In a May 6 2013 decision, Commercial Court No 4 of Barcelona upheld a non-infringement action filed by Vileda against Taiwanese company Dikai International Enterprise Co Ltd and Italian company Orlandi SpA, the owner and licensee respectively of Utility Model ES 1069292. Claim 1 of this utility model protects:

"A device for expelling liquid from an object containing water which comprises: a container with a receptor and an installation part, with a separating unit between the receptor and the installation part; a rotating unit comprising: a supporting part installed in the receptor for holding the object which contains water; and a driving shaft mounted to the installation part and connected to the supporting part; a transmission unit mounted to the installation part and connected to the driving shaft, and a pusher unit connected to the transmission unit; whereby the pusher unit mechanically drives the transmission unit and the transmission unit makes the rotating unit rotate, thus eliminating water from the object."

Click here to view image.

The action derived from cease and desist letters sent by Orlandi to Vileda (and some of its customers), arguing that Vileda's Easywring & Clean device fell within the scope of Claim 1 of Dikai's utility model.

Vileda's main arguments in the proceedings were as follows:

  • Easywring & Clean did not infringe Utility Model ES'292 because it did not have a "pusher unit", as defined in the description and the drawings of the aforementioned utility model; and
  • If this pusher unit was interpreted in a broader sense and encompassed Vileda's rotating action unit device, the utility model must be declared invalid for lack of novelty.

Dikai did not appear in the proceedings. Although Orlandi did, the court did not admit its defence pleading because it was made so late. In spite of this, Orlandi was allowed to provide evidence and even to appoint an expert who intervened during the trial hearing.

The court held as follows:

  • The contribution of the inventor of a utility model to the state of the art is minor compared to the contribution made by the inventor of a patent; thus, the legal system must offer stricter protection to inventors of utility models. This makes it doubtful that the scope of claims may be extended beyond their literal terms, logically interpreted with the description and the drawings.
  • It is not that the model examples limit the protection of the claims; however, these should be interpreted according to the description and the drawings. A utility model must assert an object's concrete spatial form (ie, structure, configuration or constitution); thus, in this case the claims should be interpreted to define the form protected by the liquid-expelling device. A broader interpretation of the concept of the pusher unit would threaten the novelty of the invention and would be disproportionate to its contribution to the state of art.
  • As indicated by Vileda's expert, Vileda's device had no pusher unit, but did have a "rotating action unit", which made its configuration different from Dikai's utility model.

As the court upheld Vileda's first petition (non-infringement), it did not analyse the subsidiary petition (invalidity).

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 (l.morales@gba-ip.com).

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.