Posted: December 4th, 2019
SANGENIC V. LAMICO / THE DANISH MARITIME AND COMMERCIAL HIGH COURT (DIAPER PAIL REFILLS) – Presumption of validity of granted rights, infringement by equivalent means, loss of rights/acquiescence, recall of products, damages and compensation, proportionality
Sangenic International Limited (“Sangenic”) v. Lamico ApS (“Lamico”), the Danish Maritime and Commercial High Court Case number BS-287/2015-SHR, 4 October 2019
The case concerns whether Sangenic’s patents EP 1 409 344 (“EP ‘344”) and EP 2 019 042 (“EP’ 042”) (together referred to as the “Patents-in-Suit”) are invalid, and if not, whether Lamico’s refills to diaper pails infringe the Patents-in-Suit. Also, the case concerned whether the patentee had lost its right to enforce the patents because of acquiescence.
Both Sangenic and Lamico manufacture and market diaper pails and refills to such. The Patents-in-Suit, relating to diaper pail refills, are extensions of Sangenic’s international patent application with international application number PCT/GB02/02627 (publication number WO/2002/100723, the “PCT Application”) with priority from a British patent application filed on 12 June 2001. The PCT Application was extended to Denmark and the EPO.
Based on the Danish extension of the PCT Application, the Danish Trademark and Patent Office (“DKPTO”) granted the national Danish patent DK 175 471 (“DK ‘471”). Lamico filed an opposition against the patent, which ultimately resulted in the Patent Board of Appeal declaring the patent invalid in whole due to lack of novelty.
Based on the European extension, the EPO granted EP ‘344 which came into effect in Denmark on 19 January 2009. After opposition proceedings initiated by Lamico, EP ‘344 was upheld with amended claims. The amended EP ‘344 came into effect in Denmark on 14 January 2019.
On the basis of EP ‘344, Sangenic filed a European divisional application resulting in EP ‘042 which came into effect in Denmark on 18 June 2012.
Case Proceedings – invalidity
During the proceedings, Lamico argued that there were no substantial differences between the technical features of the Patents-in-Suit and the dependent claim 12 (plus claims 10 and 1) and the dependent claim 4 (plus claim 1), respectively, of the invalidated national patent DK ‘471, and already for this reason the Patents-in-Suit were invalid. In response, the Court stated that there was indeed a significant overlap between the technical features of the claims of the Patents-in-Suit and DK ‘471.
However, the Court did not agree with Lamico that the invalid patent DK ‘471 automatically led to invalidation of the Patents-in-Suit. The Court stressed that the Patent Board of Appeal invalidated DK ‘471 because of lack of novelty of the independent claim 1, but that the Board did not make an individual assessment of the dependent method claims (i.e. claims 4, 10, and 12).
Lamico also argued that the Patents-in-Suit should be declared invalid due to lack of novelty and inventive step. Again, the Court disagreed with Lamico stating that Lamico had shown no grounds for declaring the Patents-in-Suit invalid for these reasons.
Comment: This part of the decision is interesting because of the presumption of validity of granted patents established in Danish case law. The judgment indirectly confirms this doctrine and stresses that the presumption of validity must, as a starting point, be adjudicated for the individual right in question: Even if two rights have substantially overlapping features, invalidation of right 1 does not remove the presumption of validity of right 2, if the authority in revoking right 1 did not in its decision make an assessment of the relevant overlapping features.
The Court does not express a view on whether the presumption of validity of the Patents-in-Suit would have been removed if it had been shown that the Patent Board of Appeal had in fact made an assessment of all the overlapping features in the invalidated DK ‘471.
Case Proceedings – Acquiescence
With the Patents-in-Suit being valid, the Court had to determine whether the patents were infringed by Lamico’s marketing of diaper pail refills. As a defence against Sangenic’s infringement claim, Lamico stated that due to acquiescence Sangenic had lost its right to enforce the Patents-in-Suit. The writ of summons was submitted on 24 April 2015, i.e. more than 6 years after the registration of EP ‘344, and 2 years and ten months after the registration of EP ‘042.
