JUDGMENT

DISTRICT COURT OF THE HAGUE

Trade and Industry SectionSeat: The Hague

Judgment of 8 May 2013

in the matter with case number/cause-list number C/09/416501/HA ZA 12-452 of

the private limited liability companyCRESCO HANDELS-B.V.,with its registered office in Honselersdijk, the Netherlands,claimant,legal counsel: J.P. Heering, practising in The Hague,

versus

the private limited liability companyTASTE OF NATURE HOLDING B.V.,with its registered office in Monster, municipality of Westland, the Netherlands,defendant,legal counsel: P.J.M. Steinhauser, practising in Amsterdam,

and in the matter with case number/cause-list number: C/09/418860/HA ZA 12-577 of

the private limited liability companyTASTE OF NATURE HOLDING B.V.,with its registered office in Monster, municipality of Westland, claimant,legal counsel: P.J.M. Steinhauser, practising in Amsterdam,

versus

the private limited liability companyCRESCO HANDELS-B.V.,with its registered office in Honselersdijk, defendant,legal counsel: J.P. Heering, practising in The Hague.

The parties will hereinafter be referred to as ʻToNʼ and ʻCrescoʼ. For ToN, the cases were handled by its legal counsel (mentioned above) and by the patent attorney B.W. Swinkels.

For Cresco, the cases were handled by T. Berendsen and M.R. Rijks, lawyers practising in Den Bosch, and the patent attorneys J. Brants and Phd. E. Crabbe.

1. Proceedings

in case 12-452

1.1. The course of the proceedings is evident from:

- the summons dated 11th January 2012, including Exhibits 1-11;- the Statement of Defence, including Exhibits 1.1-1.4;- additional Exhibits (numbers 13 and 14) submitted by ToN;- additional Exhibit (number 10) submitted by Cresco;- additional Exhibit (number 16) submitted by ToN;- additional Exhibit (number 11) submitted by Cresco;- pleadings dated 18th January 2013 and the written arguments submitted by both parties along with the pleadings;- letter from counsel Steinhauser dated 24th January 2013 concerning additional court fees payable by Cresco;- response from counsel Rijks dated 30th January 2013 to the above-mentioned letter from counsel Steinhauser.

1.2 The judgment was delivered today.

in case 12-577

1.3. The course of the proceedings is evident from:

- decision of the process judge of this District Court dated 18 th April 2012, in which ToN was granted permission to litigate in accordance with the rules for accelerated proceedings on the merits in patent cases [Regelement Versnelde bodemprocedure in Octrooizaken];- summons date 20th April 2012, including Exhibits 1-10;- Statement of Defence, including Exhibits 1-9;- motion for the court, entailing a conditional provision for ToN; - Statement of Defence in the interlocutory proceedings;- additional Exhibits (numbers 11, 12 and 14) submitted by ToN;- additional Exhibit (number 10) submitted by Cresco;- additional Exhibits (numbers 15 and 16) submitted by ToN;- additional Exhibit (number 11) submitted by Cresco;- pleadings dated 18th January 2013 and the written arguments submitted by both parties along with the pleadings;- letter from counsel Steinhauser dated 24th January 2013 regarding additional court fees payable by Cresco;- response from counsel Rijks dated 30th January 2013 to the above-mentioned letter from counsel

Steinhauser.

1.4. The judgment was delivered today.

2. The facts

2.1 Taste of Nature is the holder of European patent EP 1 290 938 (hereinafter: the ʻPatentʼ or ʻEP 938ʼ) for Raphanus with increased anthocyanin levels, granted on 25th June 2008 following an application submitted on 7th September 2001. EP 938 is effective in the Netherlands and other countries. The granting of the patent was not opposed. The original English text contains the following claims regarding EP 938:

1. A Raphanus sativa plant, obtainable by screening Raphanus sativa plan far [this should most likely read ʻplants forʼ; Rb] their ability to produce sprouts with at least some purple coloring, selfing and/or crossing said plants for several generations and selecting progeny having sprouts with purple coloring, characterized in that the sprout of said plant comprises anthocyanins at a level of at least 800 nmol per gram fresh weight of sprout.

