Clifford Chance

Not even a year after the first instance of the case was resolved by the Specialised Patent Division of the Barcelona Commercial Courts (Commercial Courts Nos. 1, 4 and 5) (the "Specialised Patent Division"), the Judgement of 13 January 2022 handed down by Section 15 of the Barcelona Court of Appeal ("Second Instance Judgement") has produced a twist in the judicial proceedings between Vorwerk & Co Interholding GmbH ("Vorwerk"), which manufactures and markets the well-known Thermomix® food processor, and Supermercados Lidl, S.A. ("Lidl"), distributor of the Monsieur Cuisine Connect food processor.

The Second Instance Judgement upholds the appeal filed by Lidl against the judgement handed down by Commercial Court No. 5 of Barcelona on 19 January 2021 ("First Instance Judgement"), which is revoked. Vorwerk's complaint is dismissed in its entirety and it has been ordered to pay the corresponding court costs. In addition, the counterclaim filed by Lidl against Vorwerk is upheld and Spanish patent ES 2 301 589, the validation of European patent EP 1 269 898, is declared null and void, with Vorwerk ordered to pay the court costs arising from the counterclaim.

Background to the case

For those readers unfamiliar with the case, it will be useful to know the background to put it in context.

Infringement action brought by Vorwerk

Vorwerk, holder of Spanish patent ES 2 301 589 T3 ("patent ES '589"), the validation in Spain of European patent EP 1 269 898 B1, brought a patent infringement action against Lidl on 14 June 2019 on the grounds that the Monsieur Cuisine Connect food processor infringed its patent. Patent ES '589 relates to a food processor that is able to operate safely by means of electric circuits that allow the independent operation of the mixing and weighing devices, in such a way that when the switch is triggered, the stirring vessel stops working, but not the weighing function. Thermomix®, with which the Monsieur Cuisine Connect competes, is Vorwerk's food processor incorporating this invention.

Of the eight product claims included in patent ES '589, one independent (Claim 1) and seven dependent claims incorporating variants, accessories and construction options (Claims 2 to 8), it was Claim 1, which include six technical features, which was disputed.

Of the six technical features of Claim 1, the one used in Lidl's food processor and disputed by the parties was technical feature 1, i.e. a food processor with a mixing vessel, a lid and housing; the mixing vessel and the lid can be locked in such a manner that access to the mixing vessel is not possible during operation (a feature that, as stated in the description of patent ES '589, was already known in the prior art).

The First Instance Judgement, considering that Lidl's argument to defend the non-infringement of patent ES '589 was based on an isolated and partial interpretation of this technical feature 1, rejected the conclusions reached by Lidl, and considered, in line with Vorwerk's submissions, that the Monsieur Cuisine Connect food processor reproduced all the features of Claim 1 of patent ES '589.

Nullity counterclaim filed by Lidl

Lidl, which marketed the Monsieur Cuisine Connect with tremendous success in Spain until it was prohibited by the First Instance Judgement, defended the infringement action and, by way of counterclaim, challenged the validity of Vorwerk's Spanish patent ES '589 on grounds of added matter, lack of novelty and lack of inventive step.

Regarding added matter, Lidl alleged that Claim 1 of patent ES '589 contained subject matter that went beyond the content of the application as filed. Two key points underpinned this assertion, i.e. that technical feature 4 was not mentioned or directly supported in the original description in the patent EP '898 application and that technical feature 5 allegedly involved an extension of subject matter in the form of a "generalisation" compared to the application as filed. The Specialised Patent Division did not share this view.

As regards novelty, Lidl surprisingly waived this ground for invalidity, which was in relation to the patent's lack of novelty with regard to D1 (US 5,329,069-Braun). At the beginning of the trial, Lidl's expert admitted that technical feature 1 of Vorwerk's invention would not be anticipated in D1.

As for the third ground for invalidity alleged by Lidl, lack of inventive step, two possible alternative arguments were given, each based on a different closest prior art: the first related to D1 in combination with D3 (EP 0 638 273-Philips) and/or D6 (US 4,373,677-Matsushita) and the second related to D3 in combination with D1 or D9 (FR 2,651,982-Ronic). The Specialised Patent Division found that neither of the two alternative analyses put forward by Lidl led to the conclusion that the invention did not involve an inventive step.

The First Instance Judgement

The Specialised Patent Division resolved the first instance of the proceedings in the First Instance Judgement, in which Vorwerk's infringement action was upheld on the basis that Lidl's Monsieur Cuisine Connect food processor incorporates the technology protected by patent ES '589, and Lidl's invalidity action was dismissed on the basis that Vorwerk's patent does not include added matter and satisfies both the novelty and the inventive step requirements.

As a consequence, the import, offering for sale and marketing of the Monsieur Cuisine Connect food processor by Lidl was declared to constitute an infringement of the exclusive rights deriving from Vorwerk's patent ES '589, and Lidl was ordered, among others, to cease importing, stocking, offering and marketing its food processor, and to compensate Vorwerk for the damage caused.

Lidl appealed the First Instance Judgment and Vorwerk opposed, in due time and form, the appeal filed by Lidl. The Provincial Court of Barcelona has been in charge of resolving the second instance of the dispute between the parties.

