main point of claim interpretation and the prior art.

PART ONE – OVERVIEW

The patent relates to domestic devices for carbonating drinks. The fact that the patentee is called SodaStream should tell you about the type of device.

The invention

Let’s say you are carbonating a drink in a large glass bottle. If things go wrong, you don’t want the bottle to explode and the glass shards to fly out. The invention is a combination of a flask and shield that lock together and contain the bottle while the drink is being carbonated.

Claim interpretation

In their decision, the Local Division followed the now-standard UPC Court of Appeal guidance to claim interpretation, emphasising that the description and drawings must be used to interpret the claims but that it is the interpreted claims that define the scope of protection.

The court explained at length their approach to the term “flask”. They interpreted the feature broadly, giving great emphasis to the intended purpose of this feature, rather than any sense of implied shape or size. The court used statements of preferred features of the flask in the description to highlight that claim 1 could be interpreted more broadly, because these features were merely preferable.

The effect of the prior art cited in the description

The patent contained a discussion of several prior art documents. The court carefully considered whether these should be used to assist with claim interpretation. In their view, they should, but this was moderated by what the patent said about the prior art, in particular about the perceived deficiencies of the prior art. The court was satisfied that the prior art did not show the required “flask” whereas the alleged infringement did.  

What is noticeable is that the alleged infringement looks more similar to the prior art than to the embodiments in the patent. But the embodiments do not define the scope of protection, the claims do.

Attempted Gillette defence fails

Aarke argued that the court should not interpret claim 1 so broadly that it would cover the prior art. However, it is important to note that Aarke had not filed a counterclaim for revocation of the patent and had not raised invalidity in a separate revocation action against the patent.

A conventional “squeeze” argument is intended to rely on a consistency of claim interpretation between infringement and validity. If a claim is interpreted broadly enough to cover an alleged infringement, then the same interpretation must be used when deciding whether a prior art disclosure falls inside the scope of the patent, or whether an obvious modification of the prior art falls inside the scope of the patent.

A Gillette defence is similar. The idea of the Gillette defence is to show that the alleged infringement would have lacked novelty or inventive step at the priority date of the patent. The intention is to short-cut difficulties in claim interpretation by showing that the patent must be either not infringed or not valid.

The Local Division in effect said that they must always interpret the scope of protection of the patent, and so in their view there was no room in this case (and perhaps at the UPC) for a Gillette defence that simply compared the alleged infringement with the prior art. [As an aside, if this approach is followed, it seems doubtful that the UPC would then ever countenance remedies such as an Arrow declaration, another UK-originating creation that requires even more flexibility of thinking.]

However, what must be made clear here is that there is clearly still room for a squeeze argument. It is to permit consistent claim interpretation for infringement and validity that defendants are usually keen to avoid bifurcation at the UPC. But in order to be most effective, there must be a counterclaim for revocation for the defendant to squeeze the patentee’s claim interpretation against. Here, there was no counterclaim for revocation, or indeed any significant arguments that claim 1 should lack inventive step over the cited prior art.  

We should also bear in mind that this is one UPC division. It is possible that other UPC divisions, and the UPC Court of Appeal, would consider a Gillette defence to be acceptable, even in the absence of a counterclaim for revocation. A further question arises, which is whether a Formstein-type defence (a bit like Gillette, but applied to equivalents) will be available without the need for a counterclaim for revocation. But given that we have not yet seen the UPC deploy a doctrine of equivalents, we are way too early to make predictions about this.

Does the two-part form or the file wrapper have any effect?

During prosecution, the patentee had placed the claim into the two-part form, with the feature of the flask being in the pre-characterizing portion of the claim. Aarke argued that the prior art on which the two-part form was based should be used to assist with interpretating the claim.

The court dismissed this argument, stating that the prosecution history should not be used to interpret the scope of protection. Furthermore, they said that it does not matter where in a claim a feature is recited – every feature of the claim must be taken into account.

Remedies

The outcome of the case is that Aarke are found to have infringed the patent. The patent expires in 2025 but Aarke are now subject to an injunction and an order to recall and deliver up infringing products for destruction. The value of the proceeding was set at €3,000,000 and Aarke were ordered to pay €370,000 in legal costs to SodaStream.

PART TWO – MORE TECHNICAL DETAILS

Technical details – not difficult!

