NL - Street Surfing LLC v. Alcom Computer Products B.V.

Street Surfing LLC v. Alcom Computer Products B.V. ,  preliminary injunction proceedings, The Hague District Court, The Netherlands, 2 December 2009, Docket No. 345784 / KG ZA 09-1122

An unregistered license can form the basis of an enforcement action against a third party if the third party, as currently is the case, is aware of the existence of the license (Art. 56 Dutch Patent Act). 

After applying the problem/solution approach the court concludes that additional inventive work from the skilled person is needed to get to the invention of the Patent.

A cross border injunction is granted as the claim for such an injunction was not contradicted. 

Read the judgment (in Dutch) here.

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Street Surfing LLC ("Street Surfing") is licensee under European patent EP 1 511 54 ("Patent"), owned by Razor USA LLC. The Patent relates to a skateboard comprising two boards which are interconnected by a flexible element.

Alcom Computer Products B.V. ("Alcom") sells Waveboards on two of its websites. Street Surfing seized a shipment of these Waveboards destined for Alcom and filed for an injunction based on infringement accompanied by a number of ancillary claims. Alcom in turn demands that the seizure be lifted.

The court rejects Alcom’s first argument that an unregistered license (Art. 56 DPA) cannot form a basis for an enforcement action by stating that an unregistered license can be used for such an action if the third party -as currently is the case- knows about the license. Alcom further (unsuccessfully) states that the patent is to be held invalid in a procedure on the merits because of added matter, non-enabling disclosure, lack of novelty and lack of inventive step.

In assessing inventive step, the court applies the problem-solution approach and first determines that the closest prior art is a document which discloses a skateboard consisting of two parts, but with conventional wheels, or a pivoting wheel on one side. The problem to be solved, according to the court, is how to enable an unskilled rider to accelerate the board without his feet touching the ground and how to increase steerability. The two combinations of prior art documents that are discussed do either not disclose anything about accelerating the board, or they do not disclose that the rear wheel should also be a pivoting wheel which is placed under an acute angle. Therefore the court holds that additional inventive work from the skilled person is needed to get to the invention of the Patent.

With regard to infringement, only invalidity of the Patent was (unsuccessfully) pleaded as defence. Alcom further left Street Surfing's motivated claim for a cross-border injunction uncontradicted and therefore the court grants the injunction for all countries designated in the Patent. Street Surfing’s ancillary claims are dismissed because of lack of urgent interest. Alcom is ordered to pay the costs of the proceedings made by Street Surfing, to an amount of € 55 757 74.