Friday, 11 October 2013

Nespresso European Patent Revoked

Following my previous post on the subject of the appeal case in T 1672/12, the hearing for which was held in Munich over the past couple of days, a press release from Nestec has announced that the Board of Appeal has decided to revoke the patent (thanks to IPCopy for prompting me with a link). Nestec's press release states:
Nestlé Nespresso SA acknowledges the decision today of the Appeals Board of the European Patent Office (EPO) to revoke a patent related to the Nespresso system. The decision overrules a decision by the EPO [opposition division] from April 2012, which maintained the patent in an amended form. We believe that the decision fails to recognise the unique innovations inherent in the design of the Nespresso system. 
While disappointing, the ruling does not have any impact on the current competitive situation. Nespresso has brought legal cases against producers of generic capsules, although there are currently no prohibitions on their sale based on this patent. The decision, therefore, does not change the status quo. 
The protection of our intellectual property is an important component of our business strategy. However, our success will continue to be driven by our ability to exceed consumer expectations by delivering products and services of exceptional quality. This focus has allowed us to maintain our position as the reference in the portioned coffee category and it is why consumers continue to choose the unique Nespresso experience over the 100 other portioned coffee offerings in the market globally. 
We will await the written decision of the EPO ruling before determining next steps in the pending legal cases.
This presumably means that the Board has decided not to refer the partial priority issue to the Enlarged Board, which is doubly disappointing. The reasons behind the Board's decision will not be known until the written decision issues, which could take a few months. It will certainly be interesting to see how the Board managed to tackle (or perhaps avoid?) the issue.

UPDATE 19 October 2013: I have heard from a very reliable source that the issue of partial priority did not come into play at the hearing. The deciding factor was instead that of added matter (Article 123(2) EPC). The Board got no further than this, deciding to refuse all requests on this basis and revoke the patent.

UPDATE 22 November 2013: The minutes of the oral proceedings have now appeared on the EP register here. The minutes confirm that the patent was revoked for not complying with Article 123(2). The Board stated:
"Après délibéré, la chambre a conclu que l'objet de la revendication 1 selon la requête principale ne satisfait pas aux exigences de l'article 123(2) CBE, en particulier du fait de la suppression de deux caractéristiques ("position intermédiaire selon un axe de manière décalée et/ou inclinée" et- "la capsule asymétrique"), et du rajout des deux caractéristiques finales prises en isolation dans la description (collerette passe "en dessous des moyen d'arrêt" et "de façon à ce que dans son mouvement, la partie mobile agisse sur la capsule pour la descendre")"
UPDATE 6 January 2014: The decision has now issued, and has been expertly summarised here at K's Law. Not a word about toxic priority, of course.


  1. I hope the decision goes into some detail on the priority point - unless there's some killer prior art that just anticipates everything, in which case it's a fair cop.

    However, it's a little disappointing, first because I think there is a clear divergence in the application of G2/98. I wonder if Nestec will file a petition for review by the EBA, but unless there's been a violation of their right to be heard then I don't think that will happen.

    It's interesting to note looking back over all the case reports I've amassed that Kitchin J did actually quote all of the discussion on "AND" and "OR" claims in view of Memo C in G2/98. With the utmost respect, I do wonder if Arnold J read the Memo, particularly, as has been mentioned a number of times on this blog and elsewhere, the pipes example, because that is directly analogous to the housing and its relation to the first part and its second part.

    Clearly this issue is a sticking point for Judges here in England and Wales, for example with the HTC case (high-level programming languages being Java, or any language except Java, was it?).

    So it's secondly disappointing because I would like to see what the Court of Appeal have to say on the matter. I assume that as the patent has been revoked, the case dies.

  2. The patent was revoked due to extension of subject matter. A representative of one of the opponents.

    1. That would explain it. Added matter is usually the first thing to be tackled. If the patent failed at that stage it would have been game over.

  3. Unfortunately I do not know if I'll ever get around to writing the (non-)promised guest blog with my thoughts on T 1222/11 and the relevance of the Memorandum, but I noticed that one of the opponents already did an excellent job (but in French).

    See section 2 of the 12-page letter of 09.09.2013 in the electronic file.

    1. Thanks for the prompt. My latest post sets out the opposing view. I hope I have not made too many mistakes in my translation.

    2. Very nice job!