LARROSA v. SOLA, Court of Appeals of Barcelona, Section 15, Judgment of 7 March 2024, Case no. ECLI:ES:APB:2024:2817
Both parties to the proceedings, LARROSA ARNAL S.L. (hereinafter “LARROSA”) and MAQUINARIA AGRÍCOLA SOLA, S.L. (hereinafter “SOLA”), were Spanish companies engaged in the manufacture of agricultural machinery.
LARROSA brought before the Barcelona Commercial Courts a declaratory action of non-infringement regarding SOLA’s patent EP2742787 (validated in Spain as ES2570571), against which SOLA counterclaimed for infringement. LARROSA then brought a separate patent invalidity action, which the Court decided to join to the first infringement proceedings.
In the first instance, Barcelona Commercial Court no. 4 declared the patent to be invalid for lack of inventive step. The judgment was, however, overturned on appeal for the reasons explained below.
Interpretation of the patent’s scope of protection
The parties differed on the interpretation of feature C1 of independent claim 1 of SOLA’s patent ES2570571 (hereinafter “ES571”):
C1: Frame (1) for a cereal seeder of the type of those where the seeds are distributed from the hopper (9) to the furrow by gravity, comprising
C2: a chassis (2a,2b) provided with a plurality of sowing elements (4) of said seeder,
C3: said chassis (2a,2b) comprising a plurality of support arms (3) of said sowing elements (4),
C4: said support arm (3) being disposed substantially parallel in a same horizontal plane,
C5: each sowing element (4) of said support arms (3) determining a sowing line of said seeder,
C6: characterized in that said arms (3) comprise at least one telescopic portion (3a) susceptible of being horizontally extended from a transport position to an expanded working position
C7: and in that said frame (1) includes at least one fluid-dynamic cylinder (5) to actuate the telescopic portion (3a).
The first-instance judgment considered that patent ES571 protected mechanical cereal seeders, a category including “steady-flow” seeders and “single-grain” seeders.
As explained in the judgment, mechanical seeders are those in which the seeds are distributed from the hopper to the furrow by gravity, as opposed to pneumatic seeders, which feed their seeding elements not from the hopper by gravity, but rather through a pneumatic system which is always located between the seed hopper and the seeding elements.
Both mechanical (gravity) and pneumatic seeders can be either “steady-flow” seeders or “single-grain” seeders. With steady-flow seeders, the seeds fall from the central storage hopper into the furrow, continuously and forming a constant line, while single-grain seeders deposit the seeds into the furrow, grain by grain, intermittently and by leaving some distance between grains.
However, contrary to the first-instance judgment, SOLA argued that the skilled person reading the patent description and figures, and particularly in view of the technical problem that ES571 seeks to solve, would understand that the patent only protects mechanical seeders. SOLA argued that it was clear from the description that the problem which the patent sought to solve (extending the working width of the machine within the limits of rad transport width) could only be solved by mechanical “steady-flow” seeders, given that any skilled person reading the patent would have understood that the patent itself recognised that such a technical problem had already been solved in the past for single-grain mechanical seeders.
The Court of Appeals agreed with SOLA and considered the interpretation of the scope of protection made by the first-instance judgment to be erroneous because it carried out “a reading that disregards the description and the drawings”, adding that “a specific representation or example of the description cannot be interpreted as limiting the scope of protection of the disputed claim, but this is not the case. The part of the description on which we rely refers to the subject matter of the invention and not to a specific embodiment, and therefore cannot be disregarded in order to interpret an element whose scope is doubtful“.
The Court also indicated that: “the interpretation of the claim requires, in general, a straight, intelligent and reasonable reading of the document as a whole. Straightforward means that it must not be biased by the interest of declaring the patent invalid, as the plaintiff has done. It must also be a technical and intelligent reading, not reduced to what a layman would do, but what an expert would do. And, finally, a reasonable reading, which tries to make sense of all the claims and the description and does not intentionally forget important technical data, which must be given meaning in the document as a whole“.
Patent invalidity
The plaintiff, LARROSA, raised two attacks for lack of novelty in view of two documents, D1 and D2. However, they were directly dismissed by the Court of Appeals, as they referred to single-grain-mechanical seeders. Having ruled out the lack of novelty on this ground, the Court went on to analyse LARROSA’s first attack on inventive step based on another document, D3: patent ES2344818, as the closest prior art.
Against this attack, SOLA argued that D3 ES2344818 could not be considered the closest prior art since the description of this patent itself explained that its “field of application of the invention lies in particular in precision seeders or distributors, e.g. single-grain precision seeders“. On the contrary, SOLA considered that another document, D4: patent DE3627801, should be considered the most promising prior art document.
