Since last year, the patent dispute between Vorwerk (Thermomix) y Lidl, due to the lawsuit filed by the former against the supermarket chain, which had been selling a food processor called SilverCrest Monsieur Cuisine Connect.
Initially, Commercial Court No. 5 of Barcelona issued a ruling on January 19, 2021 (proceedings 1.231/2019), condemning Lidl; However, Lidl appealed and the Provincial Court of Barcelona, in a ruling dated January 13, 2022, overturned the situation, annulling Vorwerk's patent and acquitting Lidl.
In this post, we explain what happened.
Vorwerk sued Lidl in June 2019 on the grounds that the sale of SilverCrest Monsieur Cuisine Connect was infringing its Spanish patent no. ES2301589, which protects a kitchen appliance and which stems from the validation in Spain of European patent no. EP1269898.
First, what is a patent?
Explained very briefly, a patent is a title granted by the State, which protects an invention: a product or process that provides a novel solution to a technical problem.
To be patentable, an invention must basically meet three requirements:
- Let it be new: that the same invention has not been previously disclosed internationally.
- May you have inventive activity: that the solution incorporated in the invention is not obvious to an expert in the field.
- May you have industrial application: that it is manufacturable or usable.
The patent title grants a genuine right to property: the patent holder may prohibit, for a specified period (generally a maximum of 20 years) that any other person (individual or company) manufactures, offers, or sells, without your authorization, a product that incorporates the characteristics of your invention.
You can find more information about patents in our Frequently Asked Questions and in this article.
What is a European patent? And its validation?
Patents are territorial. This means that a company may have its invention protected by a patent in the United States, but not in Australia, because it may not be a market in which it is interested in investing.
A European patent is a title granted by the EPO (European Patent Office) which is valid in countries that are part of the European Patent Convention.
After undergoing a rigorous granting procedure before the EPO, in order for the European patent to take effect in each of the countries, it must undergo a process of validation at the patent office of the territory where you want to have protection.
This procedure varies depending on the country. In Spain, validation consists of submitting a translation of the European patent into Spanish to the Spanish Patent and Trademark Office, which will be published in the Official Industrial Property Gazette. If you know English, in this article We explain it in more detail.
What are demands?
When a patent application is filed, a prototype of the invention is not deposited with the registration office. What is submitted is a descriptive report which must describe in great detail what the invention consists of. This report, during the course of the procedure, is made public; thus allowing competitors to analyze what has been protected and, ultimately, contributing to the improvement of technological progress.
The most important part of the descriptive report is the claims.
The demands are nothing more than phrases, written in technical language, that contain what the patent applicant is claiming protection for.
Therefore, it is advisable that the patent specification always be drafted by a professional.
It is very common that, instead of making a single claim describing the invention, a set of demands; so that the first claim seeks broad protection for the invention, and the subsequent claims, which are dependent on the first, narrow down that scope of protection.
Thus, if claim 1 is not valid (due to lack of novelty, for example), perhaps one of the subsequent claims will be valid, and the patent will be granted for those claims.
The Vorwerk patent with which it sued Lidl (the full report of which can be viewed here) has eight claims. Claim 1 protects, verbatim, the following:
Kitchen appliance with a mixing or blending jug, a lid, and a housing, wherein the mixing jug and the lid can be locked in such a way that it is not possible to intervene inside the mixing jug during operation, wherein, in addition, the mixing jug and/or the lid are locked or unlocked by rotation around the vertical axis of the mixing jug, and wherein, due to the rotation of the mixing or blending jug and/or the lid, an electrical switch is actuated which releases the power supply to a control card, characterized in that the control card has at least one control circuit which influences the mixing or blending mechanism and one control circuit which influences a weighing device, and because, in addition, the control circuit affecting the stirring mechanism is released as a result of the switch being operated, but the control circuit affecting the weighing device is independent of the switch being operated.
The main debate in the lawsuit has focused on the Independence between the control circuit affecting the weighing device in the vessel and the control circuit affecting the vessel's stirring mechanism.; that the court of first instance considered “the essence” and “true contribution of the invention” of Vorwerk.
