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Rasco D.O.O  and Rondaan Transportservice B.V. v. AEBI Schmidt Nederland B.V., District Court The Hague, The Netherlands, 4 January 2017. Case No. ECLI:NL:RBDHA:2017:4 

This matter relates to gritters, more specifically lorries with a detachably mounted device. Aebi Schmidt holds a European patent (the “Patent”). After the District Court had ruled against Aebi Schmidt in preliminary injunction proceedings, denying a claimed ban on infringement on account of the absence of an interest in obtaining such an injunction urgently, it had better luck this time around, even though Rasco et al. had initiated these proceedings as revocation proceedings, and Aebi Schmidt had subsequently applied for a ban on infringement in the counterclaim proceedings.

The parties agreed that DE 3 737 220 A1 (“DE 220”) discloses all features of the Patent, except for the distinctive claim of the torsion support that is supported at the mounted device. Rasco et al. had taken the position that an average skilled person would read this feature in DE 220, but the District Court disagreed, finding an insufficient basis.

As for inventive step, the District Court applied the problem-solution approach, with both parties agreeing that DE 220 was the closest prior art. According to Rasco et al. the average skilled person, based on DE 220 or his general professional knowledge, would arrive at the patented invention, or on the basis of the combination of DE 220 with a Dutch or German patent.

However, with respect to their appeal on the general professional knowledge of the average skilled person Rasco et al. provided insufficient evidence and explanations concerning the (contents of such) general professional knowledge. E.g., Rasco et al. failed to adduce any example from the prior art of a torsion support that is supported at the mounted device to prevent it from turning. The District Court therefore could not but conclude that the general professional knowledge argued by Rasco et al. was based on hindsight.

The combination of DE 220 with a Dutch or German patent did not help Rasco et al. either; for according to the District Court, based on DE 220 it was not clear that the average skilled person would consult either one of these patents, as doing so would mean that he would once again face the problems DE 220 aims to offer a solution for. Even if the average skilled person were to consult such documents, he would arrive at a solution other than the solution claimed in the Patent.

In their oral arguments Rasco et al. appealed to a German Offenlegungsschrift (for the first time). This document, however, was disregarded as neither Aebi Schmidt nor the District Court had been able to prepare for this document. This was contrary to the principles of due process and the document was therefore disregarded.

Since Rasco et al. did not contest the infringement stated in the counterclaim proceedings, other than by claiming that the Patent was not valid, the ban on infringement was awarded. Incidentally, the counterclaims were mitigated; e.g., the request for “a ban to be involved in any way in” patent infringement was denied given the risk of enforcement issues. In addition, Rasco et al. were ordered to pay an amount of € 72,500 in litigation costs to Aebi Schmidt.

Read the decision (in Dutch) here.

Headnote: Eelco Bergsma, Taylor Wessing