2. The plant of claim 1, wherein the anthocyanins have an absorbance maximum in the range of 515 – 550 nm.

3. The plant of claim 1, wherein the anthocyanins comprise an anthocyanin having an anthocyanidin moiety that has the structure of Formula 1, and wherein R1 is OH or OCH3, and wherein R2 is H, OH, or OCH3.

4. A plant according to claim 1, wherein the plant is obtained through breeding and selection from Rapharus sativa lines CGN 6924, CGN 7240, ATTC No. PTA- 3630, or combinations thereof.

5. A sprout obtained from a plant according to claim 1.

6. The sprout according to claim 5, wherein the sprout is prior to the two-leaf stage.

7. A container containing a plurality of sprouts according to claim 6.

8. A sprout according to claim 5, wherein the sprout is a plantlet that has at least two leaves and a height of less than 20 cm.

9. A container containing a plurality of plantlets according to claim 8.

10. A container according to claim 9, wherein the container contains at least 3 plantlets per cm2.

11. Material from a plant according to claim 1, wherein the material is a seed and wherein said seed is characterized in that the seed upon germination produces a sprout and said sprout comprises anthocyanins at a level of at least 800 nmol per gram fresh weight of sprout.

12. A method for producing sprout as defined in claim 5, wherein the method comprises the steps of:(a) germinating seed of a Raphanus satwa plant in a medium comprising water, at 10-35ºC under high humidity, and optionally in a container, whereby the Raphanus sativa plant is a plant as defined in any one of claims 1-4;(b) growing the germinated seeds obtained in (a) under conditions defined in (a) until a sprout of desired developmental stage is obtained, whereby in (a) the seed is germinated at high humidity in a rotating drum or container while spraying the seed with water at least once, and optionally with the addition of light, and in (b) the germinated seeds are grown for at least 50 48 hours.13. A method for producing sprout as defined in claim 5, wherein the method comprises the steps of:(a) germinating seed of a Raphanus sativa plant in a medium comprising water, at 10-35ºC under high humidity, and optionally in a container, whereby the Raphanus sativa plant is a plant as defined in any one of claims 1-4;(b) growing the germinated seeds obtained in (a) under conditions defined in (a) until a sprout of desired developmental stage is obtained, whereby in (a) the seed is germinated on a non-nutritive solid support containing water, at a density of 3-12 seeds per cm2, at a temperature of 15-35ºC, at high humidity and whereby in (b) the germinated seeds are grown at a temperature of at least 15-35ºC, at a humidity of at least 70% and under a daily cycle of light and optionally with additional lighting, until the germinated seeds have grown into plantlets having at least two leaves, and optionally, the method comprises a step (c) wherein further growth of the plantlets is arrested by cooling to a temperature between 1 and 6ºC.

14. A method for producing anthocyanin, wherein the method comprises the steps of(a) growing a Raphanus sativa plant as defined in any one of the claims I – 4;(b) harvesting the Raphanus sativa plant or part thereof(c) recovery of the anthocyanins in the plant or part thereof; and(d) optionally, purifying the anthocyanins.

The – uncontested – Dutch translation of the claims – is provided below.

[Dutch translation of the text above]

2.2 ToN has granted a licence for the patent to its subsidiary Koppert Cress BV (hereinafter: ʻKoppertʼ). Koppert is engaged in the development and production of sprouts for consumption. In accordance with the patent, it markets the sprouts under the names ‘Sakura cress’ and ‘Sango sprouts’.

2.3 Cresco is engaged in the production and marketing of sprouts and other products.

2.4 Until 1st October 2010, Cresco purchased the sprouts from Koppert, in accordance with the patent.

2.5 Cresco currently markets sprouts under the names Red Radish Cress and (Red) Purple Radish Cress.

2.6 In a letter dated 19th April 2011, Cresco was informed that, in marketing the Red Radish Cress and (Red) Purple Radish Cress, it infringes on the patent, and was ordered to cease the infringement. However, Cresco subsequently continued to market these sprouts.

