The keys to Lidl's conviction for infringing the Thermomix kitchen robot patent

 The judgment of the Commercial Court no. 5 of Barcelona of January 19, 2021, resolves the conflict between Vorwerk, holder of a European patent validated in Spain that protects the technology incorporated in a kitchen robot (popularly known in the market by the Thermomix® brand), which in June 2019 filed a patent infringement lawsuit against LIDL Supermarkets.

The defendant manufactures a similar food processor, but marketed at a much lower price, known in the market under the brand name Silvercrest® and commercially identified as ‘Monsieur Cuisine Connect’.

The Spanish patent of the plaintiff claims the invention of a kitchen machine including eight product claims, of which only the first (R1) is an independent claim, the remaining claims being dependent on the first, for incorporating various variants, accessories or construction options all based on the main configuration.

The defendant, LIDL, defended itself on two grounds:

On the one hand, he filed a counterclaim, challenging the validity of Vorwerk's patent, for alleged lack of novelty and inventive step;

It also alleged that in the process of granting the patent, the applicant had incurred the prohibition of addition of matter (art. 102.1.c LP), that is, that he had modified the wording beyond what the regulations allow —to clarify its scope - expanding the scope of the exclusive right that the application had at the time it was initially filed; that is, on your priority date.

The controversy centered on the fulfillment of the novelty and inventive step requirements of the main claim (R1), which is the following:

Kitchen machine (1) with a shaking or shake beaker (2), a lid (3) and a housing (4), where the stirring beaker (2) and the lid (3) can be locked in such a way so that an intervention inside the shaking vessel (2) is not possible during operation),

where, in addition, the stirring vessel (2) and / or the lid (3) are locked or unlocked by turning around the vertical axis of the stirring vessel,

and where, due to the rotation of the stirring vessel (2) and / or the lid (3), an electrical switch (46) is actuated that releases the power supply to a control card (42),

characterized in that the control card has at least one control circuit that influences the stirrer or mixer mechanism and one control circuit that affects a weighing device,

and because, in addition, the control circuit that affects the agitator mechanism is released as a result of the switch operation,

but the control circuit that affects the weighing device is independent of a switch operation.

Scope of patent protection:

The court considers that, although kitchen machines were already known, the invention consists in that the patented kitchen machine works safely through the provision of circuits that allow the independent operation of the stirring and weighing devices, fundamentally, in such a way So when the switch is activated, the stirrer beaker is stopped, but not the weighing function.

The advantage, therefore, is that in the initial stage the shaking vessel is filled without the lid, but once the lid has been put on and the stirring mechanism is working, food can be weighed with the lid on.

That is, regardless of whether the glass is secured or not, or whether the lid is open or closed, as long as the machine is plugged into the power and turned on, the food can be weighed, since the weighing system is independent of the switch that is activated when fixing the glass and securing the lid on said glass. This allows something to be weighed by placing it on the closed lid, avoiding the need to open the lid. Or the other way around, it can be weighed with the lid open, placing it inside the glass.

Subject addition objection

The defendant alleges that in feature 4 of R1 the final wording in the granted patent was not supported by the original wording as the patent had been applied for.

However, the court considers that an expert in the field who read the entire description would derive directly and unequivocally, without any ambiguity, that when the description is referring to "functions of a weighing mechanism" these functions implicitly refer - presuppose - the existence of a control circuit linked to a control card; as they do appear explicitly in the original description in relation to the stirring and heating functions.

It is added that if the inventor had wanted to include a weighing function not associated with a control circuit of the control card, he would have said so. Which, by simple logic, would seem contrary to a kitchen machine of these characteristics in the centuryXXI, as it would mean talking about a weighing function without electrical circuits, more typical of the nineteenth century.

It is concluded, therefore, that the initial application for patent EP'898 contemplates in an implicit nonliteral way the existence and combination of several control circuits: weighing, stirring and heating, as stated in characteristic [1.04], therefore that there is no "matter addition".

In addition, the defendant also denounces addition of matter in characteristic 5 of R1, because -as it alleges- the granted patent excludes or omits the characteristic "at least for certain functions of the control card" that would appear in the original description of the patent application, causing an expansion of matter in the form of 'intermediate generalization'.

