November 7 2016 Court finds patent on confectionery mass invalid due to lack of inventive step Grau & Angulo | Intellectual Property - Spain Intellectual Property BackgroundGerman caseSpanish caseDecisionIn a June 27 2016 judgment, Barcelona Commercial Court Number 1 upheld Martin Lloveras SA's claim against Sollich KG in its entirety and nullified Spanish Patent ES2383320 (ES'320) for its lack of inventive step.BackgroundMartin Lloveras is a Spanish company which manufactures machinery for the food industry. Sollich is a German company which also manufactures machinery for the food industry, mainly specialising in the confectionery sector.Sollich is the holder of European Patent EP1728435, which was:filed before the European Patent Office using German Patent DE102005024701 (DE'701) as a prior art document; andvalidated in Spain as Spanish Patent ES'320 with the title "process and device for forming a bed of viscous confectionery mass".In 2013 Sollich sent a cease-and-desist letter to Martin Lloveras on the basis that Martin Lloveras was infringing German Patent DE'701 by selling a machine in Germany which, in Sollich's opinion, fell within the patent's scope of protection.As no out of court solution could be reached, Sollich sued Martin Lloveras in the German courts.German caseMartin Lloveras's main defence was that:its machine did not infringe German Patent DE'701; andthe patent should be invalidated by the German court.The German court declared German Patent DE'701 to be invalid. This first-instance decision was appealed and the German infringement procedure has been suspended pending this decision regarding invalidity.Meanwhile, Martin Lloveras brought an invalidity action against Spanish Patent ES'320 before the Barcelona commercial courts.Spanish caseMartin Lloveras's main arguments in the Barcelona Commercial Court Number 1 case were:the lack of novelty of independent claims 1, 2 and 4 based on the application of German Patent DE19908127A1 (DE'127) as a prior art document; andthe lack of inventive step of Spanish Patent ES'320 due to the fact that a skilled person would find a solution to the technical problem using the closest prior art document (ie, German Patent DE'127).Sollich's main arguments were that:the claim that German Patent DE'127, as the closest prior art document, was invalid, as it did not describe a procedure, but rather a device for fluid mass (and not confectionery mass); andwithout considering Patent DE'127, Spanish Patent ES'320 met the novelty and inventive step requirements.Decision Barcelona Commercial Court Number 1, acting in accordance with the Barcelona Commercial First-Instance Court's Patent Section, upheld the invalidity action due to the lack of inventive step and dismissed the lack of novelty.This decision was reached following the method used by the European Patent Office when analysing inventive step – namely, the 'problem-solution' approach – which includes the following considerations:Determining the closest prior art – the court considered that German Patent DE'127 was the invention's closest prior art document. In the court's opinion, this document resolved an identical technical problem to that of the invention when considering confectionery mass to be included in the general term 'fluid mass'.Establishing the objective technical problem to be solved – based on German Patent DE'127, the court determined that it would be obvious to a skilled person (ie, an industrial engineer) that lifting the edges of the tape would be the solution to the problem addressed by the patent.Assessing whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to a skilled person – the court considered that when a skilled person read German Patent DE'127, he or she would recognise the technical problem and, without any invention, would know how to solve it by folding the edges of the tape upwards.In light of the above, the court:upheld the nullity of the 10 claims regarding the ES'320 patent;ordered the cancellation of the patent's registration with the Spanish Patent and Trademark Office; andordered Sollich to pay costs.The Barcelona Commercial Court Number 1 decision is final.For further information on this topic please contact Paula Gutierrez at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected]). The Grau & Angulo website can be accessed at www.gba-ip.com.