2.7 ToN then instituted summary proceedings against Cresco, in which it – concisely put – demanded that Cresco cease its infringement on ToNʼs patent. By ruling of 31st January 2012, the process judge of this Court dismissed the claims brought by ToN on the grounds that, based on his preliminary assessment, the claims of the patent invoked by ToN fall under the exception to patentability pursuant to Article 53b of the Convention on the Grant of European Patents (European Patent Convention; hereinafter referred to as ʻEPC’).

3. The dispute

in case 12-452

3.1. Cresco demands that the Dutch portion of EP 938 be declared invalid, ordering ToN to pay the costs of the proceedings within the meaning of Section 1019h of the Dutch Code of Civil Procedure (hereinafter: ‘CCP’).

3.2 The basis of Cresco’s claim is that the patent is not novel, involves no inventive step, is not reproducible; represents an ‘invention’ within the meaning of Article 53, paragraph 2a of the EPC and also falls under the exception to patentability under Article 53b of the EPC for essentially biological processes in the production of plants or animals.

3.3. ToN has defended itself against the claim, maintaining that its patent is, in fact, valid.

3.4. The positions taken by the parties, to the extent relevant, will be discussed below.

in case 12-577

3.5 In sum, ToN demands a prohibition of the infringement of its patent; an order [for Cresco] to account for the scope of the infringement and the profits earned as a result; an order [for Cresco] to pay compensation for the loss, or to pay a portion of its profit, whereby Cresco must be ordered to pay the costs of the proceedings within the meaning of Section 1019h of the CCP. In interlocutory proceedings, ToN also demanded the prohibition of the infringement on a provisional basis in the event that the court were to decide to suspend its decision until the ruling of the Enlarged Board of Appeal of the European Patent Office concerning the admissibility of product-by-process claims under Article 53b of the EPC in what is referred to as the ʻTomato Caseʼ. (G 2/12).

3.6. The basis of ToN’s claims is that Cresco, in marketing the products Red Radish Cress and (Red) Purple Radish Cress, infringes on claims 1, 5, 8, 9 and 10 of the patent.

3.7. Cresco has defended itself against the claims, arguing that the patent is not novel, involves no

inventive step, is non-reproducable, represents an ‘invention’ within the meaning of Article 52, paragraph 2b of the EPC and also falls under the exception to patentability under Article 53b of the EPC for essentially biological processes for the production of plants or animals. In addition, it has also argued that ToN has not proved that it infringed on the patent.

3.8. The positions of the parties, to the extent relevant, will be discussed below.

4. Subject of the patent

4.1. The description below of the background to the subject of the patent was copied from the summons brought by ToN in case 12-577 and, as such, is not being disputed.

4.2. Edible young vegetable plants are referred to as ʻsproutsʼ or ʻseedlingsʼ. There are two types of sprouts. The first type is produced by allowing seeds to sprout in a liquid medium or under moist conditions. During the sprouting process, these sprouts are often kept in motion in slowly rotating boxes. The sprouted seeds are subsequently harvested before cotyledons (i.e. leaves) appear. Well-known examples of these types of sprouts include alfalfa and mung beans (see Figure 1 below).

[Figure 1]

4.3. For the production of the second type of sprout, also referred to as ‘cress’, seeds are sown on a solid surface (such as cellulose) drenched with water, typically in small disposable containers. This humid surface is used to sprout the seeds and allow the sprouts to continue growing until the cotyledons have appeared. The further growth of the plants is then stilted by cooling the plants; this typically occurs before the plants are larger than approximately 4 to 15 cm. The plants are then ready for consumption (see Figure 2). Watercress grown in this manner has been commonly known in the Netherlands for some time, and many other vegetables and herbs have since also become available on the market as sprouts or cress.

