Is the Gillette Defence available as a defence in UPC infringement proceedings?

The Düsseldorf Local Division of the UPC ruled in favour of SodaStream Industries Ltd. in a patent infringement case against Swedish company Aarke AB. SodaStream alleged that its European patent for a carbonation device, was infringed by Aarke’s product. 

Gillette Defence

Aarke raised the so-called Gillette Defence (named after a 1913 UK case), claiming that the alleged infringing product was obvious over the prior art, so that the claims are either not infringed at all or, in the alternative, they must be invalid. This said, Aarke clarified that it was not attacking the validity of SodaStream’s patent outright, and there were no ongoing proceedings questioning the validity of SodaStream’s patent. 

SodaStream countered by asserting that the Gillette Defence is not in accordance with the Unified Patent Court Agreement (UPCA) and therefore inadmissible before the UPC. According to SodaStream, accepting the Gillette defence would require the court to assess the validity of the patent in light of prior art, which is beyond the scope of infringement proceedings. SodaStream argued that validity challenges should instead be brought through a revocation action or opposition proceedings before the EPO.

The court ultimately found that Aarke’s Gillette Defence was unsuccessful. It held that the scope of protection for a European patent is determined by its claims, interpreted in light of the description and drawings, and not by external comparisons to prior art or specific embodiments. The court emphasised that where prior art is discussed in the patent description, any relevant distinctions must be considered, as was done in this case.

The court did not, however, explicitly deny the admissibility of the Gillette Defence. In this case, because the prior art was sufficiently discussed in the patent itself, and the patent description already distinguished the invention from prior art, the court concluded that there was no room for the Gillette Defence as presented by Aarke.

“Monopoly Is Monopoly”

Having failed in their defence against alleged infringement, Aarke argued that an injunction would be disproportionate, as its product targeted a small, niche market of design-focused consumers who pay relatively high prices, unlikely to overlap with SodaStream’s broader customer base. 

The court dismissed this argument on the basis that SodaStream, as the patent holder, has a legitimate interest in securing an injunction to create market opportunities for itself. Even if the two companies served different customer bases, SodaStream could reasonably expect to attract Aarke’s former customers if it became the sole supplier of carbonators with effective burst protection for glass bottles, especially given growing consumer interest in avoiding plastics for environmental reasons.

Looking ahead, when defending UPC infringement cases, parties should be cautious about relying on the Gillette Defence, as the Court may prioritise the claims and distinctions outlined in the patent itself over external prior art comparisons. Validity challenges are better addressed through revocation actions or EPO opposition proceedings. However, where a counterclaim for revocation is provided as well as a defence to infringement, we would suggest that that would be a legitimate basis for running a Gillette defence in the future.