SodaStream triumphs over Aarke at UPC local division Düsseldorf

Aarke may not market its carbonators in several European countries. The UPC local division in Düsseldorf has found the product infringes a patent held by SodaStream.

 

The Israeli manufacturer SodaStream is best known to consumers as the maker of carbonation products of the same name. It owns EP 1 793 917, which protects “a device for carbonating a liquid with pressurized gas”. The patent is in effect for Austria, Belgium, Finland, France, Germany, Italy, and Sweden.

 

SodaStream claims the Aarke Carbonator Pro line infringes EP 917 and thus sued the Swedish company at the local division Düsseldorf. Instead of responding with a nullity counterclaim as is usually the case, Aarke filed a nullity objection.

 

 

This so-called Gillette defence, named after a case in the UK from 1913, is a way of arguing non-infringement by proving invalidity without requiring the patent claims to be construed. The defendant argues that its alleged infringing actions are part of the prior art. Therefore, either the patent is invalid for claiming the prior art or, if the patent is valid, the defendant does not infringe.

 

This objection is not recognised in Germany, but is recognised in numerous other European jurisdictions. For example, although there is no case law recognising the Gillette defence in Sweden and Denmark, there is doctrine supporting its admissibility in both jurisdictions.

 

SodaStream argued that the Gillette defence is not in accordance with the UPCA and thus not admissible before the UPC. According to the claimant’s view, allowing a Gillette defence would mean that the division would have to examine whether the asserted claim of the patent-in-suit is patentable in light of the prior art.

 

The plaintiff argued this is contrary to the UPCA, which does not provide for the use of a Gillette defence in infringement proceedings. Instead, a revocation action or EPO opposition are the typical means for a defendant to assert that a patent is invalid.

 

The court found the Gillette defence, as invoked by the defendant, to be inadmissable in the current case. The judges around presiding judge Ronny Thomas came to the conclusion that Aarke infringes EP 917 (case ID: UPC_CFI_373/2023, ACT_580849/2023). They imposed a recall and a sales ban in the seven UPC countries where the patent is valid.

 

According to JUVE Patent information, Aarke is preparing an appeal.