Claim interpretation at the UPC – no need for a Gillette Defence

A recent decision in an infringement action brought by SodaStream against Aarke at the Duesseldorf Local Division (here) has shed light on the likely application of the so-called “Gillette defence” at the UPC. The Gillette defence is a principle that originates with a decision of the UK Courts back in the early twentieth century – broadly allowing a defendant in an infringement action to argue that if the proposed infringement matches the prior art it cannot be validly covered by the patent.

In this case, Aarke had raised the Gillette defence, arguing that their embodiment matched, to all essential purposes, prior art that had been acknowledged in the patent being asserted – and therefore that the claims must be interpreted to exclude coverage of the proposed infringement. The Dusseldorf local division did not buy the argument, and the reasoning appears sceptical of the utility/existence of such a defence in principle.  Claims are to be interpreted in accordance with Article 69 EPC and the protocol to it, with no separate room for the introduction of the prior art into the analysis. That said, since these provisions allow the use of the description to interpret the claims, where the description contains reference to the prior art (as in this case) it may nevertheless be relevant. In the court’s view, therefore, there is no Gillette defence per se, in part because other provisions provide the necessary protection: as the court put it “there is no additional room for a Gillette defence understood in the way the Defendant presented it” (our emphasis).

In the case at hand, the point was somewhat academic. Aarke’s argument had been that the claim feature of a “flask” did not encompass the proposed infringement, partly because it should not be interpreted so broadly as to also encompass the equivalent feature in the admitted prior art. But the court ultimately found this not to be an issue, finding an interpretation of the feature which captured the infringement but not the prior art. Thus, even if the court had accepted the principle of a Gillette defence, it appears it would not have applied.

Ultimately then, invocation of the Gillette defence in this particular case was both superfluous (since the prior art’s presence in the description meant it was relevant through Article 69 EPC) and weak on its merits. That said, the court’s guidance on the question may have broader applicability. In particular, the decision confirms that it would be foolhardy for a party to rely on a Gillette defence or any other argument of interpretation based on prior art that was not cited in the patent; rather the defendant should protect themselves in this case through the filing of a counterclaim for revocation based on that art. Indeed, even in the circumstances of Sodastream v Aarke, it is an open question whether a counterclaim for revocation based on the cited art may have succeeded – the court’s interpretation of the claims implies a finding of novelty but does not address questions of obviousness.

More broadly, one can see in the decision a reluctance to show undue deference to principles developed in national court systems; the UPC has its own legal structure and will develop its own doctrines. Parties should not rely on assumptions borne from the national procedures they are familiar with, but should be ready to develop arguments from first principles. Finally, we can see an emerging trend on claim interpretation; features of the claims are interpreted within the context of the invention as a whole, with an eye on their functional purpose and not just dictionary definitions