On 12 March 2018 the Madrid Court of Appeal (Section 28) confirmed the dismissal of a patent infringement action filed by PERI GmbH against Spanish company Sistemas Técnicos de Encofrados (STEN).

Facts

PERI was the holder of European Patent 0918912 (EP'912), validated in Spain under ES 2145630, which protected a:

Dismountable facade scaffold comprising at least four vertical supports consisting of individual support elements (3, 3', 3") and floor plates (14, 14') and railing elements (18, 18') which can be mounted thereon storey-wise, said railing elements extending between adjacent vertical supports and being fastened thereto at their ends, wherein at least certain support elements (3, 3', 3") have attachment positions (24; 19, 20) for the floor plates (14, 14') and for the substantially horizontally extending railing elements (18, 18') respectively, wherein, when the scaffold is erected, at least one attachment position (19, 20) of a support element (3, 3', 3") provided for a railing element (18, 18') is located above an attachment position (24) of the same support element (3, 3', 3") provided for a floor plate (14, 14') and the railing elements (18'), starting from an already finished storey (A) and in an inclined state with the upper end at the upper attachment position (19, 20) of a support element (3') already belonging to the next storey (B) and already placed onto the associated support element (3) of the storey (A) lying beneath it, can be pivotally connected by a person (12) standing on the already finished storey (A) by direct gripping and moving of the railing element (18) and can be swung vertically upwardly about at least one axis extending substantially horizontally through the attachment position (19, 20) and are then fixable, characterized in that the support elements (3, 3') are separable from one another directly above the attachment position (19, 20) of the uppermost railing element (18) of each storey (A, B, C, D, E) and in that the other end of providing security against unintentional release.

In 2011 PERI sued STEN before the Madrid commercial courts for the infringement of EP'912.

At the end of 2011, STEN filed its defence pleading, in which it argued:

  • the non-infringement of EP'912; and
  • the invalidity of EP'912 due to lack of inventive step in view of the combination of French Patent 2516141 and European Patent Application 0234567.

Decisions

In 2015 Madrid Commercial Court Number 7 upheld STEN's exception and declared EP'912 invalid. As such, PERI's action was dismissed.

PERI appealed the first-instance judgment on the basis of:

  • the first-instance court's failure to:
    • apply the so-called 'problem and solution approach' to determine the inventive step; and
    • assess the evidence of the case properly; and
  • the age of the prior art document as a secondary indicium of inventive step.

As regards the validity of EP'912, the Madrid Court of Appeal revoked the first-instance judgment and declared the patent valid.

As regards the infringement of EP'912, the Madrid Court of Appeal held that:

  • a patent's scope of protection is determined by its claims; and
  • the patent description and drawings must be considered in an interpretation of the claims.

The Madrid Court of Appeal stated that the key element in the case at hand was determining what "fixing position" meant. After analysing the patent, it stated that according to the patent drawings and description, a 'fixing position' is a piece that allows a floor plate to be attached to a supporting element.

According to the Madrid Court of Appeal's analysis, STEN's scaffolding included no element that attached the floor plate to the supporting element. Rather, the structure of the support element itself allowed the floor plate to be attached, without any additional element.

The Madrid Court of Appeal acknowledged that STEN's scaffolding featured a different attachment method to that claimed by the PERI patent. It thus concluded that STEN's scaffolding did not infringe either EP'912's first independent claim or the dependent claims for assembly and dismantling.

This court's judgment is final.

For further information on this topic please contact Julia Carretero at Grau & Angulo by telephone (+34 93 202 34 56) or email (j.carretero@ga-ip.com). The Grau & Angulo website can be accessed at www.ga-ip.com.

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