EPLAW PATENT BLOG

NL – Tomra v. Kiremko / Appeal

Posted: March 15th, 2021

Tomra Sorting Limited v. Kiremko B.V., Court of Appeal of The Hague (PI appeal case), 16 February 2021, Case no. ECLI:NL:GHDHA:2021:339

On 16 February 2021 the Dutch Court of Appeal of The Hague rendered a decision in the PI appeal proceedings between Tomra and Kiremko. The Appeal Court confirms the decision of PI judge Bus in first instance, for that reason denying the preliminary injunction requested by Tomra, albeit on different grounds.

Facts
Kiremko produces machines for the potatoe processing industry. Tomra instigated PI proceedings against Kiremko, alleging Kiremko infringed Tomra’s EP 379 relating to “Pressure release arrangements, in particular for product processing system”.

Claim 1 of EP 379 reads: “A self-sealing pressure release apparatus comprising: a pressure vessel (1); a valve (61) for enabling release of pressurized steam from the pressure vessel (1), the valve (61) comprising a displaceable closure member (67) which, in its closed dispositions, is maintained in said closed disposition only by exposure to the pressure of the steam within the pressure vessel (1); and a double acting actuator (69) for displacing the closure member (67) from said closed disposition to an open disposition against the pressure of the steam within the pressure vessel (1) for said release of steam from the pressure vessel (1).”

In first instance, the PI judge held that it is unsufficiently clear that Kiremko infringes EP 379 as there is a serious, non-negligible chance that the patent would be revoked in proceedings on the merits due to lack of novelty and inventive step.

On appeal the Court considers that Kiremko’s product (the Magma Valve) does not infringe EP 379. The main dispute between Tomra and Kiremko in this respect appears to relate to the interpretation of the word “only” in claim 1. According to Kiremko, “only” should be read as meaning “exclusively” for which reason its product does not infringe EP 379 as it also uses other means to maintain a closed disposition (i.e. a compressed air motor).

Claim interpretation and infringement
For the interpretation of the claims, the Court of Appeal refers to Article 69(1) EPC, the Protocol on the Interpretation of Article 69 and the well-established case law of the Supreme Court in Medinol v. Abbott.

In addition, the Court takes into account the perspective and common general knowledge of the skilled person at the priority date. With regard to the prosecution file, it is noted that this can only be used in favour of the patentee when the description and claims leave room for uncertainty regarding the proper interpretation of the claims.

In this case, EP 379 does not define the word “only”. In general, however, the skilled person would consider “only” to mean “exclusively”. This interpretation of the word “only” is also in line with the core of the invention: to provide for easier, faster release of steam, achieved by a less maintenance-sensitive construction. The skilled person would therefore not have any doubts regarding the interpretation of claim 1, and even if he would, it follows from the prosecution file that the examiner also interpreted the word “only” as meaning “exclusively” and that it was added by the patentee to distinguish from the prior art, making it a limiting feature.

Tomra also pointed out other features to argue a different interpretation, but at most these result in unclarity, and lack of clarity should be interpreted to the disadvantage of the patent holder.

Tomra’s claim for infringement by equivalence is not successful either, as the additional feature of Kiremko’s product prevents the advantages of the invention of EP 379 to be achieved. Therefore, the Court of Appeal considers that Kiremko’s Magma Valve does not infringe EP 379, leaving open the question whether there is a serious non-negligible chance that EP 379 will not be considered novel or inventive in proceedings on the merits, as argued by Kiremko and contested by Tomra.

The judgment (in Dutch) can be found here.

Headnote: Daisy Termeulen, Simmons & Simmons

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