For the Court, on the contrary, it is not that there is an extension / generalization but rather the opposite, there would be a restriction in characteristic R1.5 with respect to what is contemplated in the original description: thus, the original description describes how the activation of the switch releases electrical current to activate at least certain functions, such as the stirring or heating functions.

Taking into account that the heating function and, therefore, the activation of the switch to supply current to a heating circuit, apart from the stirring circuit, is eventual (it may or may not be present) since the current supply of the stirrer is released and eventually from a heating element, there would be no addition of matter. By considering in characteristic [1.05] that only the switch activates the stirring function, it is within the possibilities contemplated in the original description.

Lack of novelty objection

The court declares proven that the first three characteristics of R1 were known (they already existed in the state of the art). But consider that there is novelty in other characteristics of the patent.

Fundamentally, the Court considers that the Braun patent (US 5 329 069) invoked by LIDL as an antecedent that would supposedly destroy the novelty of the Worwerk patent, in reality does not include characteristic R1.6, which is the one that collects the essential contribution of the invention: that the control circuit affecting the weighing device is independent of a switch operation.

Ultimately, the advantage of the Worwerk patent is that in the initial state the shaking vessel is filled without the lid, but once the lid is on and the stirring mechanism is working, food can be weighed with the lid on; whereas in the previously invoked (Braun patent), food CANNOT be weighed by operating the agitator mechanism.

Therefore, the R1 of the Worwerk patent is indeed novel. And for this reason, the defendant's objection of lack of novelty as grounds for the invalidity of the patent is rejected.

Objection of lack of inventive step (obvious)

To assess the existence or not of inventive step in the Worwerk patent, the Court uses the method (used by the EPO) called the “problem and solution approach”, which essentially aims to avoid an assessment of the inventive step ex post facto. In other words, it is about objectifying the analysis of the obvious on the date on which the priority of the patented invention is claimed.

To do this, three steps are followed:

1) The determination of the closest state of the art;

2nd) The definition of what is the technical problem to be solved with the patented invention; and 3) based on these two elements, assess whether or not the claimed invention was evident to an expert in the field on the priority date of the patent; for which the “could-would” test is applied.

In other words, it is not enough that the expert "could" have obtained the invention using his knowledge and following the steps described in the patent; To establish the obvious, it is necessary to conclude that the expert “would have” arrived at the solution proposed by the patent based on the closest state of the art.

The Court considers that the closest prior art is a Philips European patent invoked by Lidl (Philips EP 0638273). The difference between this previous patent and that of Worwerk is that the robot that protects it does not have a control circuit that affects a weighing device (R1.4) and, therefore, this element - nonexistent - could not be independent either. of a switch operation (R1.6).

The court establishes that the technical problem that the Worwerk patent is aimed at solving is "how to weigh food in the stirring container or glass regardless of the state of the switch."

Well, in view of this technical problem, the court considers whether the solution given by the Worwerk patent was obvious to an expert in the field based on the Philips patent (EP 0638273) in combination with the Braun patent (US 5 329069) or the French patent of Ronic (FR 2651982).

And it concludes that on the priority date of the Worwerk patent an expert in the field would not "have" arrived at the claimed invention, because the aforementioned patents describe kitchen machines with weighing devices in which it is taken for granted and It is assumed as something natural that food weighing is done before or after food processing or that, if it is in food processing mode, it is not possible to activate the weighing function, as the structure is blocked.

And to illustrate the lack of obviousness of the invention, the court quotes the statement made by one of Worwerk's experts: “What now seems so easy - that I can cook while I am weighing - before seemed impossible, so impossible that it was not even desired ”.

In other words, there is an inventive activity because the previously known devices (and the patents that protected them) did not even consider this as a problem that had to be solved; This new functionality or improvement of the kitchen machine was not considered: in none of the previous patents is it evidenced / suggested / hinted that it was a technical challenge to create a kitchen machine that, in addition to processing / stirring, would allow food to be weighed by activating independent of both functions (carry out the weighing of food in the container or shaking beaker regardless of the status of the switch).

Although the technical solution was simple, the court considers that it was not obvious. It is stated that an expert in the field, starting from the state of the art and with the combination of the aforementioned patents, would not have arrived at the invention, since he would not even have found the motivation to do so.

In view of the fact that the court considers that there is an inventive activity in the independent claim R1, the other claims -dependent on R1- should automatically also be considered inventive.

