On March 6, the Supreme Court of The Netherlands (Hoge Raad) issued two decisions in patent cases.

Less limited limitation

In Scimed v Medinol, the Supreme Court overturned its earlier ruling of Spiro v Flamco (1996), which imposed relatively stringent requirements on the allowability of claim limitations in court proceedings (see the Dutch briefing in the March 2009 issue of Managing IP, which discussed the same issue, in a different case, before a lower court).

The Supreme Court, adhering to the amended Article 138(3) EPC2000 that gives a proprietor the right to limit his patent in national court proceedings, concluded that the Spiro Flamco requirements are no longer applicable.

The Supreme Court limited its decision to the Dutch part of a European patent. In other words, it did not clarify whether the Spiro Flamco requirements would still apply to national Dutch (unexamined) patents.

Inventive inequivalence

The other decision is Schneider v Cordis. In this case the Schneider patent relates to an interventional catheter claimed, inter alia, with reference to a tube having two superposed, secured layers of materials. The inner, low-friction layer is made of a polyethylene. One of the issues was whether Cordis' inner layer of Plexar (a maleic anhydride modified polyolefin material), if not being "a" polyethylene, would lead to infringement as an equivalent.

With Cordis's layers chemically bonded, this was considered a different way of being secured (as compared to a physical bond), as well as a different result (improved adhesion). Thus, the Supreme Court did not find infringement when applying the "function/way/result" test for equivalence.

The Supreme Court then explicitly added its view in respect of another test for equivalence, namely the "insubstantial difference" test. The difference between the layers of Cordis and those defined in the Schneider claims was not considered to be such that the average skilled person would have seen it as an equivalent without applying inventive thinking. In support of that, the Court underscored that this in itself was an invention for which Cordis was granted a patent. Elsewhere in the decision, it was considered "counter-intuitive" to choose for the low-friction inner layer a material (Plexar) which had been known for its adhesive properties.

Thus, in confirming a decision of the Court of Appeal (Hof) of The Hague, the Supreme Court endorsed the applicability in the Netherlands of not only the "function/way/result" test, but also the "insubstantial difference" test for equivalence.

Hajo Kraak

Vereenigde Octrooibureaux NV
Johan de Wittlaan 7
2517 JR The Hague
The Netherlands
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99
patent@vereenigde.com
www.vereenigde.com