SodaStream Industries Ltd. v. Aarke AB

SodaStream Industries Ltd. (Claimant), based in Israel, is the proprietor of European Patent EP 1 793 917 B1 (the patent in suit), which was filed on 23 August 2005, claiming priority from EP 04023182 of 29 September 2004, and granted with effect in Austria, Belgium, Finland, France, Germany, Italy, and Sweden. Claim 1 of the patent relates to a device for carbonating a liquid contained in a container with a pressurized gas, comprising a flask for receiving the container and a filling head movable between an insertion position and a carbonating position, with locking means (preferably a bayonet connection) for interlocking the flask and filling head.

The Claimant brought an infringement action against Aarke AB (Defendant), a Swedish company, alleging that its 'Aarke Carbonator Pro' sparkling water makers infringed Claim 1 of the patent in suit. The Claimant initially chose German as the language of proceedings, but at the Defendant's request, the President of the Court of First Instance changed the language to English by order of 16 January 2024.

The Claimant's requests included: (I) a declaration of infringement; (II) injunctive relief, information on the extent of infringing acts, surrender/destruction of infringing products, recall from commercial customers, and publication of the decision in five public media and trade journals; (III) a declaration of liability for damages; and (IV) provisional damages.

The Defendant raised a Gillette defense, arguing that Claim 1 lacked novelty or inventive step over prior art, and contested the interpretation of the claims, particularly arguing that the claims should be limited to the specific embodiments shown in the drawings (e.g., a specific shape of the flask).

The Court addressed several key legal points:

1. Claim Interpretation: The Court held that the claim must not be limited to the scope of preferred embodiments. The scope of a claim extends to subject-matter that the skilled person understands as the patentee's claim after interpretation using the description and drawings. A claim interpretation supported by the description and drawings as a whole is generally not limited by a drawing showing only a specific shape of a component.

2. Extent of Protection (Art. 69(1) EPC): The Court emphasized that the extent of protection is determined by the claims, which define the outer limit of the scope of protection. The description and drawings are used to interpret the claims, but prior art is not mentioned there. However, if prior art is discussed in the description of the patent in suit, the relevant considerations must be taken into account. If the patent distinguishes itself from prior art in a particular way, an interpretation that negates that distinction must be avoided.

3. Gillette Defense: The Court rejected the Defendant's Gillette defense, finding that the prior art cited did not anticipate or render obvious the claimed invention.

4. Publication of Decision: The Court held that the right of publication includes a punitive element and should only be granted if the protection of the Claimant is not effectively and sufficiently ensured by other measures ordered. The Court dismissed this request.

The Court found that the Defendant's 'Aarke Carbonator Pro' product infringed Claim 1 of the patent in suit and granted the following orders:

- Declaration that the Defendant infringed EP 1 793 917 B1;

- Injunctive relief (cease and desist) on pain of a fine for each violation;

- Information provision regarding the extent of infringing acts since 20 January 2010;

- Surrender of infringing products or handover to a bailiff for destruction;

- Recall of infringing products from commercial customers;

- Declaration that the Defendant is liable to compensate the Claimant for damages suffered since 20 February 2010;

- Interim award of damages of EUR 250,000.

The Court dismissed the request for publication of the decision in public media and trade journals. The Defendant was ordered to bear the costs of the litigation. The value in dispute was set at EUR 3,000,000.00, and the ceiling for reimbursable representation costs was set at EUR 400,000.00. The orders were made enforceable only after the Claimant notified the Court which parts it intended to enforce, served notification on the Defendant, and provided a certified translation in the official language of the relevant Contracting Member State.