2024 Week 49
SharkNinja have managed to persuade the UPC Court of Appeal to overturn a preliminary injunction awarded to Dyson. We investigate what made the difference in the appeal and consider what this could mean for the main infringement proceedings.
SharkNinja were cleaned out at first instance
At first instance, the UPC Local Division Munich decided that the SharkNinja hand-held vacuum cleaners probably infringed Dyson’s EP 2043492 B1.
Claim 1 of the granted patent is below. It defines the layout of the vacuum cleaner, with the characterizing features being a pistol-type handle 28 located between the fan motor 36 (inside housing 26) and the rechargeable battery 32.
- A hand-held vacuum cleaner (10) comprising a suction conduit (14) having a longitudinal axis, an airflow generator (36) for generating an airflow along the suction conduit, cyclonic separating apparatus (18) arranged in communication with the suction conduit (14) for separating dirt and dust from the airflow, a power source (32) for supplying power to the airflow generator (36) and an elongate handle (28) characterized in that the elongate handle (28) is disposed between the airflow generator (36) and the power source (32) and dimensioned and arranged to be gripped by a user's hand, wherein the elongate handle (28) lies transverse to the longitudinal axis of the suction conduit (14) and the cyclonic separating apparatus (18) is positioned between the suction conduit (14) and the elongate handle (28).
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SharkNinja tried various arguments to try to show that claim 1 was not infringed and was invalid. One argument they ran (which we will be coming back to) was that their cleaner did not use cyclonic separation, but instead used only a filter. But what should “cyclonic separation” be taken to mean? The patent did not define this. Based on the evidence, the Local Division decided that this does not require a tangential airflow in the cylindrical chamber of the alleged infringement. Instead, they considered that the generation of localised eddy currents in that chamber would be enough, if this leads to dirt particles being pressed against the wall.
Having also decided that the patent was probably valid, a preliminary injunction (PI) was awarded against SharkNinja. One of the conditions of the PI was that Dyson should start full infringement proceedings within a month.
Watching the time line
As we will see, SharkNinja appealed the PI. Therefore there were a few things going on in parallel. The time line below shows the sequence of events.
It's interesting to see that Dyson initially opted out the patent during the UPC sunrise period, and then withdrew the opt-out immediately before launching the PI application. The PI hearing took place 4 months later, with the PI decision issuing two months after that.
In line with the requirements of the PI, Dyson launched full infringement proceedings and SharkNinja replied in October 2024 with a defence and a counterclaim for revocation. The interim hearing is scheduled for May 2025, when the date for the oral hearing will probably be set, and, presumably, the Local Division will decide not to bifurcate the proceedings but will hear the infringement and revocation actions together.
In the meantime, SharkNinja filed an appeal against the PI, and the decision of the UPC Court of Appeal (CoA) issued on 3 December 2024.
UPC Court of Appeal overturns PI
In their Dyson v SharkNinja decision, the CoA listened to all of the arguments but decided the PI on one issue – cyclonic separation – which was feature 1.3 of the claim. In the proceedings there was video evidence showing the movement of different types of particle in the SharkNinja cylindrical chamber, and also each side provided expert evidence on cyclonic separation. The same evidence was apparently seen by the Local Division. For interpretation of the claim, the CoA decided:
Based on the concordant evidence of the witness statements of the respective parties, the Court is convinced with sufficient degree of certainty that, as of the priority date, the skilled person would understand feature 1.3 requiring that the airflow entering the housing is manipulated to flow tangentially around the circumference of the inner wall of that space, thereby forming a helical airflow, the purpose of which is to generate centrifugal forces, forcing the debris away, allowing them to settle in a collection region.
Considering the video evidence, the CoA decided that the airflow was not tangential and therefore there was no cyclonic separation in the alleged infringement. Without needing to decide on the various other arguments, the CoA therefore lifted the PI and ordered Dyson to pay SharkNinja’s costs for the entire PI procedure – first instance and appeal.
Is that the end? Not likely.
The main action for infringement and the counterclaim for revocation rumble on. Will the Local Division be persuaded to follow the CoA claim interpretation?
It is particularly noticeable that the CoA decided against infringement on the basis of a feature of the preamble of the claim. Claim 1 of the original application actually mentioned only a “separating apparatus” – the limitation to “cyclonic separating apparatus” was added during prosecution of the application to reach grant. But the arguments in prosecution did not really turn on this – the invention does not really depend on the use of cyclones but instead on how the user feels the balance of the device due to the relative locations of the battery, handle, motor, separator and suction conduit.
One point that could well raise its head next is whether there is infringement by a doctrine of equivalents (DoE). Neither the Local Division nor the Court of Appeal mentioned this in the PI proceedings. This makes sense because if you need to argue DoE during PI proceedings you are probably on a hiding to nothing. But in the main action on infringement, there will surely be discussion of the effect of this paragraph at the end of the description of the patent:
[0024] A cyclonic separating unit need not be used. Other separating apparatus such as a bag-type filter could be used. Further, the hand-held vacuum cleaner need not be fitted with a rechargeable power source. Standard batteries or a power lead could be used. Further, the invention is not limited to hand-held vacuum cleaners. Other types of hand-held cleaning appliances could be used, for example, carpet shampooers, wet and dry machines or blower vacuum devices.
Any decision of the UPC on the doctrine of equivalents is worth checking out and we will report again in due course.