Patent infringement action

Despite the fact that LIDL denies that its kitchen robot incorporates feature R1.1 of the Worwerk patent (safety mechanism), the court considers the presence of this feature proven through a video provided by the plaintiff's expert in the one that shows the LIDL machine working, with the stirring system in motion, and how removing the interlock of the lid on the stirring vessel will block the rotation of the stirrer, and how when the lid is re-interlocked on the vessel the agitator mechanism works again.

The court also rejects that the presence of a "filling hole" in the LIDL kitchen machine prevents the aforementioned feature R1.1 being incorporated (under the reasoning that MCC has a filling hole in the lid through which it is intervention inside the shaker beaker possible when the shaking mechanism is operating).

The court declares that, according to the provisions of art. 69 of the CPE, characteristic R1.1 must be interpreted in the light of the description and the drawings; therefore, an expert in the field, in view of figure no. 1 of the Worwerk patent (in which a lid with a filling hole appears -image 3-), I would understand that when R1.1 says that an intervention is not possible inside the stirring vessel during operation, it does not refer to "intentional" interventions inside the beaker or those typical of food processing through the filling hole (figure 1), but it is referring to “unintentional or accidental” interventions inside the shaking beaker, that is, “ for security reasons ”as the patent description makes explicit.

Court decision

In conclusion, the Court considers it proven that Spanish patent ES 2 301 589, owned by plaintiff Vorwerk, is valid as it meets the requirements of novelty and inventive step and the defect of addition of matter alleged by Lidl is not appreciated. ; (b) that the 'Monsieur Cuisine Connect' machine marketed by the defendant Lidl reproduces each and every one of the characteristics of the first claim (R1) of the patent owned by Vorwerk, including characteristic R1.1, as shown in interprets the court; and, consequently, is carrying out acts of direct exploitation of said invention prohibited by art. 59 of the Patent Law of 2015.

Therefore, the court upholds Worwerk's claim and declares the infringement by Lidl Supermercados S.A. of Spanish patent ES 2 301 589, validation in Spain of European patent EP 1 269 898, owned by Vorwerk (also dismissing the patent nullity action filed by Lidl).

Consequently, the court prohibits LIDL from importing, advertising or marketing the ‘Monsieur Cuisine Connect’ machine, for violating the exclusive rights derived from the patent. And it condemns LIDL to withdraw from the market all units of the disputed machine thatare in their possession and that of their distributors, as well as all advertising material.

It also condemns LIDL to indemnify Worwerk for the damages generated by the infringement, in the amount that, in accordance with art. 74.5 of the Patent Law of 2015, will be determined in the execution phase of the sentence once it becomes final ... which may take time if LIDL, as is foreseeable, files an appeal against this sentence before the Provincial Court of Barcelona (Section 15th),

The ruling only affects the ‘Monsieur Cuisine Connect’ model, the one with the touch screen, for marketing in Spain. Other models of this food processor (eg the Monsieur Cuisine Plus model) do not incorporate the patented weighing system and, therefore, are not affected and can continue to be marketed without problems.

Probably, Worwerk will use this ruling as a reference to try to replicate this judicial success in other European countries where it has patents in force that protect its kitchen robot (Thermomix ®).

Final thoughts

The most striking thing about the present case, and perhaps in legal terms what matters to patent attorneys, is that the court grants validity to a claim for a mechanical patent (R1), some of whose characteristics is formulated in terms of the functionality sought ( for example, R1.6, the independence of the switch and the weighing device) which is almost the technical effect sought, rather than the way to achieve it. It is, therefore, a claim drafted in very broad terms.

Moreover, the court itself recognizes that the inventive step would be more in the new functionality that is incorporated into the kitchen machine (independence of the stirring process with respect to the weighing process) than in the way of achieving it, which is very simple. It is expressly granted that the technical solution offered by the patent "is very simple"; and, despite this, the existence of inventive activity is estimated.

The court's statement is very significant when it states that “due to the simplicity of the invention, any technical expert“ could ”have come up with it. Now, as the expert says ... in his report, "simplicity lies precisely in inventive activity, since the expert in the field must overcome the mental barrier that no one has ever done something so allegedly simple before" ".

In this case, it seems that the court has focused more on the creativity of posing a new problem (new functionality) than on the solution given to it in the patent.