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25 March 2019
On 8 February 2019 the Barcelona Court of Appeal confirmed the January 2018 Barcelona Commercial Court Number 5 decision which had declared European Patent 1.472.156 (Spanish Patent 2.260.626) (EP'156) and European Patent 1.808.382 (Spanish Patent 2.407.963) (EP'382) – both of which related to Nescafé Dolce Gusto capsules – to be valid and infringed by Fast Eurocafé SA.
Société des Produits Nestlé, SA is the holder of EP'156 and EP'382, both of which protect the capsules of the well-known Nescafé Dolce Gusto system.
Patent EP'156 protects:
a capsule designed to be extracted by injection of a fluid under pressure in an extraction device, containing a substance for the preparation of a beverage, comprising a closed chamber containing the said substance and a means allowing the said capsule to be opened at the time of its use and for allowing the said beverage to flow out characterized in that opening is achieved by a relative engagement of the opening means with a retaining wall of the closed chamber and in that the relative engagement is performed under the effect of the rise in pressure of the fluid in the chamber.
The wording of EP'382 is very similar.
Since May 2015, Fast Eurocafé had been importing and selling beverage capsules which were compatible with the Nescafé Dolce Gusto system.
In January 2016 Nestlé filed a patent infringement action against Fast Eurocafé based on the abovementioned patents. At that time, Fast Eurocafé had launched two different types of capsule in the market:
Nestlé's main arguments were that the V1 and V2 capsules both fell within the scope of protection of EP'156 and EP'382.
Fast Eurocafé's arguments were as follows:
On 9 January 2018 Barcelona Commercial Court Number 5 declared that both of Nestlé's patents were valid and had been infringed by Fast Eurocafé.
Fast Eurocafé appealed the judgment. Nestlé opposed the appeal.
On 8 February 2019 the Barcelona Court of Appeal dismissed Fast Eurocafé's appeal and confirmed the judgment of Barcelona Commercial Court Number 5.
The main discussion in the appeal decision focused on the interpretation of the patents' scope of protection, on which the parties had disagreed.
The Barcelona Court of Appeal declared that claims must be interpreted according to the description. As Claim 1 of EP'156 does not specify that the capsules must be torn or punctured, but rather that the opening can have any shape or mechanism (of which the claim mentions several), the court held that Fast Eurocafé's interpretation of the claim had been incorrect.
As regards Claim 1 of EP'382, the court considered that although the claim specifies the tearing feature, as the description expressly states that the word 'tearing' must be understood in a broad sense, Fast Eurocafé's interpretation was unjustified.
Thus, the Court of Appeal confirmed that the controversial V1 and V2 capsules fell within the patents' scope of protection. With this decision, the court ratified its 18 May 2017 prima facie decision issued in the preliminary injunction proceedings of this case, in which it had granted the preliminary injunction measures requested by Nestlé.
In the present judgment, following an in-depth analysis of both parties' evidence, the Barcelona Court of Appeal held as follows:
As regards the nullity actions filed by Fast Eurocafé, the Barcelona Court of Appeal completely dismissed the defendant's arguments in full, finding the patents to be valid over the state of the art invoked in the counterclaim.
Considering the importance of the Nescafé Dolce Gusto system for Nestlé and the increased interest among competitors in commercialising compatible capsules, this judgment is of paramount importance as it confirms:
Fast Eurocafé has filed an extraordinary cassation appeal against this judgment to bring the case to the Supreme Court.
For further information on this topic please contact Ana-Laura Morales at Grau & Angulo by telephone (+34 93 202 34 56) or email (firstname.lastname@example.org). The Grau & Angulo website can be accessed at www.ga-ip.com.
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