ECC forces Nestlé Nespresso onto the defensive, pushes for a decision

Case No. O2015_001 ¦ Main Hearing of 15 June 2016

ECC logo (source: ECC)
ECC logo (Source: ECC)

As reported earlier on this Blog here, Ethical Coffee Company (ECC) has sued Nestlé Nespresso SA for patent infringement. Long time no hear in this matter since February 2015. But now the main hearing took place on 15 June 2016.

Somewhat unexpectedly only the Swiss patent CH 701 971 B1 is at stake; see Swissreg for further details. ECC apparantly has not invoked its corresponding European patent EP 2 312 978 B1; see EPO Register for further details.

The only independent claim 1 of CH’971 reads as follows:

Dispositif pour la préparation d’une boisson extraite à partir d’une capsule (1) comprenant un support de capsule (4) et une cage a capsule (5) a l’intérieur de laquelle sont disposés au moins une entrée d’eau et des moyens de perçage de capsule, caractérise par le fait que ladite cage (5) est agencée de manière à déformer au moins partiellement toute capsule (1) constituée d’un matériau déformable au contact d’eau chaude, qui est disposée dans la cage (5), de manière à ce que la capsule (1) soit retenue dans la cage (5) consécutivement à son contact avec de l’eau chaude.

This (inofficially) translates into English as follows:

Device for preparing a drink extracted from a capsule (1) comprising a capsule support (4) and a capsule cage (5) inside which there are at least a water inlet and capsule-piercing means, characterized in that said cage (5) is arranged in such a way as to deform, at least partially, any capsule (1), made of a material that can be deformed upon contact with hot water, which is placed in the cage (5), so that the capsule (1) is retained in the cage (5) following its contact with hot water.

Confusing, isn’t it? Why should one want a capsule to be retained in the machine? Well, CH’971 itself says this is to discourage the use of capsules that are deformeable upon contact with hot water; see paragraph [0006]. Still confused? It is important to understand that ECC’s biodegradable coffee capsules apparently do not work smoothly with the latest Nespresso machines; they occasionally get stuck — and this is what ECC’s patent is all about; see the mechanical retaining means illustrated e.g. in figures 1 and 2:

ch701971b1_figs

In this example, the internal wall of the cage 5 comprises a recess 6 in the form of an annular groove, the inside of the recess 6 being occupied by a slightly deformable element 7, e.g. an O-ring or a spring which, by allowing itself to be compressed a little, allows a rigid capsule to be inserted into the cage 5, without the capsule 1 becoming deformed. If the capsule 1 softens as a result of its coming into contact with hot water, the side wall of the capsule 1 will be deformed in the region of the recess 6. Once the hot water has been removed, the capsule 1 stiffens and remains jammed in the cage 5, thereby rendering the device inoperative.

The Nespresso® system itself relies on capsules made from aluminum. One would assume that deformation upon contact with hot water is not an issue for these capsules. But for ECC’s biodegradable material, it apparently is. In a nutshell, ECC now claims CH’971 is a patent for the technology it alleges Nestlé Nespresso uses to block its capsules.

Nestlé Nespresso rebuts the alleged infringement; fulfilment of at least the underlined features is denied (see quotation above). In addition, nullity of the patent has been argued as a plea in defense. The plaintiff referred to the decision of an Opposition Division (OD) of the EPO in co-pending opposition proceedings re EP’978 in the same patent family: The opposition filed by Nestec SA has been rejected with decision of 15 March 2016. Note, however, that an appeal is currently still pending (T0696/16). The plaintiff apparently referred to the decision of the OD for the first time only in the hearing. The defendant requested that this reference to the “decision of 29 January 2016” (actually the date of the hearing at the EPO) is belated and thus not to be heard anymore. (Apparently, the court was well aware of at least the existence of the decision of the OD anyhow.)

Further, the defendant elaborated in any detail on an alleged prior user right based on an external contract development project Tolkien; Art. 35 PatA. (Tolkien variants of Nespresso® machines have also been discussed in a UK High Court decision by Arnold J, Nestec SA v Dualit Ltd — [2013] EWHC 923 (Pat); see paragraph [0029].)

Nespresso Production Centre in Avenches, Switzerland
Nespresso® facilities (Source: Nestlé Nespresso)

According to the Wall Street Journal

[t]he stakes for Nestlé are high. All the Nespresso machines currently being sold in Europe, Nespresso’s biggest market, and some of the machines being sold in the U.S. contain the disputed technology.

To get a glimpse of what is going on elsewhere, ECC’s press release of February 10, 2016 is telling. In addition to the present proceedings in Switzerland, ECC has apparently sued Nespresso Deutschland GmbH, Krups GmbH and De’Longhi Deutschland GmbH for infringement of EP’978 and its three utility models DE 20 2010 017 801 U1, DE 20 2010 017 802 U1 and DE 20 2010 017 784 U1. The actions are pending before the District Courts of Düsseldorf (docket no. 4b O 9/16) and Munich (docket no. 7 O 24 470/15); no further information is available to date. Moreover, ECC informed that it has initiated further proceedings in France and Belgium.

We’ll see how all this turns out in the end. The parties did not enter into settlement negotiations; ECC apparently pushes for a decision.

Reported by Ingo LUMMER and Martin WILMING

— BIBLIOGRAPHY —

Case No. O2015_001 ¦ Main Hearing of 15 June 2016

Ethical Coffee Company SA ./. Nestlé Nespresso SA

Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Daniel KRAUS
  • Dr. Herbert LAEDERACH
  • Kurt STOCKER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

— PATENT IN SUIT —

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