[Figure 2]

4.4. The radish (Raphanus sativa) is a plant from the Brassicaceae family. The edible form of radish most common in the Netherlands, a red bulb with white flesh, is a part of the swollen subterranean stem just above the root (radix; a swollen hypocotyl; see Figure 3). The most common radishes are the red-skinned ones; however, there are also varieties with white and red-white colouring. The bulb of the radish is typically consumed raw. As the plant gets older the radish starts forming a stem, and from that time the quality of the bulb disintegrates. In Asia, particularly in Japan, young green sprouts of a specific variety of Raphanus sativa are consumed as well, often in salads and to garnish dishes (see Figure 4). This radish or Daikon Cress® has a pungent, peppery smell and somewhat resembles garden cress, common in the Netherlands.

[Figure 3] [Figure 4]

4.5. Anthocyanins constitute a very large group of pigments that occur in many higher plants. They

add red, purple, blue or blue-black colouring to flowers and fruit, including blackberries and red grapes and – by extension – red wine.

4.6. Anthocyanins are known for their presumed health benefits. Being powerful antioxidants, they are believed to be capable of fighting off damaging free radicals, thereby reducing or preventing damage to DNA and protein molecules. Anthocyanins are also believed to protect against toxic and carcinogenic aldehydes. As such, they also allegedly help prevent cancer and delay the signs of ageing. The red colour of the skin of radish bulbs is also caused by anthocyanins.

4.7. The patent claims (among other things) radish plants containing increased levels of anthocyanins. State-of-the-art radish sprouts, such as the Daikon Cress®, which is consumed in Japan and other countries, have a green colour and low anthocyanin levels. Example 1 of EP 938 describes how the radish plants were developed in accordance with the invention. For this purpose, a total of 568 radish lines, available from seed banks, were first screened for their capacity to produce purple sprouts. It turned out that only 14 of these lines produced sprouts containing at least some purple colour. After several generations of self-pollination and selection, the sprouts of the majority of descendants of these lines displayed a shade of purple that lacked intensity. Only two of the 14 lines (CGN 6924 and CGN 7240) exhibited markedly more intense purple colouring. These lines were selected for further improvement, with selection based on (purple) colour intensity, the time within which the purple colouring turns to green, reproduction time, seed production and the amount of seed per flower; the heights and lengths of the plants/plantlets, the uniformity of the sprouting time, the lack of green progeny, and the size and shape of the cotyledons. This resulted in several different lines exhibiting a very intense purple colour, which did not produce any green progeny. One of these lines, known as V33, was filed (under the Budapest Convention) with the American Type Culture Collection in Manassas, Virginia in the United States on 13th August 2001, and was assigned the ATTC number PTA-3630. This line can be used as such for the production for sprouts, as well as for growing programmes, if desired in conjunction with CGN 6924 and CGN 7240 in order to cross the purple colour into the traditional green varieties.

5. Ruling in both cases

non-patentable materials

no suspension

5.1. The Court is aware that opposition proceedings have been brought at the European Patent Agency in which the Enlarged Board of Appeal was requested to provide an opinion of the admissibility of product-by-process claims for plants under Article 53b of the EPC (G 2/12). It is not being disputed that this question is more or less the same as the question regarding the explanation of Article 53b of the EPC, as discussed in these proceedings. Both parties have nevertheless expressly requested the Court to suspend this case pending the decision of the Enlarged Board of Appeal. The Court will follow their example, as it is not certain by any means that the Enlarged Board of Appeal will provide an opinion on the merits, since the opposing party has since withdrawn from the case and, if the Board does provide an opinion on the merits, both parties estimate this opinion will only be forthcoming after many years.

exception not applicable

5.2 The court rejects the argument of Cresco which, to the understanding of the court, says that the plant claimed in claim 1 of the patent falls under the exception to the patentability of ‘essentially biological processes for the production of plants" within the meaning of Article 53b of the EPC, and that therefore this claim and claims 5, 8, 9 and 10, because of their dependence on claim 1, are invalid.

