Gallus Druckmaschinen GmBh v. MPS Systems B.V., District Court The Hague, the Netherlands, 4 March 2015, Case No. HA ZA 14-530, with thanks to Willem Hoyng and Robin van Kleeff, Hoyng Monegier, for providing the judgment as well as a head note

Gallus started accelerated patent proceedings against MPS on the basis of a patent on a rotary printing press for different printing technologies. MPS argued that it did not infringe, inter alia because its rotary printing presses did not comprise “an impression cylinder which is not replaced when the printing heads are replaced”. MPS asserted in its counterclaim that the patent was invalid.

Gallus subsequently amended the apparatus claims into method claims, but left out the above-mentioned feature and asserted that these new claims were infringed. MPS objected, since the accelerated regime only provides the patentee with a possibility to file a written reply in the (invalidity) counterclaim. The court allowed the objection, removed the case from the accelerated regime. The court then allowed the claim change, but provided MPS an additional opportunity to respond in the main (infringement) claim.

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MPS asserted that also the new claims were invalid, inter alia due to the removal of an essential feature. MPS pointed to the prosecution file and asserted that this feature had been added to the claims to overcome novelty objections in the PCT search report. Gallus asserted that in case of a change of claim category only features that are essential for performing the method need to be included in the new claims.

Finally, the court held that the omitted feature had indeed been added to overcome novelty objections and, moreover, that its removal resulted in added subject matter. Thus, the court held that the new claims were invalid and therefore also not infringed.

Read the decision (in Dutch) here.