NL – Topkip v. Storteboom

Posted: June 2nd, 2014

Topkip v. Storteboom, District Court The Hague, The Netherlands, 2 April 2014, Case no.: C/09/443124 HA ZA 13-571

Topkip develops and trades in poultry slaughter lines. Topkip owns European Patent EP 1 280 426 for a ‘Method for cooling slaughtered poultry’ (the “Patent”). Compared to the prior art, the Patent aims to improve cooling of slaughtered poultry, a.o. resulting in improved colour, weight preservation, a longer shelf-life and a decrease of the germ value. Storteboom and 2 Sisters exploit poultry slaughterhouses. An 'ImmersionChill' cooling line supplied by Marel Stork is used in one of the slaughterhouses. Marel Stork offers the ImmersionChill in all countries which the Patent [BW1] was granted for. Topkip believed that the defendants (‘Storteboom et al.’), by using the ImmersionChill, infringe the Patent. Storteboom et al. put forward a reasoned defence and petitioned the District Court to annul the Patent.


In the original action Storteboom et al. argued in their defence that the installation did not infringe the Patent as the water in the installation did not flow as the result of the continued addition of water (feature C) resulting in the absence of an opposed flow direction (feature D). However, Topkip argued that features C and D of claim 1 had to be interpreted to include the transport of poultry through water that did not flow in relation to the installation. As a result of the poultry being transported through the chilling tank, a counter flow was nevertheless created.

The District Court rejected this argument, referring to article 69 EPC. Even though the description of the term 'counter flow' proposed by Topkip could be correct from a physical point of view, it was not quite as relevant for the interpretation of claim 1. Claim 1 did not mention counter flow, but rather flowing water in a flow direction. A person skilled in the art would understand that water was flowing in relation to the installation as this would be the most obvious interpretation in this particular context and the Patent did not contain any indications that pointed in another direction.

In addition, Topkip's position concerning counter flow at this stage was irreconcilable with the position it had taken in the granting procedure.

Furthermore, Topkip believed that in the installation of Storteboom et al. water did indeed flow in a direction contrary to the transport direction of the poultry, resulting in infringement. The District Court also rejected this argument. The installation of Storteboom et al. did not provide for a flow of any significance. Furthermore, the transport direction of the water was not contrary to but rather at right angles with the flow direction of the water as referred to by Topkip. All of Topkip's claims in the original action were disallowed based on the non-infringement defence put up by Storteboom et al. There therefore was no need to assess the invalidity arguments in the original action.

The counterclaim was also disallowed. Storteboom et al. pleaded that the Patent was not replicable. However, it appeared from tests performed by Storteboom et al. in the framework of the infringement that Storteboom et al. were able to replicate the Patent claims. The District Court did not agree with the lack of novelty argument adduced by Storteboom et al. either. Van Dolah had not clearly and unambiguously disclosed the transport direction of the poultry against the flow direction of the water.

Finally, the novelty attack launched by Storteboom et al. was not successful. Storteboom argued that the intended purpose of the Patent was not achieved as, in practice, it turned out that the poultry's breastbone was not pressed shut if the poultry was suspended with the breastbone oriented in the transport direction. However, Storteboom et al. failed to demonstrate plausibly that the methods described in claim 1, which the orientation of the poultry indeed did not form a part of, would not result in improved cooling results.

Storteboom et al. furthermore believed that claim 1 lacked inventive step pursuant to a combination of Marshall and Directive 92/116/EEG. The District Court did not agree with Storteboom et al. in this respect either. Assuming that Marshall is the closest prior art, features B-iii, D and E should be considered differences. An average person skilled in the art who would be looking for ways to improve hygiene in the cooling process would, given the Directive referred to, add feature D, though in doing so would not arrive at claim 1 which also comprises features B-iii and E.

Finally, Storteboom at al. adduced, in the framework of the novelty attack, that prior to the priority date a similar method was known and was being used in Eastern Europe (the 'Eastern European method'). Topkip objected against exhibits 17 through 20 submitted by Storteboom et al. in this respect. As no evidence was found to suggest that Storteboom et al. were aware of the Eastern European method at an earlier date and Topkip did not argue that it had been unable to properly express its opinion on these exhibits and the statements based thereon with respect to the public prior use either, Topkip's objections had to be rejected in this respect. However, the Eastern European method did not result in invalidity of claim 1 for lack of inventive step, as it did not refer to feature D. Based on the assumption that this method did comply with the other characteristics of claim 1 and was publicly accessible, Storteboom et al. appealed to lack of inventive step as a person skilled in the art would resolve the problem of increasing hygiene by adding counter flowing water to the known method. This appeal was also dismissed.

Lack of inventive step was only argued in a general sense in the deed that accompanied exhibits 17 through 20, as well as in passing by the attorney representing Storteboom et al. at the end of his plea in the first instance. The District Court held that Topkip could not be expected to respond to these arguments adequately and meaningfully after being given time to reply, and it would thus be harmed in its defence. It ruled that this appeal by Storteboom et al. had to be disregarded as it had been submitted out of time and contrary to the principles of due process of law. The District Court held that the Patent was valid in these circumstances.

In the original action and the counterclaim the parties were ordered to compensate each other's litigation costs, which totalled € 250,000 as agreed, divided into original action and counterclaim makes € 125,000 for each party.

Read the decision (in Dutch) here.

Head note: Wim Maas

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