Here again the Court of Appeals agreed with SOLA and considered that document D4 should have been considered closest to the state of the art, and not D3. According to the Court, this argument alone “would be sufficient, therefore, to reject the plaintiff’s argument of invalidity and, therefore, to uphold the appeal on this point and dismiss the invalidity action“.
In any case, the Court added that “even if we were to accept the hypothesis that D3 was the starting document for an expert, we would reach the same conclusion in the next step of the [problem-solution] approach“. Indeed, the Court went on to examine the second step of the problem-solution approach and found that there were additional differing features between the invention and D3 than those identified by LARROSA, which had simply argued that there were practically no differences. Therefore, according to the Court, “once again we must reject the plaintiff’s invalidity argument, as we have found more differences between D3 and R1 than those identified by the plaintiff’s expert, which leads us to reject, on this second ground, the invalidity action“.
Patent infringement (no)
By way of counterclaim, SOLA brought an action for infringement against the manufacture, marketing and distribution by LARROSA of telescopic seeders for cereals. In reply, LARROSA argued that the seeders at issue did not reproduce at least features C1 and C3 of claim 1 of patent ES571.
Firstly, to deny the existence of infringement, LARROSA argued that the seeders had only one chassis, contrary to what was protected by SOLA’s ES571 patent, which required two coupled chassis (2a,2b). However, the Court considered that, from a literal reading of claim 1: ” a chassis (2a,2b) provided with a plurality of sowing elements (4) of said seeder“, there was no reason to understand that the patent only protected seeders whose chassis consisted of two parts. This argument was therefore rejected.
Secondly, regarding feature C3, which refers to the support arms (3) being “disposed substantially parallel in a same horizontal plane“, LARROSA argued that this feature was not met since the frame of LARROSA’s seeders was slightly arched, and therefore the support arms could not be “in a same horizontal plane” as required by claim 1.
In this regard, SOLA argued that at least the two outer arms of LARROSA’s seeders were arranged in the same horizontal plane, while the inner arms would be located in a different and somewhat higher horizontal plane, and that therefore feature C3 was reproduced literally in that it does not specify the number of arms which have to be disposed in the same horizontal plane.
However, the Court considered that, if there were two horizontal planes, it was not possible for claim 1 to be reproduced literally, since the claim requires that the “support arms (3) be disposed substantially parallel in a same horizontal plane“, i.e., that all the arms must be disposed in the same horizontal plane.
Doctrine of equivalents
For the analysis of a possible infringement by equivalence, the Barcelona Court of Appeals referred to a recent Supreme Court Judgment of 20 October 2023, ECLI:ES:TS:2023:4412, stating that, although there is no single method for assessing infringement by equivalence, the most appropriate one must be used in each case, and that “in the case of relatively simple mechanical patents (patents that claim a mechanism described by parts and not a function itself), the triple identity test can be used, that there must be the same function, the same modus operandi and the same result“.
In the present case, the equivalence infringement assessment consisted of determining whether LARROSA’s seeders –in which a frame with four substantially parallel support arms and in which the two outer arms are in a first horizontal plane, and the two intermediate arms are disposed in a second horizontal plane, higher than the first horizontal plane– constituted an equivalent solution to a frame in which the four arms are substantially parallel and which are also all in the same horizontal plane as claimed in ES571.
SOLA argued that in the LARROSA frame, the two outer arms are disposed in a first horizontal plane and the intermediate arms are in a second horizontal plane slightly higher than the previous one, but that this configuration does not alter the operation of the frame, since in both cases the extension of the arms takes place in the same way. SOLA considered that the important part is not the plane in which the arms are anchored, but whether they are parallel to each other, so that they do not get stuck in the manoeuvres or operations of the arms’ extension or retraction.
The Court, however, did not consider this argument to be valid in view of LARROSA’s Spanish patent ES2555356 which, as claimed by LARROSA, covered the kind of seeders subject to the proceedings. This patent described cereal seeders with an “arched, slotted and extendible chassis“, and in the background to the invention it is stated that “the current way of constructing the chassis of seeders with the longitudinal members in the same horizontal plane, and without slots, is less advantageous than the new form presented here, because it carries more material and is also heavier, and this difference in weight makes it less competitive, since it requires more strength both when transporting it and when working with it, with the consequent increase in energy consumption and pollution“. Consequently, the Court considered that the chassis of LARROSA’s seeders was not merely an aesthetic modification, but a substantial difference, and therefore not equivalent.
For all these reasons, LARROSA’s action for non-infringement of SOLA’s ES571 patent was upheld.
The judgment (in Spanish) can be read here.
The judgment (in English machine translation) can be read here.
