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NL – PPG Industries Chemicals v. Rhodia Chimi

23 Dec 2013

PPG Industries Chemicals B.V. v. Rhodia Chimi, District Court The Hague, The Netherlands, 4 December 2013, Case / Docket number C/09/437543 / HA ZA 13-190

Rhodia attempted to obtain a preliminary injunction against PPG on account of infringement of European patent no. 0 520 862 B1 (the “Patent”). In April 2012 Rhodia’s petition was denied for lack of an urgent interest. Following the preliminary injunction proceedings PPG initiated proceedings on the merits, demanding annulment of the Dutch part of the Patent.

The Patent relates to a new process for preparing precipitated silica, the new precipitated silicas thus obtained, and their use in the reinforcement of rubbers. Claims 1 through 12 relate to a method, product claims 13 through 21 to granules, product claims 22 through 27 to a powder and product claims 28 through 36 to substantially spherical beads. Claim 37 is a use claim.

PPG argued that claim 1 is not reproducible. The District Court agreed with PPG and ruled that claim 1 depends on many parameters in the preparation method. As a result, high requirements can be set for the description of such method. PPG reproduced claim 1 in six experiments. Five out of six experiments did not result in the claimed silica products with favourable properties. Rhodia’s defence, i.e. that PPG had not strictly adhered to method example 1 with partly additional parameters, was disregarded. It is not sufficient for a patent to provide an example to a skilled person on the basis of which the latter may obtain the claimed product. The directions in the patent specification should be such that the skilled person, using his general professional knowledge, can apply the invention without undue burden across the claims. Claim 1 was therefore considered void, as were the independent claims 2 through 12.

Product claim 13 (granule) lacked inventive step. With the silica powder PPG obtained by reproducing example XVIII of Thornhill (US patent 2,940,830) combined with the skilled person’s familiar knowledge of the manufacturing process of granules (US patent 3,441,387), PPG obtained a granule which answered to the elements of claim 13. Claims 13 through 21 were therefore considered void for lack of inventive step.

With respect to product claim 22 (powder) PPG successfully adduced that this claim lacked novelty, as reproduction of example XVIII of Thornhill inevitably resulted in a silica product that complied with the parameters of claim 22. Claims 22 through 27 were also void.

Product claims 28 through 36 (substantially spherical beads) were upheld, if only because PPG failed to substantiate its claim for lack of novelty and/or inventive step. Claim 37 was upheld as far as it related to the claimed form of substantially spherical beads.

Read the judgment here.

Head note: Wim Maas