Claim 1 of the patent is easy to understand and its ordering of features is important in the decision. And because the granted claim admirably actually uses bullet points, it is set out in full here:

1. A device (1) for carbonating a liquid (L) contained in a container (10) with a pressurized gas (G) comprising

• a flask (20) for receiving said container (10)
• a filling head (30) having means for adding said gas (G) into a liquid (L) in said container (10), 
  characterised in that said receiving flask (20) and said filling head (30) are movable in relation to each other between an insertion position (I) and a carbonating position (C),
• wherein in the insertion position (I) the filling head (30) is spaced away from said receiving flask (20) such that said container (10) can be placed into said flask (20),
• wherein in said carbonating position (C) a contact surface (21) of said receiving flask (20) and a contact surface (32) of said filling head (30) are in contact with each other to form a substantially closed cavity (9)
• and wherein the filling head (30) and the receiving flask (20) are provided with locking means (23, 33) for interlocking connection there between, preferably with a bayonet connection.

We will be coming back to the words in bold.

In the embodiments of the patent, the “flask” is the deep cup 20 into which the bottle 10 is placed. The flask 20 is then tilted upright and the filling head 30 is pushed down so that a gas nozzle seals against the opening of the liquid container 10. In the same movement, the outer shroud of the filling head 30 contacts and locks with the flask 20.

The locking of the flask to the filling head should contain flying glass in case the bottle explodes. It is not intended to form a gas-tight or liquid-tight seal.

The alleged infringement

The Aarke Carbonator Pro also has a locking cover arrangement that contains the bottle during the carbonation step.  Although there was debate about the relevance of many of the features of the claim to this product, the key question was whether the Aarke product had the required “flask”.

See what you think from a brief look. Try not to get distracted by the drawing from the patent looking like a penguin with a rocket pack.

So the really key question for the court was whether the recess into which the Aarke bottle is placed meets the required “flask”. It is clear that there is a locking mechanism that secures the cover to the base around the bottle. For the extremely keen, you can see a movie of the Aarke product here, to get a better sense of the shape, scale and locking.

Claim interpretation

It’s a bit naughty to show the alleged infringement before considering claim interpretation, so let’s forget for a moment about the images above.

In their decision, the Local Division explained at length their approach to the term “flask”. They accepted of course that the embodiment showed one example of a flask, but that the claim was not limited to this. On the basis of the technical purpose of the flask, they decided that it required to be of a shape to allow a container to be placed into it and to provide burst protection in combination with the filling head and the locking means. They said:
As long as it contributes to the burst protection and a container can be placed into it, the patent does not restrict its design in any other way.

It helped that the description of the patent said that the flask can be of any appropriate size and shape. The description also set out a preferred feature that the flask is sufficiently tall to contain the container, e.g. being at least 50% of the height of the container.

The effect of the prior art cited in the description

Two of the prior art documents discussed in the patent are particularly interesting because they expressly provide burst protection using a cover.

US 4,323,090 also discloses a carbonation device with a vertically moving shroud that is lockable with the base in the closed position. The bottle sits on a slightly recessed contoured part of the base that is shaped to fit the base of the bottle.

US 4,342,710 even states that the bottle 4 sits in a circular sunk portion 5 of the base 6, in order to locate the bottle accurately. The bursting protection 15 is lowered over the bottle to fit inside the circular flange of the base. The bursting protection 15 is held in place by a resilient tongue 28 rather than by a lock at the base.

To squeeze, or to Gillette, or both?

In its claim interpretation, the court did take the prior art documents in the description into account.  However, their view was that the prior art only provided bases on which the liquid container can be put, “but no separate structure into which the liquid container can be placed and which contributes to burst protection”.

The court decided that there was some effect on interpretation of claim 1 due to the acknowledgement in the patent of the two prior art documents shown above:
Therefore, the only limitation that the skilled person derives from this 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, resulting in the risk of a gap and glass particles escaping.

The court therefore placed much emphasis on the role of the flask in burst protection. Their view was that the prior art did not disclose a flask as claimed, but that the Aarke product did.

At first sight, it appears at least arguable that US 4,342,710 discloses enough of a recess to be a “flask” and then to have a discussion about the obviousness of including a more secure locking mechanism to hold the shield 15 to the recess. Therefore, had Aarke filed a counterclaim for revocation, it seems to us more likely that a consideration of the actual disclosure of the prior art would have been carried out, rather than placing a relatively heavy emphasis on the patent’s view of the prior art. Whether this would have led to a different overall outcome is difficult to say.

However, a clear lesson from the court’s decision in this case is that filing a counterclaim for revocation should force the patentee to argue for a more balanced claim interpretation