SJM Barcelona (Section 4 Patents) of 14 April 2021

The issues debated in the lawsuit are the plaintiff’s allegation of patent infringement and the nullity of the patent invoked by the defendant. In summary:

The applicant Aravén is the holder of Spanish Patent ES 2621356 (hereinafter ES 356), entitled “Shopping trolley”, validation in Spain of European Patent EP 2974940, granted by the European Patent Office. The aforementioned patent claims priority of patent ES 201330361 of 14 March 2013.

The applicant considers that the defendant, Shopping Basket, distributes shopping trolleys which infringe the above-mentioned patent ES 2621356, in particular claim 1, which reads as follows:

  1. A shopping trolley comprising:

a basket (1) having a taper along the horizontal axis in order to facilitate horizontal nesting between trolleys, consisting of a bottom (2) and four vertical side faces of which one of them is a vertically folding face (3) in order to allow the passage of another trolley during said nesting;

a frame attached to the bottom (2) of the basket (1) comprising at least three legs (6) each comprising at least one wheel (7); and

a perimeter handle (5) extending along the entire perimeter of the upper edge of the basket (1) and positioned on it and located on the vertical extension of each of the sides of the basket (1);

characterised in that the perimeter handle (5) has a continuous aspect over the entire upper surface to prevent the user from being encouraged to push the trolley on one side more than on the other sides”.

The defendant opposed the claim and counterclaimed for invalidity of the patent, alleging that there was no infringement of claim 1 of the patent, since although the trolley in question has a perimeter handle with a continuous appearance, it does not fulfil the function “to prevent” the user from being encouraged to push the trolley on one side more than on the others, since the handle has an elevation that makes it preferable to push the trolley from the side where the elevation is located. “The aforementioned handle of the Bravo trolley clearly shows that a user is more inclined to push the trolley by its upper handle than by its lower handle, as the upper handle is perceived as a different area to the rest of the handle. Consequently, the upper handle of the Bravo trolley cannot be used for the purpose claimed in feature e) of R1”.

The judgment considers that there was no infringement of the patent, basing its decision on the fact that the claim includes the term “for” a purpose that is not fulfilled by the allegedly infringing product (shopping trolley), taking into consideration the EPO interpretation guidelines (EPO Guidelines (Part F – Chapter IV-24, point 4. 13.1) sets out the interpretation to be given to claims of the type “product for”, which extends to the present product which is a shopping trolley with a perimeter handle with a continuous appearance over the entire upper surface to prevent the user from being encouraged to push the trolley on one side more than on the others. The said guidelines state :

“lf a c/aim commences with such words as “Apparatus for carrying out the process …”, this must be construed as meaning mere/and apparatus suitab/e for carrying out the process. An apparatus which otherwise possesses al/of the features specifed in the c/aims but which is unsuitab/e for the stated purpose or requires modiftcations to enab/e it to be so used for said purpose, is normal/y not considered as anticipating the claim.

Similar considerations apply to a claim for a product for a particular use.