On May 13 2013 Section 15 of the Barcelona Court of Appeal rendered a judgment confirming that issued by Barcelona Commercial Court No 6 regarding the infringement of Llaza SA's patent. The judgment partially upheld the appeal filed by defendants Iaso, SA and Bat Accessories Corporation, SL regarding the compensation awarded at first instance.
Llaza - the holder of Patent 2099406 for "cloth carrying assembly for canvas awning with adjustable inclination", the Spanish validation of European Patent 593 389 - sued Bat and Iaso for commercialisation of the Base Plus product.
This was not the first time that Llaza had sued Iaso for infringement of the same patent. In the first lawsuit, the defendant denied the infringement and filed a counterclaim seeking invalidation of the patent. Both the first and second instance courts dismissed the invalidation action and upheld the infringement action.
In the case at hand, Iaso and Bat sought to invalidate the patent (not via counterclaim) based on documents that were not presented in the first lawsuit. They did not deny the patent infringement, but merely alleged that Llaza's patent was invalid.
At the preliminary hearing, the defendants attempted to submit an opinion on the lack of infringement, which was refused as it was time barred.
At trial, the defendants attempted to present expert evidence regarding the alleged differences between the cBase Plus product and the patent. However, having been warned by Llaza, the judge did not allow such evidence because it would have meant an untimely extension of the defendant's expert opinion.
In the written conclusions, Iaso and Bat devoted a section to denying the infringement. Llaza asked the court not to take these allegations into account because they were untimely and this would result in a lack of defence. The court agreed with Llaza's request.
Barcelona Commercial Court No 6 issued a judgment in which, after declaring the patent's validity, it upheld Llaza's claim, stating that the offer and sale of the defendants' Base Plus product infringed the invoked patent and ordering the defendants to pay compensation.
Iaso and Bat appealed the judgment. In the appeal they:
- insisted on the invalidity of the invoked patent;
- made allegations regarding non-infringement of the patent; and
- requested a reduction in compensation.
First, Section 15 of the Barcelona Court of Appeal confirmed that in the response to the complaint, there was more than a tacit admission that Bat and Iaso's product infringed the patent because the sole opposing argument was the invalidity of the patent.
On this issue, the court stated that the allegations relating to non-infringement of the patent, introduced ex novo on appeal by the defendants, were inadmissible because their consideration would be contrary to the right of defence of the other party and to the reviewing function of the appeal (Article 456 of the Civil Procedure Code).
As regards the alleged invalidity of Llaza's patent, the court dismissed the defendants' request. Regarding the company catalogue which was cited as a precedent, the court confirmed that public accessibility to the catalogue before the priority date of the patent had not been proven; therefore, a comparative examination should be rejected. With regard to a French patent, after analysing the expert and documentary evidence, the court agreed with the commercial court's conclusion and stated that the lack of novelty and inventive step of Llaza's patent had not been proven because, although there were similarities between the two patents (both referred to jointed awning supports), the differences highlighted by the experts were valid.
Finally, regarding the compensation fixed by the commercial court, the appeal court accepted only the defendants' last objection:
- The appeal court confirmed that in order to calculate the compensation, both awning models - Base Plus 08 and 09 - had to be considered, as in the response to the claim, Iaso and Bat did not discriminate between the two models.
- The court did not support Bat and Iaso's argument that it had not been proven that Llaza's Strobox 250 and 300 supports reproduced the subject matter of the patent, as they admitted this in their response to the complaint by not objecting to this point of the claim.
- Regarding the compensation amount, the court accepted the defendants' argument, admitting that the supports could be sold separately, (ie, without one of the non-infringing components (canvas)) and that this therefore reduced the compensation for loss of profits.
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