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NL – Ciel et Terre International v. Profloating

15 Oct 2020

Ciel et Terre International versus Profloating, PI judge of the District Court of The Hague 6 October 2020, ECLI:NL:RBDHA:2020:9924

Ciel et Terre International (hereinafter: “C&T”) is the owner of European patent EP 3 336 447 B1 (hereinafter: “EP ‘447”), which relates to a floating photovoltaic installation comprising photovoltaic panels and two types of modular elements: one for supporting the photovoltaic panels and one for connecting the various elements. Both kind of elements are floating. Independent claim 1 of EP ‘447 claims a specific smart modular assembly of the floating installation, providing multiple advantages.

ProFloating offers floating photovoltaic panel installations under the name FLOTAR, amongst others in the Netherlands. C&T summoned ProFloating, claiming infringement of EP ‘447 by ProFloating’s FLOTAR installation. ProFloating agreed to withhold from offering the old configuration of its FLOTAR installation and proceed with a different, new configuration. In its new configuration, some of the floating connecting elements are replaced by non-floating connecting elements.

C&T subsequently amended its claims, primarily claiming infringement of ProFloating’s new configuration by way of equivalence, arguing that the new configuration still fulfils substantially the same function, in substantially the same way, providing substantially the same result. C&T argues that the functionality of the non-floating connecting elements is the same as the functionality of the floating elements, as they keep the parallel rows of supporting elements as well as the consecutive supporting elements within a row of supporting elements at distance of each other. In addition, the non-floating connecting elements derive their buoyancy from adjacent (supporting and/or connecting) floating elements.

Alternatively, C&T claims that ProFloating’s installation literally infringes EP ‘447, or at least can be configured in such a way that it literally infringes EP ‘447 by only using the floating connecting elements.

The PI judge first considers that ProFloating’s new configuration does not implement the requirements of the claims of EP ‘447 (i) that every connecting element is a floating element, and (ii) that the consecutive rows of supporting elements are separated by these (thus: floating) connecting elements. Therefore, the main question of these proceedings is whether ProFloating’s new configuration infringes by way of equivalence.

The PI judge provides a brief summary of the case law regarding Article 69 EPC, the Protocol on interpretation of Article 69 EPC and the protection of equivalents. Application to the case at hand leads to the conclusion that ProFloating’s new configuration does not infringe.

According to the PI judge, EP ‘447 clearly only provides for one type of connecting element to achieve the advantages of the invention as set out in the description, i.e. a connecting element which is modular and which floats. From the fact that, according to the claims, the connecting elements are hollow (being able to enclose a volume of air), the skilled person would derive that the connecting elements float independently. As it is clear that the patentee had in mind that all connecting elements should be floating independently (which is illustrated by the use of the word “every” in claim 1), the use of non-floating elements is excluded. If it would be considered that non-floating elements are equivalent to floating ones, this would come down to ignoring a feature explicitly present in the claims, for which the claims – read in conjunction with the inventive concept – do not provide any scope.

Furthermore, the patent only discloses an installation comprising two types of modular elements, both floating. ProFloating’s configuration is a more complex system with three modular elements, adding connecting elements which do not float. Accepting that the scope of protection of the patent extends to a configuration which also comprises non-floating connecting elements, would add a third type of modular element for which the patent does not provide any basis. In addition, applying the function-way-result test, both the function, way and result of the non-floating connecting elements differ from floating ones, as the non-floating elements do not add to the buoyancy of the installation as a whole. This is also apparent from the fact that the non-floating connecting elements only derive their buoyancy from the consecutive floating elements.

The PI judge also considers that the invention is not a pioneering invention which may justify a broader scope of protection. Instead, the legal certainty for third parties would be harmed if the protection conferred by the patent would extend to a system with more than two types of modular elements, some of which (at important places in the installation) do not have (independent) buoyancy.

The PI judge concludes that ProFloating’s new configuration does not infringe EP ‘447 by way of equivalence. C&T did not provide sufficient evidence that there is a serious risk that ProFloating will offer embodiments which would literally infringe EP ‘447 either. As C&T is unsuccessful in its claims, C&T is ordered to pay ProFloating’s legal costs in accordance with Article 1019h DCCP.

A copy of the decision (in Dutch) can be found here.

Headnote: Daisy Termeulen, Simmons & Simmons