LIDL wins battle to Vorwerk: Monsieur Cuisine does not infringe Thermomix patent

Vorwerk & Co. Interholding GmbH (hereinafter, Vorwerk), manufacturer of the cooking machine “Thermomix”, on June 14 2019, filed a lawsuit against Lidl Supermercados S.A. (hereinafter, Lidl) bringing a patent infringement action in relation to the patent EP 1 269 898 - ES 2 301 589 (ES '589) protecting technology consisting of a "cooking machine", alleging that the offering and marketing in Spain of a cooking robot under the trademark “Silvercrest” and identified as “Monsieur Cuisine Connect”, a competitor of Vorwerk's Thermomix cooking machine, infringes its patent.

The patent ES '589, alleged by Vorwerk, is the validation in Spain of the European patent EP 1 269 898, applied for on June 27 2002 and claiming a priority of June 29 2001. The application for effectiveness in Spain was filed on May 9 2008 and the translation was published on July 1 2008. The patent ES '589 claims the invention of a cooking machine including eight product claims. The first one (R1) is an independent claim and the next seven are dependent claims.

LIDL filed a Statement of Defense, opposing the plaintiff's claim, and also filed a counterclaim, claiming the nullity of the patent due to lack of novelty (later abandoned), inventive step and addition of subject matter.

The Commercial Court nº 5 of Barcelona handed down a judgment on January 19 2021, upholding the claim stating that the Spanish patent ES 2 301 589 is valid as it meets the requirement of inventive step as the technical solution given by the patent was not obvious to a person skilled in the art and there was not defect of added subject-matter. Moreover, the Monsieur Cuisine Connect marketed by Lidl, reproduces each and every one of the technical features of the first claim (R1) of the patent (in the sense appreciated by the Court), and, consequently, the defendant had carried out acts of infringement prohibited by the art. 59 of the Spanish Patent Act.

This judgement was appealed by Lidl before the Court of Appeal of Barcelona (Section 15ª) and the Court recently issued its ruling, on January 13 2022, revoking the judgement of first instance.

The Court of Appeal considers that the nullity of the patent is mainly due to addition of subject matter extending the scope of the patent (in relation to feature R.1.4) and that this statement declaring the nullity of the patent is enough to uphold the LIDL's appeal. In addition, the ruling also considers the lack of inventive step of the patent (as the technical features of its first and main claim are obvious to a person skilled in the art in view of D1 (Braun) combined with D3 (Philips, EP 0 638 273) and D6 (Matsushita, US 4 373 677), describing a security system for locking the lid preventing access to the interior while functioning.

Furthermore, the Court of appeal states that, even if the patent is valid, importation, offering for sale and marketing by Lidl of the Monsieur Cuisine Connect would not constitute an infringement of the patent ES 2 301 589 because of the cooking machine identified as “Monsieur Cuisine Connect” does not reproduce the necessary sequence to intervene safely in the stirring vessel as stablished in the feature R1.1.

This judgement may be appealed by Vorwerk before the Spanish Supreme Court.