Concerning the doctrine of “Actos propios” in patent proceedings

The recent judgement rendered by the Court of Appeal of Barcelona on May 13, 2019, refers to the Spanish doctrine of “Actos propios”, and recalls the criteria that must be applied when assessing the infringement and nullity of a European patent.

At first instance, the Commercial Court No. 1 of Barcelona, ​​fully upheld the patent infringement claim filed by SCA TISSUE FRANCE SAS (holder of the brand of toilet paper “Foxy”) against INDUSTRIE CARTARIE TRONCHETTI IBÉRICA S.L. And ordered, among other measures, the withdrawal of the offending products of the market (toilet paper of several white marks) as well as the destruction of the machinery used to manufacture them.

The Court of Appeal of Barcelona based the analysis of infringement and nullity of the invoked patent, grosso modo, on the following reasons:

When analysing the nullity action filed by the defendant, the Court refers to the Spanish doctrine of “Actos propios”, mentioning the Supreme Court’s Judgment no. 366/12, of June 15. And determines that, even if the plaintiff contested the validity of the patent before the European Patent Office (when it was not its owner), it does not allow the legitimate expectation that the company relinquishes its monopoly and does not exercise the actions that correspond to it as the new owner of the patent. The Court concludes that it is not contrary to good faith that the plaintiff opposes a nullity action that itself had exercised, when the patent was owned by a competitor, and when said action was dismissed at the time.

The Court of Appeal dismisses the nullity action against the patent for lack of inventive step, considering that: (i) various elements of claim 1 of the patent were not found in the combination of documents of the state of the art invoked by the defendant; (ii) certain documents invoked as part of the state of the art at the priority date of the patent could not be considered as such in accordance with art. 56 of the CPE.

Regarding the infringement action: The Court recalls that in order to the disputed products infringe the patent, each characteristics of the claim must be reproduced, whether they are in the characterized part or not. The plaintiff had argued that the defendant reproduced each elements of the claim. However, the Court concludes that it has not been demonstrated that the product of the defendants consists of a form of association of toilet paper folds as stated in the patent invoked.

For these reasons, the Court agrees to partially uphold the appeal (as it does not admit the nullity action) and dismiss the patent infringement claim filed by the plaintiff.