case | 27 Jan 2023

Patent on playground swings was found invalid

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Setterwalls has recently successfully represented a company that designs and sells playground equipment in a patent dispute regarding two-person swing seats for parents and children. The Swedish Patent and Market Court (“PMC”) found that the opposing party’s patent was invalid, and that the client’s swing seat would not have infringed even if the patent had been valid.

The patent holder filed a lawsuit in January 2021, presenting, among other things, claims for a prohibition under penalty of a fine, orders for withdrawal of products from the market, and determination of liability for alleged infringement of a European patent regarding the design of a two-person swing seat intended for parents and children. Setterwalls’ client disputed the infringement claim, arguing that its two-person swing seat did not fall within the scope of protection of the patent. The client also brought an action for the patent to be invalidated in Sweden due to added subject-matter, lack of novelty and lack of inventive step.

The main hearing was held over three days in December 2022, and the Patent and Market Court (PMC) issued a judgment on 25 January 2023.

PMC first tried the invalidity action. Regarding added subject-matter, PMC stated that a patent application may not be modified so that a patent is applied for on something that was not apparent from the patent application on the date of filing. In light of this, PMC found that the patent claim stated that the swing seat should have “base portions” (in plural), while the application as filed only mentioned swing seats with a “base portion” (in singular). PMC held that an embodiment with several “base portions” could not be inferred from the application as filed, neither explicitly nor implicitly. As a result, The court found that the patent as granted contained added subject-matter and was therefore invalid.

The patent holder had requested as a secondary to quaternary claim that the patent be maintained in amended form, according to various proposed sets of auxiliary claims. Since all auxiliary claims included the “base portions” feature (in plural), PMC found that they did not remedy the problem of added subject-matter and that the patent could therefore not be maintained in amended form.

Referring to the doctrine of hierarchy of courts and the patent holder’s argument that the term “base portions” could be read as “base portion”, PMC also chose to examine whether, according to the patent, the alleged invention would have had an inventive step if the “base portions” feature had been present in the application as filed. PMC was content with trying one of the client’s inventive step attacks, which was based on a YouTube video, demonstrating the use of another two-person swing seat before the patent’s priority date. PMC considered that while the alleged invention met the novelty requirement compared to the previously known two-person swing seat, it considered that it would have been obvious for the skilled person to make the modifications necessary to arrive at the alleged invention. Consequently, the patent also lacked inventive step.

PMC then tested the patent holder’s infringement claims under the hypothetical assumption that the patent was valid. Since the client’s two-person swing seat had only one “base portion” (singular), PMC found that the swing seat fell outside the scope of protection of the patent, which only included swing seats with at least two “base portions”. Consequently, the client’s swing seat would not have infringed the patent even if the patent had been valid.

It remains to be seen whether the patent holder will appeal the ruling to the Patent and Market Court of Appeal. We believe that PMC’s decision is well considered, and that it illustrates in a pedagogical way how the requirement for support in the application as filed is applied by the Patent and Market Court in situations where the deficiency affects the originally granted patent.

(See PMC ruling on 25 January 2023 in Case No. PMT 379-21 and PMT 5963-21)

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