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Vertidrive B.V. v. Waterjet Robotics USA LLC., Preliminary Relief Judge District Court of The Hague, the Netherlands, 20 October 2016, Case number C/09/515824 / KG ZA 16-956

Waterjet is the holder of the European patent with number 1 409 330 entitled “Air gap magnetic mobile robot”. Vertidrive develops and markets remote controlled magnetic robots for stripping coatings from ship hulls and other ferro-magnetic surfaces.

Waterjet is of the opinion that Vertridrive robots infringe EP ‘330 and has been granted granted leave from the court to seize Vertidrive’s alleged infringing robots. The prejudgment attachment is affected on 15 July 2016 pursuant to which the robots are placed in judicial deposit.

Vertidrive sues Waterjet in summary proceedings requesting the court to lift the seizure arguing that the patent is neither valid, nor infringed. Waterjet denies Vertidrive’s allegations and files a counterclaim requesting a preliminary injunction.

According to Vertidrive there is no infringement as the claims of EP ‘330 require that the magnet is not shaped and disposed in a plane parallel with the surface of the ferro-magnetic workpiece, while the magnet of Vertidrive’s robots have a magnet that is curved in a half-moon shape. Such a shape results in less magnetic force in comparison with the patented parallel configuration, but the upside is that its robots are better equipped to handle non-smooth surfaces.

According to Waterjet parallel in the sense of the patent claims is to be interpreted functionally in the sense that it needs to be parallel to the work surface. The hull of a ship is not straight, which means that Vertidrive’s magnet is in fact functionally parallel to the work surface and thus infringing. Further the magnet of Vertidrive’s robots is symmetrically placed and generates as much magnetic force as would be the case in a parallel orientation.

According to Article 705 (2) Dutch Code of Civil Procedure, a prejudgment attachment is lifted if it is summarily shown that the debtor has no valid claim or that the attachment was not necessary.

The PI judge finds that the there is a reasonable likelihood that the court in main proceedings finds the patent not infringed, as the magnet in Vertidrive’s robots are not shaped according to the claimed parallel configuration. According to the Judge a skilled person, when assessing whether or not a configuration is parallel, would always look in two dimensions and not just one. This means that there should be an, in essence, flat shape which is parallel to the work surface.

Waterjet’s argument that there is infringement under the doctrine of equivalents is also dismissed. The PI Judge provides three reasons for his findings.

Firstly, a curved shaped magnet is described as an example in the patent, wherein the magnets are included in the wheels. The judge concludes that this is a situation of ‘disclosed but not claimed is disclaimed’.

Secondly, accepting that Vertidrive’s curved magnet is equivalent would mean that the explicit feature that the magnet should be shaped in a parallel plane is basically omitted from the claim. In this case the parallel feature was the feature with which makes the claimed invention distinct from the prior art. Omitting such a feature goes too far according to the PI Judge and such an interpretation would be contrary to legal certainty for third parties.

Finally, accepting equivalence in this case would also mean that it is almost impossible to determine the boundaries with respect to the scope of the protection. This also goes against third partiy legal certainty.

The PI Judge lifts the seizure and dismisses Waterjet’s injunction.

A copy of the judgment can be read here.

Headnote: Mattie de Koning, Simmons&Simmons