The Court agreed with Lamico that Sangenic had lost its right to enforce EP ‘344 due to acquiescence, but not with respect to EP ‘042.
Comment: This part of the decision is interesting because the Court seems to rule that a patentee cannot always expect that he can wait until the end of pending opposition proceedings until he enforces his patent. When the patent becomes effective in Denmark, “the clock starts ticking”, and the patentee risks losing his right to enforce the patent if the proceedings are not initiated in due time.
Case Proceedings – Infringement
However, the Court found that EP ‘042 could still be enforced by Sangenic, which is why the Court had to consider whether Lamico’s marketing of its diaper pail refills constituted an infringement of the patent. The relevant claims in EP ‘042 were as follows (in the English version published by the EPO):
“1. A waste storage device spool (10) for storing tubular film, the spool (10) having a core portion (12) and pleated tubular film (30) loaded thereon and being characterised by further comprising a shrink-wrapping (34) around the spool and film, and the spool further comprising a funnel (14) at one end, in which spool the end (16) comprising the funnel includes cut-out portions (22).
The Court found that the phrase “cut-out portions” in claim 1 had to be understood as requiring at least two cut-out portions. Accordingly, Lamico’s products did not literally infringe claim 1.
The Court then adjudicated on whether Lamico’s products infringed by means of equivalence. In this respect, the Court followed the basic three-step test for establishing infringement by equivalence under Danish law:
The Court concluded that Lamico’s refill products fell under of the scope of protection of EP’ 042 by means of equivalence and thereby constituted an infringement.
Regarding the first step of the test, the Court ruled that the essential part of the invention was that the funnel comprised by the spool part has one or more (italics here) cut-out portions which ease the breaking of the shrink-wrapping. The Court referred to the description of the patent mentioning the option of having one cut-out portion.
Regarding the second step, the Court ruled that Lamico’s product only deviated from this in a single, non-essential element. The Court disregarded Lamico’s argument that the cut-out portion in its products, according to Lamico, served the purpose of being able to mount a handle.
Regarding the third step, the Court ruled that Lamico’s embodiment was obvious to a person skilled in the art.
Finally, the Court briefly concluded that by marketing its products, Lamico was not merely practicing the prior art or an obvious extension thereof having led to the invalidation of the Danish patent DK ‘471.
As a result, the Court stated that Lamico infringed EP ‘042.
Comment: The decision confirms the basic approach applicable when determining infringement by equivalent means under Danish law. It is interesting that the Court seems to stress that the purpose of having a certain feature in a product is to be determined on an objective basis, and not on why the defendant has chosen to include said feature. Also interesting is that the decision seems – although indirectly – to confirm the existence of a so-called “Gillette defence” under Danish law, i.e. that one does not infringe if one is only practicing what was prior art or an obvious extension thereof.
Case Proceedings – Remedies
The Court granted a permanent injunction against the marketing of Lamico’s products and held that Lamico had to withdraw its products from the market.
The Court did not find grounds for ordering destruction of the products but did not specify any reasons for this.
Sangenic had claimed that Lamico should pay DKK 1,000,000 in damages for the loss and compensation for the exploitation of the invention. The Court, however, awarded only DKK 100,000 in damages to Sangenic. This sum covered both damages and compensation. The Court noted that the information presented to it was insufficient to calculate damages and/or compensation, and that the awarded sum thus had to be estimated using some caution also considering that only EP ‘042 had been infringed.
Comment: An injunction and the recall of products are standard remedies for patent infringement under Danish law. These remedies are rarely refused because of proportionality concerns.
With respect to destruction of the products, the courts are more inclined to take proportionality into consideration, and this is probably also why the remedy was denied in this case.
Concerning the damages, it is standard practices in Danish patent infringement proceedings that damages and compensation are claimed and awarded as a lump sum covering both, where it is not always possible to differentiate between the individual parts.
The decision has been appealed.
You can read the decision (in Danish) here.
Reported by: Michala Kragmann and Peter Nørgaard, Plesner