In the words of one of Vorwerk's experts, the problem solved by the Thermomix patent is “How to get a kitchen appliance that not only mixes/beats food but also weighs it, and where both functions are independent and can also be activated individually.” (paragraph 98 of the first instance judgment).
“What now seems so easy—that I can cook while I'm weighing—used to seem impossible, so impossible that it wasn't even desirable.” (paragraph 109 of the first instance judgment).
As stated in the first instance judgment (paragraph 40), “The advantage, then, is that in the initial state, the mixing bowl is filled without the lid, but once the lid is on and the mixing mechanism is running, food can be weighed with the lid on […] Operating the switch does not affect the electrical circuit that controls the kitchen machine's weighing device. The weighing device is available to the user whether or not the lid is fitted on the mixing bowl.” and continues (paragraph 64): “We emphasize: when the agitator mechanism is operating, food can be weighed with the lid on.”.
During the lawsuit, Lidl requested that Vorwerk's patent be invalidated on several grounds (addition of material after the application, lack of novelty, and lack of inventive step). When comparing Vorwerk's patent with the previous patents cited by Lidl in defense of this invalidity, the court of first instance insisted that “in both [referring to patent documents prior to those of Vorwerk] It is taken for granted and assumed as something natural that food weighing is done before or after food processing, or that if you are in food processing mode, it is not possible to activate the weighing function.”(paragraph 108 of the judgment).
That is where the problem lies, which Thermomix, according to the court of first instance, solves[ed]. And that solution of independence between the cooking and weighing functions is present in the food processor. SilverCrest Monsieur Cuisine of Lidl, according to the court of first instance.
Thus, Initially, Lidl was sentenced to:
- Cease importing, storing, offering, and/or marketing the robot. SilverCrest Monsieur Cuisine.
- Withdraw the robot from the market.
- Refrain from importing, storing, offering, and/or marketing the robot in the future.
- Compensate Vorwerk for damages. The amount would be calculated once the judgment became final.
- Pay the costs of the proceedings.
However, Lidl appealed against this ruling, and the Provincial Court of Barcelona, in a ruling dated January 19, 2022, upheld its appeal: not only did it declare that Lidl did not infringe Vorwerk's patent, but it also invalidated the patent..
First, the Court declares Vorwerk's patent invalid on the grounds that addition of matter. This means that, during the patent registration process, Vorwerk introduced amendments to the claims that broadened the content protected by the patent; in other words, they went beyond the original description, incorporating elements not described in the wording initially submitted for registration. Specifically, the Court understands (although it admits that its conclusions “remain doubtful”) that Vorwerk did not describe in the original Thermomix patent application that the food weighing function in the jug was controlled by a circuit independent of the control card of the mixing and heating device, as it later modified.
The applicant may modify the wording of the patent during the registration process (for example, to address an objection from the office), but never by broadening the scope of protection. The expansion of subject matter is prohibited. by the European Patent Convention (Article 123), because it would cause obvious legal uncertainty and clearly harm the competitors of the patent applicant, who would be benefiting from broader protection than that originally requested.
Likewise, the Court also invalidates Vorwerk's patent on the grounds that has no inventive step. The Court considers that the technical feature of having two separate control circuits (one for the stirring mechanism and one for the food weighing mechanism) is an obvious solution for an expert in the field in view of the patent documentation already in existence at the time of filing of Vorwerk's patent; specifically, a US patent dated Braun.
Despite invalidating Vorwerk's patent, the Court is also analyzing whether, if the patent were valid, Lidl would be in breach. And concludes that there would be no infringement, because, in its opinion, Lidl's food processor does not reproduce the sequence protected by Vorwerk's patent for safely intervening in the mixing bowl. This sequence, in the Thermomix, involves having to stop the stirring mechanism before being able to intervene in the mixing bowl; this does not happen, according to the Court, in Lidl's food processor, which allows the lid to be opened without first stopping the stirring mechanism, as it is the opening of the lid itself that stops the mechanism, shortly afterwards but not immediately.
The ruling can still be appealed before the Supreme Court., so we will have to wait and see what Vorwerk's next move will be. For now, Lidl has once again been given the green light to market the robot. SilverCrest.
