Non-infringement, added subject matter and lack of inventive step: reasons why Lidl beat Thermomix

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On 13 January, the Court of Barcelona issued its judgment on the appeal lodged by Lidl against Vorwerk (proprietor of the Thermomix trademark) related to the marketing of its food processor. In its ruling, the court declared Spanish patent ES 2 301 589 invalid (validation of European patent EP 1 269 898), which is titled “Food processor” and is owned by Vorwerk. Moreover, it goes one step further in the text, stating that “the appellant is correct when he argues that even if the title were valid, there would be no infringement”.

This judgment marks a 180° turn with respect to the decision made one year ago, on 19 January 2021, by Mercantile Court No. 5 of Barcelona in which, on the contrary, it ruled that Lidl had violated the exclusive rights of Vorwerk with its Monsieur Cuisine Connect machine and it ordered the company to stop marketing it, destroy all models in its possession or in the possession of its distributors, and compensate Thermomix.

In both trials, our colleague Fernando Prieto, European Patent Attorney and partner in charge of ABG Intellectual Property’s Engineering and Physics Department, participated as Lidl’s expert, and the judgment of the Provincial Court of Barcelona recognises him as such, mentioning him on several occasions.

Grounds for invalidity of the Thermomix patent

In the recent judgment, the judges of the Court of Barcelona consider Vorwerk’s patent to be invalid for a number of reasons that will be discussed below.

Added subject matter related to the weighing device

When comparing the patent application and the title granted, different content is observed in claim 1 as a result of amendments introduced by the proprietor during the proceedings. Said subject matter relates to the control of the weighing device that forms part of the appliance.

Said amendments, according to the Provincial Court of Barcelona, constitutes added subject matter because

it cannot be considered implicit; rather, it should have been expressly set out in the application”.

“Therefore, we believe that this call for invalidity due to broadening of the subject matter should be upheld, which thus determines the invalidity of C1 and with it, the full title.”

Lack of inventive step with respect to the safety system of the stirring vessel

Lidl presented several documents to demonstrate the lack of inventive step of the Thermomix patent with respect to the system that prevents acting inside the stirring vessel when it is operating.

The judgment by the Provincial Court of Barcelona assesses both the state of the art closest to the filing date of the European patent application and the obviousness of the invention to a person skilled in the subject matter in light of these documents and concludes that “there is no inventive step”.

If the patent were not invalid, would Lidl have infringed it?

Although the invalidity of the patent makes assessing infringement unnecessary, the Provincial Court of Barcelona decided to analyse it in its decision.

The dispute focuses on whether the stirring vessel and the lid of the defendant’s product can be locked in such a way that it is impossible to act inside the stirring vessel during operation”, summarises the court.

According to Fernando Prieto, it is understood from Vorwerk’s patent that in order to act inside the vessel, the operation of the stirring mechanism must first stop, whereas the proprietor maintains that upon unlocking the lid, the switch is deactivated and the stirring mechanism stops supplying power.

We believe that of the two interpretations of the title, the one that best fits the description is the one made by the defendant”, as set out by the ruling, adding that “in Lidl’s food processor the lid can be opened without having to perform any prior action

something that does not happen in the product resulting from the Thermomix patent and, therefore, in the opinion of the Provincial Court of Barcelona, “there is no infringement”.

“We reached the conclusion that there is no infringement because the defendant’s food processor does not reproduce that necessary sequence in order to safely act inside the stirring vessel. In Lidl’s food processor, the lid can be opened without having to perform any prior action, in other words, without needing to first stop the stirring mechanism, and said opening or unlocking of the lid by means of a small turn about the axis thereof is what determines the stoppage of the stirring mechanism, although not immediately. This results from the statements by the expert Mr Prieto during the hearing and is deduced from the videos provided for the proceedings by the experts of the prosecuting party, in which it can be observed that the lid can be opened by means of a small turn about the axis thereof, with the result that the stirring mechanism stops and the vessel can be accessed while the same is still locked.”

Possibility of appeal

The parties may lodge an appeal for annulment and/or extraordinary appeal over breach of procedure law against the ruling of the Provincial Court before the Supreme Court, and for this reason it will be necessary to wait to know whether Lidl and Vorwerk will face each other a third time.

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