SodaStream case: UPC decides on ‘Gilette defence’ for the first time

According to patent experts at Pinsent Masons, this is another decision which helps to advance the UPC’s approach to patent claim construction.

“The ruling is interesting as it provides further clarity to businesses as to how the UPC will interpret patent claims,” said Sarah Taylor, a patent law expert at Pinsent Masons. “It is also of interest that it is the first time that the UPC has dealt with whether or not defendants in infringement proceedings can make use of the ‘Gillette defence’, and highlights the potential interaction between UPC and UK patent law.”

SodaStream is the owner of European Patent EP 1 793 917 which relates to a device for carbonating water and other liquid contained in a container with a pressurised gas. The invention covers a flask for receiving the container which locks together with a filling head. The aim is to protect the container and prevent shattering while the liquid is being carbonated.

The patent was initially opted out of the UPC, but the opt-out withdrawn in October 2023 and, shortly after, SodaStream issued infringement proceedings against Aarke before the Dusseldorf Local Division. Aarke denied infringement, but did not counterclaim for revocation of the patent, meaning that this was an infringement action only.

While both companies are known for selling carbonating devices for turning tap water into sparkling water, SodaStream is a large multi-national owned by PepsiCo, whereas Aarke is a far smaller, newer Swedish company founded in 2013. Due to their relative sizes, early on in the proceedings Aarke successfully argued that the language of the proceedings should be changed from German to English, with the court agreeing that undertaking the proceedings in a language which Aarke did not use in its daily activities would cause it a significant imbalance.

“The decision on the merits was handed down in October 2024,” said Taylor “maintaining the UPC’s run of – so far - handing down first instance decisions within approximately 12 months of proceedings being issued.” 

How the court should interpret the claims – in particular, the meaning of the word ‘flask’ in the relevant claim, claim 1 of the patent – was the primary focus of the dispute, underpinning Aarke’s non-infringement arguments.

The court adopted the now widely accepted UPC Court of Appeal guidance to claim interpretation as set out in 10x Genomics v NanoString, that the claims are the decisive basis for determining the scope of protection of the patent, and emphasising that the description and drawings must be used to as explanatory aids to help interpret the claims.

Two notable points on claim interpretation arise from the court’s decision.

The Dusseldorf Local Division found in this case that the prosecution history should not be used to assist with claim interpretation because it is not referred to in article 69(1) of the European Patent Convention (EPC) – which provides that the extent of protection of a European patent is determined by the scope of its claims, and the description and drawings in the patent should be used to interpret them. 

“This is in consistent with the Dusseldorf Local Division’s refusal to refer to the prosecution history to aid claim interpretation in the earlier preliminary injunction application in Ortovox v Mammut” said Taylor, “but in contrast to the Munich Local Division’s decision in Philips v Belkin where it was permitted, as well as in the preliminary injunction decision in SES-imagotag v Hanshow on which, on appeal, the Court of Appeal declined to comment. The use of prosecution history in claim interpretation has not yet arisen before a non-German UPC division, and it will be interesting to see how they, and ultimately the UPC Court of Appeal, approach this issue.”

In further refining the UPC’s approach to claim interpretation, the local division found that where ‘prior art’ is referred to in a patent description, it may be used to help interpret the claims, and the claims should not be interpreted in such a way that negates that distinction. The court noted that the description usually discusses the alleged invention as an improvement over cited prior art documents, and consideration should be given to any deficiencies in the prior art that are highlighted in the patent. In this case, the prior art was used in the patent description to identify a deficiency in previous carbonation systems where, if a glass container were used, there was a risk of glass escaping if it burst.

The court interpreted ‘flask’ broadly, and found that the prior art did not disclose the flask as claimed.

Taylor said: “Perhaps one of the most interesting aspects of this decision is the fact that, as part of its defence to the allegation of infringement, Aarke raised the Gillette defence.”

The ‘Gillette’ defence arises from a 1913 English patent decision, Gillette Safety Razor co v Anglo American Trading Co. It is a type of “squeeze” argument, that provides that if the product or process used by an alleged infringer falls within the scope of a patent claim, but that product or process would have been known or obvious at the priority date of the patent, that claim must be invalid for lack of novelty or inventive step. It therefore acts as a defence to patent infringement, because it is not possible to infringe a patent that is invalid.

Relying on this, Aarke argued that the court should not interpret claim 1 so broadly as to also cover the prior art cited in the patent. It argued that the court should assess infringement on the basis of a comparison between Aarke’s allegedly infringing device and the prior art – rather than a comparison of the patent and prior art as required for assessing validity.

SodaStream argued that allowing a Gilette defence would mean that the court would have to examine whether the asserted claim is valid in the light of the prior art. However, Aarke had not issued a counterclaim for revocation of SodaStream’s patent, and if it intended to challenge the validity of the patent it should do so properly, via a UPC revocation action or EPO opposition.

The Local Division said that, although article 69(1) of the EPC does not expressly refer to the use of prior art in construing patent claims, that does not mean that it is irrelevant. If prior art is discussed in the description, those relevant considerations should be taken into account. For example, if the patent distinguishes itself from the prior art in a particular way, an interpretation that negates that distinction must be avoided.

In this case the court found that it had taken into account the prior art cited in the patent when interpreting the claims. Aarke’s device infringed on the basis of a literal interpretation of the claim, and found that the Gillette defence failed. 

“The court decided that there was no basis at the UPC for the Gillette defence in the manner in which Aarke had presented it,” Taylor said. “But this does not necessarily mean that it will not be available where both infringement and validity are in issue, where an analysis of validity challenges can act as a cross-check to the court’s overall findings.”

“However, it is also worth reiterating that the Gillette defence arises from an old UK case.  Whether the UPC will be influenced by an old UK decision remains to be seen, but the fact that solutions derived from UK case law are being deployed before the UPC will be of interest to businesses and practitioners alike. It is also worth noting that this is a decision of one UPC division, and other divisions or the Court of Appeal may take a different approach – time will tell,” she said.