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19 Mar 2019

Unilin Beheer B.V. v. Innovations 4 Flooring Holding N.V., Court of Appeal of The Hague, 5 March 2019, Case No. C/09/483599/ HA ZA 15-243

Unilin Beheer B.V. (“Unilin”) holds a patent EP 1 026 241 (“EP341”) for a ‘floor covering, consisting of hard floor panels and method for manufacturing such floor panels’. Innovations 4 Flooring (“I4F”) holds a patent EP 2 440 724 (“EP724”) for a ‘floor panel and floor covering consisting of a plurality of such floor panels’.

In the first instance (reported here), I4F – after asking Unilin (to no avail) to confirm that I4F’s products did not infringe Unilin’s patent – attacked the Dutch part of Unilin’s EP341 patent and sought a declaration of non-infringement for I4F’s product regarding that patent. The Court ruled in favour of I4F and found the EP341 not inventive over Unilin’s own documents regarding the Batibouw trade fair, while also (partially) awarding the requested declaration of non-infringement for I4F’s product.

Unilin’s appeal
The Court of Appeal rejected I4F’s argument that EP341 contained added matter, finding basis in the EPO Guidelines that adding a “more particularly” element does not limit the scope of protection of a claim, so that deleting it later on does not extend it.

Regarding the public prior use by Unilin, as alleged by I4F, the Court of Appeal confirms the first instance judgment, finding the Batibouw press documents released by Unilin to lack the final element (referred to as element ‘f’ in these proceedings) of the patent claim. That element (f) was the geometry of the lower lip in the connecting groove, being – in short – formed to exert continuous tension on the connection between the floor panels, keeping the panels firmly locked together. I4F’s novelty attack thus falls short.

I4F also argued public prior use in the form of the so-called ‘Tropica’ panels, which were used as an floor layer in an ice-rink and the geometry of which was examined by various experts in these proceedings. The Aourt of Appeal agrees with I4F that the bent out lower lip geometry of these panels would result in element (f) of the patent. It thus finds all of the product claims except 12, 14, 16, 18 and 19 of the EP341 patent invalid for lack of novelty over the Tropica panels. The remaining product claims except claim 16 are all found to be invalid for lack of inventive step.

Method claims 23 through 26 of EP341 see to production methods for milling the products in the product claims. Parties argued different interpretations of these method claims, specifically as to the question if documents disclosing suitable methods to produce the products in the product claims, but without actually disclosing those products (and their geometry) would be relevant prior art. The Court of Appeal sided with Unilin on this issue, finding that known methods of manufacture do not disclose products that were unknown to the person skilled in the art, citing the EPO Guidelines as a basis (Part F, paragraph IV 4.13, 2018 edition).

Insofar as these methods see to the geometry of the Tropica panels, however, the court of appeal finds method claims 23-25 to be obvious, since they encompass product geometries that were found to lack novelty.

Various auxiliary requests holding amended versions of these method claims were put forward by Unilin in these proceedings. In its appeal, Unilin initially added two auxiliary requests, later modifying the second one and adding a third, further to arguments brought by I4F. Although I4F objected to the amended second version of the auxiliary request based on procedural grounds, the Court of Appeal admitted the additional request and found the amended method claims (in short: combining claims 23 and 24 and aimed at producing the product in the remaining product claim 16) non-obvious and valid.

Cross-border effects
Finally, I4F did not appeal the rejection of its request for the denied part of the declaration of non-infringement it had sought in first instance. Unilin, however, did appeal the declaration of non-infringement (given for I4F’s ‘Click-4U’ products that use I4F’s own patented technology and do not contain element (f) of EP341) insofar as it saw to foreign parts of EP341. All foreign counterparts of EP341 have since the first instance expired, and the Court of Appeal finds that I4F has insufficient legal interest in such a wide-ranging declaration. The mere fact that Unilin has refused to confirm that it would not enforce its patent against the Click-4U products, was seen as insufficient reason, since such a confirmation by Unilin would only be reasonable if it was certain that such panels would lack element (f). I4F failed to show that and also failed to show to the court’s satisfaction that such products would not infringe under foreign patent law, so that the declaration is refused.

Consequently, the Court of Appeal holds EP341 as granted invalid but for claim 16 and the (amended) method claims. Furthermore, it declares both parties to be partially in the right and partially in the wrong, leading it to order both parties to bear their own costs.

A copy of the judgment (in Dutch) can be read here.

Headnote: Maurits Westerik, Coupry, who advised I4F in an earlier stage of the first instance.