5.3 The criterion for the interpretation of Article 53b of the EPC follows from Article 131 of the Vienna Convention on Treaties (Trh. 1985, 79). This article states that a treaty must be interpreted in good faith in accordance with the ordinary meaning of the terms of the Convention in their context and in the light of the object and purpose of the Convention. From this it must be concluded that the claimed plant does not fall under Article 53b of the EPC, for the reasons stated below.

5.4 The main point is that the section of Article 53b of the EPC to which Cresco appeals, according to the terms used therein, refers only to ʻprocessesʼ. The invention as claimed in claim 1 does not relate to a method but rather to a plant, that is to say a product. That the claimed plant is partly defined on the basis ofthe manner of production does not change that. Having regard to the distinction in the EPC that is made between processes and products it can be derived from the use of the word “process” that the drafters of the Convention deliberately elected not to bring products within the scope of this part of Article 53b. The importance of the distinction between processes and products in this context is emphasized by the fact that this distinction is also addressed in Article 53b of the EPC itself. In addition to the exception for processes to which Cresco appeals, Article 53b of the EPC also contains a specific exception for certain products, namely plant and animal varieties. It should be noted that it is not in dispute that such an exception for products does not apply to the invention claimed in the claim 1, as this conclusion relates to a plant rather than a plant variety.

5.5 Cresco’s defense that granting patent protection to plants that are obtainable by essentially biological processes leads to an ‘erosion’ of the exemption for essentially biological processes does not hold. Cresco argues in this regard that the applicant for a patent could easily circumvent the exemption by changing a process claim to a product-by-process claim. With this argument Cresco ignores that substantially different requirements apply to the grant of a patent on a method of breeding, as compared to the grant of a patent on a product-by-process claimed plant. A product-by-process claimed plant is indeed a product-invention. A patent for a product-by-process claimed plant can thus only be granted if the plant is new and inventive. The mere fact that the method by which the plant is obtained is new and inventive does not make the plant new and inventive. An inventor which has only developed a new and inventive variant of an essentially biological process, can therefore not escape the exception by claiming his invention as a product-by-process claim. In other words, the inventor of a new and inventive variant of an essentially biological process can only escape the exemption by making a different invention which is not exempted from patentability and applying a patent for such invention. This does not lead to a hollowing out of the exemption.

5.6 Cresco has also argued that the invoked process exemption is (also) meant to prevent the patenting of non-influencable [sic] biological processes. As the Enlarged Board has found (see also

EBA 9 December 2010, G01/08 p. 65, next to last paragraph), is that there is no meaningful explanation for the process exemption of Article 53b of the EPC. Non-influencable [sic] biological processes are non-technical and non-reproducible and therefore fail to meet the requirements for patentable inventions as set forth in Article 52 of the EPC. For such processes an exception on patentability is not necessary. In addition, the breeding methods by which the plants as claimed by ToN are obtainable, are reproducible and assume human intervention. If the logic proposed by Cresco with respect to the process exception were to be accepted, this does not plead for the application of this exception to the invention claimed by ToN.

5.7 The argument of Cresco that the process exception should applybecause ToN’s patent gives the right to ToN to oppose the manufacture of the claimed plant and therefore "indirectly also provides protection" to the process by which the plant is produced, does not hold. It is only the claimed subject matter, that is the invention as defined by the claims, that must comply with patentability criteria. The fact that the production of the claimed subject matter is an activity which is reserved to the patentee, does not make such manufacture a part of the claimed subject matter. An opposite conclusion would also have the absurd consequence that no product would then be patentable because there would also be reserved activities that would not comply with patentability criteria, if only because many reserved activities are not new and inventive.