Second Instance Judgement provides a twist to the case

At the second instance, the tables have clearly turned. The Provincial Court of Barcelona, resolving the appeal in a way contradictory to what was understood by the Specialised Patent Division, has declared the nullity of Vorwerk's patent ES '589 on the grounds of added matter and lack of inventive step. And, in addition, although it was no longer necessary after declaring that patent ES '589 is null and void, the Second Instance Judgement also indicates that there is no infringement by Lidl.

Let us look at the reasoning behind this decision.

In terms of added matter, the Second Instance Judgement upheld the addition of subject matter as a ground for invalidity on the grounds that "the protection was unlawfully extended in the course of the patent prosecution" or, in other words, that Vorwerk included new features in its patent application during the prosecution of the same at the European Patent Office ("EPO"), which is not permitted.

For the Provincial Court of Barcelona, "the fact that the initial description mentions separately two functions of the control board (stirring and heating) and makes no reference to the weighing device prevents it from being considered that this application disclosed the idea of a weighing device controlled by an autonomous circuit of the same control board as the stirring device and the heating device". In its opinion, "it is clear that this disclosure is not made expressly and we do not believe that it is made implicitly". If we analyse the idea that the existence of a weighing device would require the existence of a control board circuit, the implicit disclosure is doubtful since it would not be entirely excluded that the weighing circuit could be powered directly by connection of the food processor to the electric current. Even more doubtful would be the existence of an implicit disclosure in the idea that the control circuit would be on the same control board as the one containing the other circuits, i.e. that the same control board should house all the circuits corresponding to the various functions of the machine, as this should have been made explicit in the application (in fact, this was done subsequently).

Since new features referring to the control of the weighing device were included in Claim 1, its final wording, in opinion of the Provincial Court of Barcelona, infringes the prohibition on extending protection over what was originally claimed, and, therefore, Claim 1 should be declared null and void on the grounds of added matter and, with it, the entire patent.

Moving on to inventive step, the Second Instance Judgement analyses the differences between the two companies' food processors in the safety system of the mixing vessel in which the food is introduced. It is examined whether Lidl's food processor incorporating technical feature 1 of Claim 1 of patent ES '589 referred to a safety system ("a food processor with a mixing vessel, a lid and housing; the mixing vessel and the lid can be locked in such a manner that access to the mixing vessel is not possible during operation").

On this aspect, the Provincial Court of Barcelona states that "the dispute focuses on whether in the defendant's product the stirring bowl and the lid can be interlocked in such a way that no intervention inside the stirring bowl is possible during operation. The defendant argues that in order to be able to intervene in the beaker it is necessary to stop the stirring mechanism beforehand, whereas the plaintiff argues that unlocking the lid deactivates the switch and stops supplying power to the stirring mechanism". And concludes that "of these two interpretations […], the one that best fits the description is the one given by the defendant. We reach this conclusion on the grounds that the patent does not claim any new solution in relation to the safety system which was already part of the state of the art but merely reproduces a solution of the prior art which consists, in substance, in the fact that the lid cannot be unlocked unless the agitator mechanism is first switched off".

The understanding of the Provincial Court of Barcelona is that the technical feature claimed as a solution to the technical problem was already in the prior art, so that, to a skilled person, it would have been an obvious solution to that problem.

Having declared that Vorwerk's patent ES '589 is null and void, there was no need to analyse infringement. However, as previously advanced, the Provincial Court of Barcelona rules on this and concludes, for the reasons explained below, that, even if patent ES '589 were valid, it would not have been infringed by Lidl.

Vorwerk argued that Lidl's food processor reproduced one of the features claimed in patent ES '589, namely the safety system that prevents the lid of the mixing bowl from being removed without first stopping the food processor. However, the Provincial Court of Barcelona declares that "there is no infringement because the defendant's food processor does not reproduce the sequence necessary for safe intervention in the mixing bowl. In Lidl's food processor, the lid can be opened without the need for any prior action, i.e. without the need to stop the stirring mechanism beforehand, and it is that opening or unlatching of the lid by means of a small turn on its axis which stops the stirring mechanism, albeit not immediately". In the Monsieur Cuisine Connect food processor, the blades stop when the lid is opened and can maintain an inertia of operation with the lid open. Thus, the Lidl kitchen robot does not need to stop the cooking process for the lid to be opened, unlike the Thermomix. This shows that Lidl would not have reproduced Vorwerk's patent ES '589 on this point. So even if the patent were valid, concludes the Provincial Court of Barcelona, there would be no infringement either.

Decision

As already advanced and based on the reasoning we have seen, the Second Instance Judgement upholds the appeal filed by Lidl against the First Instance Judgement, which is fully revoked. Vorwerk's complaint is dismissed in its entirety and it has been ordered to pay the corresponding court costs. In addition, the counterclaim filed by Lidl against Vorwerk is upheld and Vorwerk's patent ES '589 is declared null and void, with Vorwerk ordered to pay the court costs arising from the counterclaim.

What happens next?

Although the Second Instance Judgement can be appealed before the Supreme Court and quite possibly that is what Vorwerk will do, Lidl will once again be able to market its Monsieur Coisine Connect food processor in Spain, following the withdrawal from the market that was ordered at the time by the First Instance Judgement.

What is certain is that, with the twist that the Second Instance Judgement has given to the case, we will be keeping a close eye on what happens next in this high-profile dispute!