3 December 2024,
Court of Appeal, Shark Ninja Europe Limited v Dyson
Preliminary injunction lifted
Background
On 21 May 2024, the LD Munich (UPC_CFI_443/2023) granted a preliminary injunction (“PI”) against Shark Ninja on the basis of EP 2 043 492 for a handheld vacuum cleaner. With respect to infringement, Shark had argued that it did not fulfil three features of the claim. The LD decided that also these features were literally infringed.
The Court of Appeal
Feature 1.3 of the claim concerns a “cyclonic separating apparatus arranged in communication with the suction conduit for separating dirt and dust from the airflow”. The LD had given this a broad functional meaning. Shark Ninja had argued (among others) that its vacuum cleaner did not have cyclonic separating means, because its apparatus did not create an airflow in a screw form with the aim to cause centrifugal powers which push the dirt via the wall towards a collecting space.
Experts of both parties agreed basically on what a vacuum cleaner with cyclonic separating means was (literally), in the sense that in such apparatus the airflow flows tangential around the inner wall in a screw form, creating centrifugal power that pushes the particles from the wall into a collecting space.
After having viewed the videos showing the path of the particles, the Court of Appeal decided that Dyson had not proven with sufficient probability that it was more likely than not that Shark Ninja was infringing of feature 1.3.
Comment
- Again, a PI granted by the LD Munich is reversed (see also 10x Genomics v Nanostring UPC_CFI_2/2023). Maybe this ends the rush towards the LD Munich, which is anyway overloaded with work, so that we get a better spread over the different divisions of the UPC where there are fewer cases and the promised timeline (a decision in main proceedings within 14 months) can be guaranteed.
- The Court of Appeal used the standard formula: “is it (überwiegend wahrscheinlich) more likely than not that there is infringement?”. The Court of Appeal decided that with respect to claim feature 1.3 this had not been proven by Dyson.
- The Court of Appeal did not (have to) deal with the two other non-infringement arguments and the invalidity challenge.
- Feature 1.3 is not part of the characterizing portion of the claim, which defines the difference with the prior art (and thus – an important part of – the core of the invention). For infringement, all features of the claim (also of the non-characterizing part) have to be realized (but should they always carry the same weight?). The invention disclosed in the patent was to arrange the different parts of a handheld vacuum cleaner in such a way that the vacuum cleaner could be operated easily and comfortably. However, in the description, there was (according to the Court of Appeal) apparently nothing which would give the skilled person the idea that the inventor had meant to protect more than just the application of the invention to a cyclonic vacuum cleaner. I note that in reading the description, I noticed several references to the more generic ‘vacuum cleaner’. All in all, I can also understand the more ‘functional’ approach of the CFI.
- An important case (lesson?) for patent attorneys with respect to claim drafting?
3 December 2024,
Local Division Düsseldorf, 10x Genomics v Curio
Security for costs
Background
The claimant won PI proceedings. In the case on the merits, the claimant now requests security for costs. It argued that Curio (the defendant) had stated that if it lost the PI (which it did) that would have a devastating effect, because (among others) Curio was a one-product company. Moreover, a cost order would be difficult to execute, because Curio was a US company.
Curio argued that a claimant cannot ask for a security for costs. That can only be done by a defendant.
Decision of the LD
- Art. 69(4) UPCA only provides for security for costs for the defendant, but the Rules of Procedure (R. 158.3 RoP) for both parties.
- This is not a conflict between the UPCA and the Rules of Procedure, but only an extension of the possibility to ask for security for costs to a claimant.
- The LD orders the defendant to provide security at the amount of € 200.000.
Comment
Did the drafters of the UPCA not think about the possibility that the defendant cannot pay the costs? In my opinion, that seems unlikely. Was it then a conscious choice to make it impossible for a claimant to ask for security? The claimant decides whether to sue or not. In doing so, the claimant can take into consideration the risk that the defendant will be unable to pay the costs. The defendant on the other hand has no choice. What about a defendant who is not infringing a valid patent, but gets a default judgment against it because it cannot provide security. We wait for the decision of the Court of Appeal!
– All comments above are Prof. Hoyng’s personal opinions –
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