STA Gruppen AS v. Stillasgruppen AS and Stillastjenester, Borgarting Court of Appeal, Norway, 6 January 2014, Case No. 12-087681ASD-BORG/01
On 6 January 2014 Borgarting Court of appeal rendered its decision in a case between StS Gruppen AS (appellant) and Stillasgruppen AS and Stillastjenester (respondents) regarding StS Gruppen's patent NO 317999 concerning a device for security systems for operation of habitats on installations, in which an object that is carrying out work which results in heat generation such as flames, sparks and the like, is isolated from the surroundings, and where an overpressure of air is set up in the habitat to prevent ingress of flammable gases.
As a starting point, the Court of Appeal stated that the threshold for reviewing a decision from the Norwegian Industrial Property Office (NIPO) is lower if NIPO has not taken all relevant information into account when making its decision.
According to the patent, the security system's shutdown device shuts down the supply of both air and power to the habitat. After the patent application had been filed, StS Gruppen added some details in the patent description and also in the patent figures illustrating that the gas sensors are connected to the shutdown device. These details relating to the said connection were not present in the patent application as filed.
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The Court of Appeal evaluated whether or not the amendments made by StS Gruppen meant that the patent included added subject-matter. The question was whether or not the patent application as filed disclosed the information regarding the connection between the gas sensors and the shutdown device.
Contrary to the claims of patent NO 317999, the Court of Appeal found that the description in the patent application did not disclose anything regarding the shutdown of the air supply when gas is detected in the air supplying fan. The only shutdown described in the application, was the shutdown of the power supply. Even though the definition of the air supplying fan in the application stated that the fan is shut down when irregular amounts of gas is detected in the air supply inlet, it does not show that the shutdown is done directly or as a consequence of the power shutdown.
The Court of Appeal found that the patent application as filed did not disclose directly and unambiguously for a person skilled in the art that the shutdown device on a signal from a gas detector shuts down both power and air supply as described in the patent claims. Thus, Borgarting Court of Appeal found that StS Gruppen's patent was invalid due to added subject-matter, cf. the Norwegian Patents Act section 52 first paragraph no. 3. Based on the above, the Court of Appeal did not find it necessary to evaluate the novelty and inventive step of patent NO 317999.
Stillasgruppen and Stillastjenester were awarded legal costs amounting to NOK 1,557,701.50, in addition to the costs relating to the court fees and expert lay judges.
The judgment can be appealed to the Supreme Court of Norway, and is therefore not yet final.
Read the decision (in Norwegian) here.
Head note: Thomas Hagen and Håkon Austdal
