Valiant fighting an old shark: a case of claim construction and application of the All Elements Rule

Miguel Vidal-Quadras Trias de Bes

In its recent judgment of 4 November 2022, the Court of Appeal of Barcelona ruled on a case of patent infringement involving motorcycling helmets between the French company Shark and the Spanish company LS2. In its judgment, the appeal Court overturned an infringement decision issued by the Barcelona Commercial Court No. 5. An appeal in cassation has been filed.

Shark is a company in decline in recent years in the motorcycling helmets market. It was acquired some years ago by an American private equity fund. LS2, on the other hand, is a highly innovative family company that in only 15 years of existence has risen to the top of the European and international markets.

Shark is the holder of patent EP 1 806 986, applied for at the European Patent Office on 30 September 2005. LS2 launched a first helmet, its Convert model, in 2012 and then in 2016 launched a new model called Valiant. LS2 was not sued for patent infringement in Spain until March 2020. Previously the Convert helmet had been sued in France for patent infringement and on 17 November 2016 the Commercial Court of Paris declared patent infringement, a decision that was upheld on appeal on 26 October 2018. Subsequently, in France and Italy Shark attacked another competitor based on the same patent but on that occasion the legal claim was dismissed and the respective courts found that there was no infringement.

The key question: was the sequence of movements claimed as such in the patent a limit to the claim protection?

The discussion on patent protection was confined to the construction of the claim which claimed a protective helmet. The helmet covered by the patent featured a movable chin guard which moved from front to the rear over the visor and characterized by the fact that the chin guard followed  trajectory “not entirely circular, along which said chinguard begins by moving away from said shell, is then raised and tilted over said visor, and finally moves back towards said shell at the rear thereof“. In other words, the trajectory of the claimed chin guard was not circular because it followed a three-step sequence: (1) it first moved away from the helmet body, (2) it was then raised and tilted over the visor, and (3) it finally approached the helmet body at the rear.

In marketing its helmets, Shark placed emphasis on explaining the operation of this invention by means of a sticker affixed to the helmet shields:

Unlike the helmet protected by Shark, the Valiant helmet was lifted directly from the first moment, a point admitted by both parties. However, Shark took the view that the patent should be construed in such a way that separation and raising could occur simultaneously and that this should not affect the scope of protection claimed. In Shark’s view, there was therefore a literal infringement of its patent.

In its judgment of 28 October 2021, the first instance judge considered that when the claim “states that [c.2] the chin guard is first detached from the shell, and [c.3] then raised and tilted above the visor, and [c.4 finally moves back towards the shell at the rear of the helmet, does not exclude that the movements of separation of the chin guard from the helmet and the raising and tilting can occur simultaneously, at the same time” (emphasis included in the decision).

Following this conclusion, the court concluded that the patent was infringed by reproducing the claimed elements. The first instance judgment was appealed by LS2.

Reversal of the first instance judgment on appeal: application of the all elements rule when construing the scope of protection of a claim

In its judgment of 4 November 2022, the Court of Appeal of Barcelona overturned the first instance decision by applying the principles on patent claim construction and the all elements rule.

The Court recalls that according to the case law of the Spanish Supreme Court, “in order to enter into the study of infringement, it is first necessary to determine the scope of protection conferred by the patent through the claims. In order to do so, it will be necessary to construe the claim or claims affected, in order to understand their relevant technical and legal meaning, and thus be able to determine the scope of protection conferred by the patent. After this, a comparison can be made between what the patent is claiming, as it was granted, according to its proper scope, and the contested embodiment“. Based on this, and after analyzing its own doctrine on the application of article 69 of the EPC, the Court concludes that “We do not believe that the contested decision complied with these principles when interpreting the scope of protection of the patent under consideration“.

In the opinion of the specialized patent section of the Court of Appeal of Barcelona, the content of claim 1 of Shark’s patent was sufficiently clear in its own wording, so there was no need to refer to the drawings to ascertain it, concluding that “what the disputed features (c1, c2 and c3) describe are clearly sequential movements or steps in the