5.8 The reference to judgments of the Court of Justice and the Enlarged Board of Appeal on the use of human embryos (CJEU 18 October 2011, C-34/10, Brüstle and EBA November 25, 2008, G 2/06, WARF), is of no avail to Cresco. Unlike Cresco has suggested, it does not follow from these decisions that an exception that is related to a process always also applies to the products of the process. The exception at issue in those cases, namely the exception for the commercial use of human embryos for the purposes of Articles 6 part 2c of the Biotechnology Directive and 28c of the Implementing Rules EPC is in fact not a method exception, but an exception for all inventions (i.e. methods andproducts obtained) that pertain to the use of human embryos. The question to be addressed in those cases was not whether products of an exempted process could fall under the exception, but whether a claim which not specifically mentions the use of embryos, could still relate to such use within the meaning of the named provisions. Moreover, the logic of that exception is fundamentally different from the logic of the process exception of Article 53b of the EPC b. The commercial use of embryos is considered to be contrary to the morality within the meaning of Article 53a of the EPC. That exception is intended to prevent that the exempted processes are used. The process exception of Article 53b of the EPC b has a different logic. The process exception is specifically designed to allow breeders to develop new plant varieties with classical breeding methods (see also EBA 9 December 2010, G 01/08, p. 66). These two differences make that the cited decisions address a legal question which is so fundamentally different that they do not provide any guidance for explaining article 53 sub b EPC.

5.9 The reference of Cresco to Article 64 part 2 of the EPC is also of no avail to her. That article provides that the rights conferred by a patent also extend to products that are directly obtained by such a method. This provision does not relate to the validity of patents, but to the legal effect of a patent.The rule of Article 64 part 2 of the EPC is not applicable in the context of Article 53bof the EPC (see also EBA 20 December 1999, G 1/98, Novartis II). Nor is there any ground for the application by analogy of paragraph 2 of Article 64 EPC in the framework of Article 53 sub b EPC. It

does not follow from the fact that the legislator sees reason to protect a product if the production process is protected that the products thereof cannot also be protected if the legislator sees reason for not protecting a process. From the above it follows that that conclusion in any case cannot be made with respect to the specific exception to which Cresco appeals. The fact that that conclusion does not apply in general is evident from the fact that the given that non-novel processes are not eligible for patent protection also does not preclude that patents are granted for new products of those processes.

5.10 Finally, Cresco noted that in Section 3, paragraph 1d of the [Dutch] Patent Act (hereinafter: Patents Act 1995), in contrast to Article 53 EPC sub b, products of essentially biological processes are explicitly excluded from patentability. It is not in dispute however that the validity of a patent of ToN must be tested with respect to the EPC. In the interpretation of the Convention, the text of a national law such as the Patents Act 1995 is not relevant. The same applies to the observation of the Secretary of state that it speaks for itself that products of essentially biological processes are not susceptible to a patent (Acts lI 1994- 1995, p. 1643-45).

5.11 From the foregoing it must be concluded that under the current law, plants such as the plants claimed in the patent are not excluded from patentability. The fact that, as argued by Cresco by reference to among others a draft resolution of the European Parliament (2012/2623 (RSP), exhibit 2 of Cresco in Case 12-577), there may be political reasons for why the patenting of plants is undesirable, cannot lead to a different conclusion. Apart from the fact that there are political arguments for the contrary, the consideration of such political arguments does not fall under the law-making duties of the court.

no invention

5.12. Cresco has also argued that the plant claimed for patent in claim 1 represents an invention within the meaning of Article 52, paragraph 2a of the EPC. In addition, Cresco also noted that Mr Baan of Koppert has stated that the idea for the plant claimed arose when a pale red radish sprout was discovered in a field of green radish sprouts. However, the discovery of the pale red sprout does not, in itself, constitute the invention claimed; it merely led the inventor to developing the plant claimed. Whether or not the methods used in this development involve inventive step is irrelevant – contrary to what Cresco believes – to the assessment against the provisions of Article 52, paragraph 2a of the EPC.

claims 12 and 13 concerning processes

5.13 Cresco has argued that claims 12 and 13 concerning process fall under the exception of Article 53b of the EPC, to which ToN has countered that the processes claimed in these claims relate solely to the germination of a radish seed into a sprout plant. Consequently, the processes do not involve the traditional improvement methods of crossing and selecting; however, they involve steps that might be regarded as technical. Cresco has not denied these counterarguments, nor has it addressed the stated invalidity of claims 12 and 13 in any detail. The Court therefore considers the counterarguments to be correct.

