By Judgement of 8th February 2019, the Barcelona Court of Appeal has confirmed the judgement issued by the Commercial Court nº 5 of Barcelona last 9TH January 2018, by virtue of which the patents EP 1.472.156 – ES 2.260.626 (hereinafter, "EP'156") and EP 1.808.382 – ES 2.407.963 (hereinafter, "EP'382") both related to the Nescafé Dolce Gusto® capsules were declared valid and infringed by the company FAST EUROCAFÉ, S.A. (hereinafter, "FAST EUROCAFÉ").
NESTLÉ is the holder of the patents EP'156 and EP'382 which protect the capsules of the well-known NESCAFÉ Dolce Gusto® system.
Patent EP'156 protects "a capsule designed to be extracted by injection of a fluid under pressure in an extraction device, containing a substance for the preparation of a beverage, comprising a closed chamber containing the said substance and a means allowing the said capsule to be opened at the time of its use and for allowing the said beverage to flow out characterized in that opening is achieved by a relative engagement of the opening means with a retaining wall of the closed chamber and in that the relative engagement is performed under the effect of the rise in pressure of the fluid in the chamber"" (EP'156), the wording of EP'382 being very similar.
Since May 2015, FAST EUROCAFÉ has been importing, offering for sale and selling capsules of beverages compatible with the NESCAFÉ Dolce Gusto® system.
In January 2016, NESTLÉ filed a patent infringement action against FAST EUROCAFÉ based on the aforementioned patents. At that time, two different versions of capsules had been launched in the market by FAST EUROCAFÉ: capsules "V1" which were opened in the middle of the capsules; and capsules "V2" which were opened at the edges of the capsules ("V" openings) and in some cases, also reproduced the same openings found on capsules V1 (through holes).
NESTLÉ's main arguments were that both V1 and V2 capsules fell within the scope of protection of both EP'153 and EP'382 patents.
FAST EUROCAFÉ argued that
● NESTLÉ patents were invalid (lack of novelty and lack of inventive step in view of seven different prior art documents).
● They were not infringed due to the fact that:
- In the "V" openings of capsules V2, there was no tearing or puncturing but only a detachment of the retaining wall from the cup.
- There was no significant outflow of beverage via the through holes present in approximately 20% of V2 capsules.
● Regarding V1 capsules, FAST EUROCAFÉ just said that those capsules were not in the market at the time that the complaint was filed.
● In order to defend the non-infringement, FAST EUROCAFÉ interpreted the scope of protection of claim 1 of both patents in a restrictive way, considering that although claim 1 of EP'156 does not mention that the opening means have to "tear" or "puncture" the thin film of the closed chamber, the claim should be interpreted as if this feature were in it, and in relation to the claim 1 of the patent EP'382, which does include the "tearing" feature, the interpretation of this term should be, in the opinion of the defendant, very restrictive.
On 9th January 2018 the Commercial Court nº 5 of Barcelona issued a Judgement declaring both the validity and the infringement of both patents by the defendant FAST EUROCAFÉ.
FAST EUROCAFÉ appealed the Judgement and SOCIÉTÉ DES PRODUITS NESTLÉ, S.A. (hereinafter, NESTLÉ) opposed the aforementioned appeal.
The Judgement of the Barcelona Court of Appeal
In its Judgement of 8th February 2019, the Barcelona Court of Appeal has dismissed the appeal filed by FAST EUROCAFÉ and has confirmed the Judgement of the Commercial Court nº 5 of Barcelona.
The main discussion is focused on the interpretation of the scope of protection of the patents which was different between the parties.
The Barcelona Court of Appeal has declared that claims must be interpreted according to the description, thus bearing in mind that claim 1 of EP'156 does not include the feature of the opening by tearing or puncturing and considering that the description explains that the opening means can have any shape or any mechanism and mention several of them, in the opinion of the Court the interpretation of the claim defended by FAST EUROCAFÉ was not correct.
Regarding claim 1 of EP'382, the Court has considered that although the claim includes the feature of the "tearing", bearing in mind that the description expressly states that the word "tearing" has to be understood in a broad way, the interpretation of FAST EUROCAFÉ is also unjustified.
Having said that, the Court of Appeal confirms in its Judgement that the controversial capsules V1 and V2 fall into the scope of protection of the patents, ratifying, in this sense, its previous prima facie decision issued in the PI proceedings of this case by means of the Order on 18 May 2017 which granted the PI measures requested by NESTLÉ.
In the current Judgement, following a deep analysis of the evidence of both parties, the Barcelona Court of Appeal has considered that:
- Even accepting that there is no tearing or puncturing in the "V" openings of V2 capsules, and accepting, as FAST EUROCAFÉ defended, that there is a mere separation or detachment of the thin film, this way of opening the capsules falls within the scope of protection of Nestlé's Patents, as, even without tearing or puncturing, this way allows the opening of the capsule so that the beverage flows out, preventing cross-contamination.
- In relation to the "through holes", the Court has stated that they also fall within the scope of protection of the patents due to the fact that there is an opening/breakage/puncturing of the thin film which even though minimal, allows for an outflow of beverage.
Regarding the nullity actions filed by FAST EUROCAFÉ, the Barcelona Court of Appeal has completely dismissed the defendant's arguments stating the validity of the patents over the state of the art invoked in the counterclaim.
Considering the importance of the Nescafé Dolce Gusto® system for NESTLÉ and the rising interest of competitors for commercializing compatible capsules with said system, the relevance of this Judgement which confirms (i) the interpretation of the scope of protection of the patents and (ii) the validity of the patents and their infringement is paramount.
FAST EUROCAFÉ has filed an extraordinary cassation appeal against this judgment to bring the case to the Supreme Court.
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