Geen octrooi-inbreuk: reikwijdte van octrooi beperkt tijdens oppositieprocedure

Hof van Beroep te Luik, 19 september 2013, Saint-Gobain v Knauf.

Octrooirecht. Samenvatting van de inzendende advocaat: "Saint-Gobain is the holder of a European patent (EP 0 399 320) claiming the use of glass fibres with a certain composition and which have a diameter of < 8 µm, wherein more than 10% of the glass fibres have a diameter of < 3 µm, as glass fibres which exhibit no carcinogenic potential. After having ex parte descriptive measures executed at Knauf’s plant near Liège (Belgium) and on the basis of the expert report obtained, Saint-Gobain filed a claim for infringement before the Liège commercial court.

Knauf filed a counterclaim for revocation of the patent, but only in subsidiary order, because the patent has expired in the meantime. In main order, Knauf contested the infringement on the basis of the finding of the expert report, that more than 10% of the glass fibres contained in Knauf’s products had a diameter thicker than 8 µm. Saint-Gobain stated this did not prevent the infringement, as the wording “which have a diameter of < 8 µm” in the patent claim must be interpreted in a technically meaningful sense and therefore understood as “which have an average (or median) diameter of < 8 µm”.

The Liège Court of appeals observed, in this regard, that the claim was modified during EPO opposition proceedings: while the original wording explicitly mentioned that the glass fibres “show an average diameter of < 8 µm”, the adjective “average” (“mittleren”) has been removed and the verb “show” (“aufweisen”) replaced by “possess” (or “have”) (“besitzen”). The Court of appeals stated that these amendments cannot be considered as unintended and that Saint-Gobain is not allowed, under cover of claim construction, to regain a scope of protection that has been explicitly abandoned. The application of the theory of equivalents, also invoked by Saint-Gobain, was rejected for the same reason.

In the absence of infringement and given the procedural position adopted by Knauf (as explained above), the Court did not examine the validity of the patent."

Lees het arrest hier. (Een voorziening in cassatie is mogelijk, maar is tot nu toe nog niet ingeleid).