Enpros International B.V. v. Naesje/Smartseal A.S., proceedings on the merits, District Court The Hague, The Netherlands, June 5 2013, Case No. / Docket No. C09/408756 /HA ZA 11-2804, with thanks to Michiel Rijsdijk, Arnold + Siedsma and Michiel de Baat, Hoyng Monegier, for providing the judgment and a head note
Both Enpros and Smartseal (inventor Naesje) developed a drinking container having a spout with valve that opens upon sucking the spout.
Enpros requested nullification of the (Dutch part of) EP 1 404 587 registered in the name of Naesje based on added matter, novelty and inventive step objections. To overcome the objections, auxiliary requests were filed. One of the prior art documents concerned a non-public (Art 54(3) EPC) prior art. The patent proprietor sought to overcome objections based on this document by introducing a disclaimer in all auxiliary requests. The court allowed three rounds of exchanging validity arguments.
The court dismissed the disclaimer (and consequently all auxiliary requests) as not being clear, referring to G1/03, p.39 and G2/10 p.41/42. As a further argument for not allowing the disclaimer the court specifically pointed out that the patent disclosed an embodiment that would, as a result of the disclaimer, fall outside the scope of protection.
Further claim 1 as granted was extended beyond the original disclosure. Specifically the court saw that features filed in the independent claims as originally filed were deleted during examination. Reference was made to T331/87 (Essential test). The claims as filed included a feature related to pressure sealing, which would allow the opening of the valve by sucking. According to the court an average skilled person would understand that such pressure sealing is essential for the invention to work. Deletion of that feature is therefore not allowed. The court continued to study the 30 dependent claims to find any possible allowable features, but failed, resulting in nullification of the entire patent.
Because this case only concerned the nullity of the patent, the court dismissed the request for awarding procedural costs to Enpros. Reference was made to Bericap/Plastinova CJEU (C-180/11 of 15 November 2012)
Read the judgment (in Dutch) here.