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Unilever N.V. v. Procter & Gamble Nederland B.V., Procter & Gamble Distribution Company (Europe) BVBA, Procter & Gamble International Operations SA, The Procter & Gamble Company, Preliminary Injunction Judge of the District Court of The Hague, The Netherlands, 19 December 2013 Case Number KG ZA 13-1038, with thanks to Richard Ebbink, Ruprecht Hermans and Jan Pot, Brinkhof, for sending in a translation of the judgment in English

Unilever holds the Dutch part of EP1361172 for a 'water soluble package', invoking the priority date of GB 9906175, 17 March 1999. The patent more specifically discloses a water soluble package containing a laundry detergent for release on dissolution.

P&G US, Henkel AG & Co and Reckit Benckiser (UK) filed opposition against the patent with the EPO in and as a result, the patent was limited by deleting the words 'or gel' from claim 1 in the section describing the detergent 'being a liquid or gel'. Also, the process of making the water soluble package was deleted from the description, while a section on the shape of the package was added.

In the amended form, the opposition division upheld the patent, finding that the objective technical problem can be regarded as improving the rupture resistance of the package and that the solution offered (thermoforming the film package in a dome shape, so as to attain minimal and uniform film thinning) was inventive over the prior art.

P&G US filed appeal against the opposition decision, but Unilever did not, so that the decision is definitive and final as regards Unilever. The Technical Board of Appeal is expected to hand down its decision mid May 2014.

P&G introduced its Ariel Tabs and Ariel Pods water soluble detergent packages onto the market in either 2002 or 2003. On 27 August 2013 Unilever executed a so-called “saisie contrefaçon” at P&G in Amiens, France, aimed at ascertaining the P&G capsules for the Western-European market were being produced at that site. From the written report of that seizure, it appeared that the production of the capsules involved thermoforming.

On the basis of the patent, proceedings on the merits were filed in various countries. In September 2013 P&G sued Unilever before the French courts in revocation proceedings, as well as in the UK and the Netherlands. Since the Dutch proceedings are in the accelerated regime of the District Court of The Hague and the oral hearing is set for 14 November 2014, the first decision on the revocatin is expected in the Netherlands. These preliminary injunction proceedings alleging patent infringement are faster yet, though.

Because of earlier patent litigation between the parties, an agreement entitled "P&G/Unilever Settlement Term Sheet" was entered into on 28 October 1998. Under the term sheet, parties shall negotiate in good faith about any later alleged patent infringement and if they cannot resolve the issue amicably, enter into non-binding mediation and, if that fails, non-binding arbitration.

When P&G introduced the Ariel products, parties entered into negotiations and subsequent mediation, but were unable to resolve the matter.

Unilever requests that the preliminary injunction judge (1) grants an injunction against P&G to infringe the patent in the Netherlands, (2) that P&G be ordered to recall a number of Ariel products and (3) P&G be ordered to pay the full costs of the proceedings.

The court finds itself competent to hear the case ex articles 2 and 22 (4) Regulation EC/44/2001.

P&G argued that parties failed to enter into arbitration, but the court infers from the wording of the term sheet (“In the event a party moves for PI, the other party will not rely upon delay”) that parties could in fact skip a step. The court saw no basis for the position that parties meant to prevent parties from filing for a preliminary injunction until the non-binding arbitration was finished.

Surprisingly, the court, normally lenient on matters of urgency in IP cases, found that since Unilever had known about these products since 2003 and about the Dutch market entry since 2011/2012, without even sending a cease and desist letter to P&G, the case was no longer urgent enough for preliminary injunction. The Ariel Pods, which were only introduced onto the Dutch market in the spring of 2013, are a different matter – the court finds sufficient urgency for those products.

P&G submitted that the case was too complex for preliminary injunction proceedings, while the potential harm to P&G's market position was very significant and a decision from the Technical Board of Appeal for the EPO was only six months away. The court found otherwise and found the case quite manageable and suitable for these proceedings.

P&G then argued that there was a serious, non-negligeable chance that the patent would be revoked for added matter, post-grant extension of subject matter, lack of novelty and lack of inventive step. The court then weighed the various grounds for revocation submitted by P&G, but found these arguments unconvincing and in the light of the outcome of the opposition proceedings, decided that there is no serious, non-negligeable chance that the patent would be revoked.

The court then approached the question of infringement. P&G denied infringement, asserting that its Pods have a slightly convex base wall, while claim 1 describes “a generally rectangular or square base wall of the body portion”. The court was unconvinced, since although the man skilled in the art would read in the patent that the base wall should be "preferably, (…) substantially flat", but also that it could alternatively be "somewhat concave or convex" and that "the resulting package [may be] asymmetrical about the base wall, although of course there can be one or more planes of symmetry perpendicular to the base wall". The court thus found that the Ariel Pods infringed claim 1 and that the extra liquid compartments on top of the Pods did not stop the "body portion" of those products from being "generally dome-shaped".

No evidence was submitted on P&G US infringing, so that the injunction is not aimed at that defendant.

A recall is ordered for the infringing products, only aimed at getting the infringing products back from the professional buyers.

P&G is also ordered to pay Unilever's costs of the proceedings, agreed to be 250.000,00 EUR.

The injunction is strengthened with fines of 5000 EUR per infringing product or 100.000 EUR per day to a maximum of two and a half million EUR.

Read the decision (in Dutch) here.

Read the decision (in English) here

Headnote: Maurits Westerik