On April 11 2014 the Barcelona Commercial Court 4 dismissed a complaint filed by Oatly AB against oat milk manufacturer and seller Liquats Vegetals, SA and Casa Santiveri, SL, Productora Alimenticia General Española, SA and Nutrición & Sante Iberia, SL – all of which were customers of Liquats and sellers of oat milk.
Oatly claimed infringement of, among others, the product-by-process claim of its Patent EP0731646 – ES2154684 (ES'684) related to oat milk and its manufacture. It argued that although it had no knowledge of the process which Liquats used, given that Liquats' product was supposedly equal to the product claimed in the patent, the defendants had infringed its product-by-process claim and other claims.
Oatly based its complaint on a broad interpretation of a product-by-process claim, whereby such claims are interpreted as product claims. As there is no Spanish case law on such claims, Oatly cited two decisions of the German courts and certain decisions of the European Patent Office (EPO).
The defendants argued as follows:
- Liquats' manufacturing process differed from the patented process.
- As a result of this difference, the oat milk produced through this process differed from that covered by the aforementioned product-by-process claim.
- In particular, Liquats' process included the use of a β-glucanase enzyme, which was something expressly excluded by the patentee before the EPO. β-glucanase is an enzyme whose function consists of cutting β-glucan chains (which triggers the formation of glucose). This meant that the oat milk resulting from Liquats' process did not have intact β-glucans from the starting material and had a higher amount of glucose.
The defendants thus based their arguments on a narrow interpretation of a product-by-process claim. The defendants cited case law from the UK and US courts in support of their arguments.
The Barcelona Commercial Court 4 dismissed the complaint, upholding the defendants' arguments.
The court agreed with the plaintiff's argument that product-by-process claims are admitted only in cases in which a product can be defined in no other way than by describing its manufacturing process. In the court's opinion, however, there was a contradiction between this argument and the plaintiff's contention, at the same time, that a product-by-process claim protects the product itself regardless of the process.
The court therefore analysed both processes and identified two differences between them. Of these, the most relevant was that Liquats' process used a β-glucanase enzyme, which was expressly excluded by the patentee during examination of the patent and opposition proceedings before the EPO.
As a result of these differences, the oat milk manufactured by Liquats was different from that covered by Oatly's patent, as it did not have intact β-glucans from the starting material (as claimed). There was thus infringement of neither the product-by-process claim nor the rest of the claims of ES'684.
The court ordered Oatly to pay the court costs.
For further information on this topic please contact Ana-Laura Morales at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (firstname.lastname@example.org). The Grau & Angulo website can be accessed at www.gba-ip.com.