SodaStream triumphs over Aarke at UPC local division Düsseldorf

The Israeli manufacturer SodaStream is best known to consumers as the maker of carbonation products of the same name. It owns EP 1 793 917, which protects “a device for carbonating a liquid with pressurized gas”. The patent is in effect for Austria, Belgium, Finland, France, Germany, Italy, and Sweden.

SodaStream claims the Aarke Carbonator Pro line infringes EP 917 and thus sued the Swedish company at the local division Düsseldorf. Instead of responding with a nullity counterclaim as is usually the case, Aarke filed a nullity objection.

Defence from 1913

This so-called Gillette defence, named after a case in the UK from 1913, is a way of arguing non-infringement by proving invalidity without requiring the patent claims to be construed. The defendant argues that its alleged infringing actions are part of the prior art. Therefore, either the patent is invalid for claiming the prior art or, if the patent is valid, the defendant does not infringe.

This objection is not recognised in Germany, but is recognised in numerous other European jurisdictions. For example, although there is no case law recognising the Gillette defence in Sweden and Denmark, there is doctrine supporting its admissibility in both jurisdictions.

SodaStream argued that the Gillette defence is not in accordance with the UPCA and thus not admissible before the UPC. According to the claimant’s view, allowing a Gillette defence would mean that the division would have to examine whether the asserted claim of the patent-in-suit is patentable in light of the prior art.

The plaintiff argued this is contrary to the UPCA, which does not provide for the use of a Gillette defence in infringement proceedings. Instead, a revocation action or EPO opposition are the typical means for a defendant to assert that a patent is invalid.

The court found the Gillette defence, as invoked by the defendant, to be inadmissable in the current case. The judges around presiding judge Ronny Thomas came to the conclusion that Aarke infringes EP 917 (case ID: UPC_CFI_373/2023, ACT_580849/2023). They imposed a recall and a sales ban in the seven UPC countries where the patent is valid.

According to JUVE Patent information, Aarke is preparing an appeal.

The Israel-based claimant SodaStream instructed a mixed German team from Hogan Lovells. The international law firm came to the instruction via existing contacts to SodaStream’s parent company Pepsico.

Lead partners and litigators were Andreas von Falck and Alexander Klicznik. Associates Diana Rodriguez, Lars-Fabian Blume and Lea Gröblinghoff assisted. Klicznik and Blume, who are both dual qualified as lawyer and patent attorney, also provided support in technical questions. The team cooperated with SodaStream’s general counsel Liat Alon and the company’s head of global employment law Efrat Siboni. Both were present at the oral hearing.

Hogan Lovells is highly active at the UPC. For example, it defended Meril Life Sciences against claims made by Edwards Lifesciences. Gulliksson represented the latter. The team also represented Oppo against SEP claims by Panasonic at the Munich local division, and before German national courts until the parties settled in October.

Hogan Lovells conducts many of these UPC proceedings with internationally composed teams. This was not the case in the recent dispute against Aarke.

The Swedish defendant relied on an IP team from Gulliksson, with whom the company has worked in the past. The team representing Aarke included partners Jens Olsson, who was in the lead, Emelie Rexelius and Magnus Dahlman, as well as patent attorney Christian Arkelius from patent firm Ström & Gulliksson. Niclas Ihrsén, general counsel at Aarke, was also on the team.

The full-service firm is a household name in patent litigation in Sweden and is also active at the UPC for Edwards Lifesciences as plaintiff against Meril at the Nordic Baltic regional division.

Gulliksson also demonstrated its presence in pan-European cases for German electronics group BSH in a dispute with Electrolux over vacuum cleaners at the CJEU.