Infringement of the Thermomix patent rights

On January 19, Commercial Court number 5 of Barcelona, specialized in patent law, ruled in favor of the German entity Vorwerk — owner of the well-known Thermomix brand— in its legal battle against a rival. In its decision, the court ordered the respondent to stop selling a food processor and withdraw it from the market as it infringes the Thermomix ® patent rights. It was also ordered to compensate the patent holder.

The dispute dates back to 2008, when the European invention patent protecting the Thermomix kitchen appliance’s technology was validated in Spain (ES 2 301 589). Vorwerk then started to market the Thermomix machine in Spain for just over 1,000 euros. In 2018, without reaching any agreement with Vorwerk, the respondent started to sell a rival food processor on a seasonal basis for under 400 euros.

Vorwerk’s reacted by filing a claim for infringement of its rights on that European invention patent validated in Spain, in June 2019.The respondent filed a statement of defense opposing Vorwerk’s submissions and requested the invalidity of the disputed patent in a counterclaim.

This patent includes eight product claims, of which only the first (C1) is an independent claim, and this is where the dispute between the parties lies. The court first analyzed claim C1 to determine its scope of protection — applicable to its later validity and infringement analyses — in accordance with the limits established in the European Patent Convention. The judgment stated that claims must be interpreted above and beyond their literal wording, focusing on the intentional interpretation through an expert in the area to accurately outline their scope. On that basis, the court concluded that the patent’s scope of protection is that of a kitchen appliance, known in and of itself, which operates safely through circuits permitting the independent operation of the mixing and weighing devices, such that, when the switch is activated, the mixer stops but the weighing function does not.

After these general reflections, the court first studied the grounds for invalidity of the patent and then, after dismissing them, performed the analysis.

The possible invalidity of the patent

The respondent offered three grounds for invalidity, namely: addition of subject matter between the European patent and the patent validated in Spain, lack of novelty, and lack of an inventive step. The decision rejected these three grounds for invalidity for the following reasons:

• Regarding the addition of subject matter between the European patent and the patent validated in Spain, the court ruled that: (i) the object of the patent does not exceed the content of the application as it was submitted, as the information passed to the expert in this case directly and categorically derives from the information previously delivered in the application; and (ii) there is no extension/generalization of characteristics; if anything, there is a restriction in one of the characteristics with regard to the original description, which is therefore considered included in the original description.
• The court also ruled out the lack of novelty claimed by the respondent based on the previous Braun patent – US 5 329 069. In particular, the court pointed out that that patent does not make it possible to weigh food while the mixing mechanism is operating, as the disputed patent does.
• Regarding the lack of an inventive step, the court applied the problem-solution approach and, after determining the nearest state of the art and defining the technical problem the disputed patent aims to solve (i.e., how to obtain a kitchen appliance that, as well as mixing/beating food, can also weigh, where both independent functions are also activated individually), it concluded that the claimed invention is by no means clear for an expert in the area.

The infringement of the patent

Having established that the patent is valid, the court analyzed the infringement claim. It recalled that, to establish whether an infringement has taken place, it must compare the patent and the allegedly infringing product. Specifically, the court had to verify whether the respondent’s kitchen appliance infringes the patent’s scope of protection, such that only when all the characteristics of the claimed invention are simultaneously reproduced by the respondent’s processor can it be concluded that there has been an infringement.

In particular, the only disputed characteristic between the parties is characteristic C1.1 of the preamble of the first claim. The respondent recognized the presence the other characteristics of C1 in its processor.

Specifically, C1.1, on which the judgment of infringement depends, reads: “A food processor having a mixing vessel, a lid and a housing, the mixing vessel and the lid being lockable in such a manner that access to the mixing vessel is not possible during operation.” The court clarified that this characteristic must be interpreted jointly and inclusively with the other technical characteristics of the first claim, and that, therefore, it must be understood that, when the lid is released by twisting about the vertical axis of the mixing vessel (C1.2), the mixing mechanism is interrupted for safety reasons (C1.3). When the lid is released by twisting about the vertical axis of the mixing vessel (C1.2), this twisting position defines the operating position of the mixing vessel (C1.2 and C1.3), such that access to the mixing vessel is not possible during operation (C1).

The video of the respondent’s appliance shows the processor in operation, with the mixing system moving, and how, upon removing the lid lock on the mixing vessel, the rotation of the mixer is blocked but, upon re-securing the lid on the vessel, the mixing mechanism starts to work again. In the court’s opinion, this graphic evidence shows that the processor reproduces characteristic C1.1 interpreted jointly with the other characteristics of claim one.

Ruling

The court resolved that the patent protecting the Thermomix is valid and that the respondent’s processor entirely reproduces its characteristics, which constitutes a direct and unauthorized exploitation of the protected invention. Therefore, it ordered the respondent to stop marketing its processor, to withdraw all models from the market and destroy them, and to compensate Vorwerk for the harm and losses caused, with the scope determined in the enforcement phase of the judgment, once it is final and not subject to appeal. It should be highlighted that the respondent has appealed the judgment and the Provincial Court of Appeals of Barcelona will have to issue a ruling. Furthermore, the patent protecting the Thermomix expires on June 27, 2022, and so any third party may freely use it from that date without infringing any intellectual property rights.

Authors: Nora Oyarzábal and Paula Conde