EPO's revocation of coffee pod patent revisited

Simmons & Simmons led the way in securing a victory for Kraft Foods on 30 August against Sara Lee vs. Douwe Egberts at the European Patent Office ("EPO") in Munich, see my earlier post "Sara Lee’s Patent for Coffee Pads Revoked by EPO". Kraft's in-house team was also assisted by Andrew Waugh QC and Dr Peter Klusmann of Hoffmann Eitle.

After a five year battle, the Technical Board of Appeal of the European Patent Office held that Sara Lee's European Patent EP904717 (for an assembly of a container and coffee pod for use in a coffee machine) was invalid and, accordingly, the patent was revoked. Click here for the Minutes of the EPO Appeal Board Meeting (the full text of the decision will only be available later)

The decision ended Sara Lee's attempt to claim exclusionary rights to coffee pod sales utilised in the Senseo coffee pod machine (by Philips) across Europe. Sara Lee's aim was to ensure that consumers only used its Senseo coffee pods, or pods licensed by Sara Lee. Initially Sara Lee sought to enforce its patent against a number of smaller coffee pod manufacturers and retailers in the Netherlands, Belgium and Germany, whose pods (similar to tea bags, but filled with coffee) were suitable for the Senseo machine. A number of smaller companies lodged post-grant opposition proceedings at the EPO and were soon joined by Kraft Foods, the world's second largest branded food & beverage company which is known for its Jacobs, Carte Noire, Kenco and Maxwell House coffee brands in Europe who had been selling coffee pods long before the Sara Lee's patent had been granted.

Opposition proceedings enable a successful party to dismiss a European patent centrally in all the countries for which the patent hasbeen granted (in this case 19 countries across Europe).

Instructing Jeremy Morton and Marc Döring of Simmons & Simmons' London Intellectual Property Group to advise on strategy and represent them at the EPO, Kraft also commenced declaratory proceedings against Sara Lee in the Paris District Court. In response, Sara Lee aggressively pursued infringement proceedings against Kraft in Germany.

The EPO Appeal Board decided to revoke the patent after a thorough review of the arguments presented by both parties. It was a great success both to Kraft and to many other coffee pod producers and retailers, many of whom had already been forced to take licences from Sara Lee under the patent to continue trading. One of Kraft's guiding principles of was "play to win".

Gerd Pleuths, SVP & Deputy General Counsel of Kraft Foods commented:

"Kraft is extremely satisfied with the decision, particularly since we will now
be able to continue selling our coffee pods without any restrictions. Kraft has
been selling its pods for more than 20 years, far longer than Sara Lee. The favourable decision is the result of the very successful cooperation
between our in-house lawyers and our outside counsels at various firms.
However, Simmons & Simmons' Marc Döring played a key role in coordinating all
our efforts which ultimately resulted in this important success."