In one of the saga of cases that involved Societé des Produits Nestlé and companies that are trying to market capsules compatible with Nescafé’s Dolce Gusto system, the defendant alleged, among other arguments, that some of the patents asserted were null due to a lack of inventive step. The case was handled by Commercial Court number 5 of Barcelona which, following a long-standing Spanish tradition, decided to examine inventive activity following the “problem and solution approach” traditionally applied by the European Patent Office (“EPO”). Although Spanish Courts have highlighted in several cases that following this method is of course not compulsory, they find some comfort relying on a conceptual framework that allows them to make a more principled assessment of the technical arguments asserted by the parties.

As readers will no doubt be aware, this method requires identifying the “closest prior art”, defining the “objective technical problem”, and assessing whether the solution (i.e. the invention) would have been obvious to one of ordinary skill. This case provides a good illustration of the importance of getting the definition of the “objective technical problem” right. According to the expert used by the defendant, the technical problem that the patent was seeking to resolve was “to avoid that the user needs to mount or assemble the capsule and collector part 9, or avoid them being separated accidentally because these parts are already assembled at the factory. The solution to this problem, which involves adhering or joining the capsule to collector part 9, is obvious not just for a person skilled in the art, but for any average technician or for a person without technical knowledge, with just common sense“.

In contrast, the Judge considered that:

“Contrary to what the defendant and expert Esteban allege, the fact is that the technical problem to be resolved is described in the patent itself (column 1, lines 17 to 25 and lines 62 to 68 and column 2, lines 1 to 3: The problem with this cartridge is that the beverage extracted using the cartridge passes over this mounting and via means of channelling, which means that it is difficult, if not impossible, for reasons of contamination and taste, to contemplate the extraction with this system of cartridges containing substances other than roast ground coffee, due to the residue of the drink present on the mounting. […] One of the principles of this invention rests on the fact that the capsule contains its own means of opening, activated by the increase in the pressure of the fluid introduced into the capsule at the moment of extraction. Another principle of the invention rests on the fact that the capsule has its own exit route with its own means of channelling that make it possible to avoid, or at least considerably reduce, contact with the elements of the system or the extraction device. Therefore, the objective technical problem is the one offered by the patent itself: avoiding contact between the beverage and the machine, which makes it possible to use a single machine to prepare different beverages.”

This led the Judge to the conclusion that “As the definition of the technical problem to be resolved is erroneous, we do not consider it necessary enter into the analysis of the other aspects or steps of the “problem-solution” method, that is, the determination of the state of the art and obviousness.”

The teaching of this rather bold conclusion is clear: if you get the technical problem wrong, you may have a problem.


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  1. As I understand it, what happened was that judge noted a discrepancy between i) the technical problem announced in the specification of the patent application as filed, and ii) the one declared by the Defendant (accused infringer).

    And with that, the judge declined to give any more attention to the Defendant’s validity attacks under Art 56, EPC.

    A Question: Was the Party attacking validity merely trying (in all good faith) to establish that 1) it was, at the date of the claim, plainly obvious to modify D1 into something within the scope of the claim in suit, and 2) that the problem announced in the application as filed was a spurious one, whereby 3) any technical effect delivered by the claim in suit is merely a so-called “bonus effect” of performing the obvious step so that 4) the claimed subject matter, even if it solves the problem specified in the appln as filed, is nevertheless obvious?

    If so, the attitude of the court strikes me as intemperate, and wrong.

    But if the Defendant did NOT make such pleadings, well then the court strikes me as robust and right.

    Which was it, I wonder.

  2. In the present case, it was of special interest that the closest prior art already solved the technical problem identified in the description and that, according to well-established jurisprudence of the EPO boards of appeal and Guidelines, it was alleged that “The objective technical problem (…) may not be what the applicant presented as “the problem” in his application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only. Reformulation might lead to the objective technical problem being less ambitious than originally envisaged by the application.” [G-VII-5.2.].
    Although the mentioned closest prior art is mentioned in the patent as granted it is not mentioned in the application as filed (its citation was added to the text during the examination of the application to comply with Rule 42 EPC, because it was a patent document revealed by the EPO during the search) and so was alleged that the applicant was not actually aware of it at the time the application was filed and that the reformulation of the technical problem is not only possible but proper.

  3. OK. That helps. Thank you Luis.

    D1 was mentioned in the B publication. So the EPO Examining Division was satisfied, that patent claim 1 was inventive over D1.

    For a court tracking the EPO’s Problem and Solution Approach, that might be one reason why it was inclined to dismiss the Defendant’s contrived obviousness attacks based on D1.

    Nice to see a smidgeon of post-grant deference given by a court to the patentability experts at the EPO.

  4. I find it unusual that the draftsman of that expert evidence felt the need to say that the solution to the technical problem (however described) was obvious even “for a person without technical knowledge, with just common sense”, which is beside the point as that is not the standard you need to show. Things are never so black and white in patent cases, and bold statements like that may have the undesired effect of alienating a judge.

  5. It would help to know which patent exactly which patent(s) are being litigated here. It already quite annoying not to be provided with the case details in articles published in the general press. It is even more so on an IP blog.

    The Nestlé “saga” as it is called contributes to give the patent system a bad name, with its renewed monopolies on clearly off-patent elements by virtue of the doctrine of contributory infringement.

  6. Thanks to EME and Dog for those last two interesting thoughts.

    Yes, I agree. Let’s have the patent number please.

    As to the ex post facto declarations of so-called experts, see from litigation in England how difficult it is to exclude hindsight, so as to arrive at an opinion that has any useful probative value. BTW,if you want my opinion, after 40+ years of patent practice, the best way to “do” obviousness is with a TSM-based approach, such as PSA at the EPO. That is, of course, because it relies on what people wrote, said and did before the date of the claim, not afterwards. I do not know any better way to exclude ex post facto thinking from the obviousness analysis. TSM, of course, means “teaching, motivation, suggestion”. It used to be de rigeur in the USA. Shame it isn’t any longer.

    Why isn’t it? Because non-specialist patent judges, intelligent and well-meaning, but with no knowledge of patent drafting and prosecution, allowed themselves to be led astray, by well-funded and very skillful advocacy within a totally adversarial litigation system under English law, that works on the basis that the only evidence with probative value is witness evidence.

  7. If the problem is already solved, then the conclusion is that the alleged invention allows the same effect to be obtained.

    Accord to the PAS approach, the objective problem is thus to obtain an alternative.

    Obtaining an alternative may or may not be inventive. But simply saying that if the formulation of the problem by the defendant is not correct, the subject-matter of the claim at stake is obvious goes a trifle too far!

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