claims 4 and 14

5.14. In its pleadings, Cresco first argued that claim 14 concerning processes fall under the exception specified in Article 53b of the EPC, and furthermore that claim 41 of the patent concerns plant variety and, as such, is also excluded from patentability based on the first section of Article 53b of the EPC. As the Court believes the presentation of such new grounds for invalidity during pleadings is contrary to the standard rules of procedure, this argument will be ignored.

novelty

According to Cresco, the substance of claims 1, 5, 7, 9 and 11, along with any and all claims depending on these claims (in Crescoʼs view this apparently includes all other claims) is not novel. This argument relies mainly on the statement that the sprout referred to in claim 1 was publicly available on the date of the patent application.

Koppertʼs sprouts

5.15. It is not being challenged that Koppert produced sprouts in accordance with the patent prior to the date of the patent application (7th September 2001). However, the parties disagree on the answer to the question of whether these sprouts had been made publicly available prior to this date within the meaning of Article 54, paragraph 2 of the EPC.

5.16. The publications regarding Koppertʼs sprouts, as submitted by Cresco (see Appendix D1 to Crescoʼs Exhibits 3 and 4 in case 12-577) are not detrimental to novelty because these publications do not reveal all the features of the invention claimed in the patent directly and unequivocally. In particular, these publications do not disclose that the sprouts have an anthocyanin content of more than 800 nmol per gram of sprout, nor did Cresco state that this was the case.

5.17. Koppertʼs sprouts were also not made publicly available during a meeting of a jury for the AGF Innovation Award. ToN pointed out, and was not challenged in doing so, that the meeting in question was a private meeting and that one of the conditions of participation in the competition is that the product must not have been made publicly available prior to the award ceremony. Given this fact, it must be assumed that the individuals who attended the meeting were aware that they were prohibited from disclosing information about the product prior to the presentation of the Innovation Award on 18th September 2001 (i.e. certainly not prior to the submission of the patent application on 7th September 2001). In addition, it has been neither stated nor proved that that those present at the meeting had the opportunity to analyse the anthocyanin levels of the sprouts. On the contrary, ToN stated that the sprouts had only been presented during the meeting after they had been used in a dish.

5.18. Finally, Cresco stated that Koppert had been supplying the sprouts to customers prior to the date of the patent application, with Cresco referring to publications, invoices and other documents that would demonstrate that Koppert was supplying products by the names of ʻSakura cressʼ and 1 In the report of its patent attorney, the invalidity of claim 4 is, in fact, raised. However, the summons dated 11th January 2012 does not reproduce this argument, whereas the Statement of Defence in the infringement proceedings explicitly refers to claims 1, 5, 8, 9, 10, 12 and 13 in this context, leaving out claims 4 and 14. Under these circumstances, it cannot be assumed that the invalidity of these latter two claims is invoked.

ʻSakura mixʼ prior to this date (Annex D1 to Exhibit 3, along with Cresco’s Exhibits 6 and 7 in case 12-452). However, ToN vehemently denied that the products supplied by Koppert under those names at that time represent sprouts under the patent. Since it cannot be established who was in the right based on the items of evidence furnished by the parties, Cresco, having the burden of proof of the stated prior use, will be ordered to prove its statement.

inventive step

In the event that it is not established that the sprout referred to in claim 1 was not novel on the date of the patent application, and it must therefore be assumed that all claims under the patent are novel, it becomes pertinent to investigate the inventive step of the patent. Cresco denies the inventive step of claims 1, 4, 5, 7, 9, 11 and 14.

introduction

5.19. Cresco’s argument that the invention claimed naturally arises from the state of the art does not hold for the reasons stated below. The basis of this argument is that the question regarding the level of inventive step cannot be answered by subsequently, armed with knowledge of the patented plant, searching for previous disclosures to which the plant can be deduced, but rather that the purpose of this evaluation is to establish whether the average person skilled in the art would have acknowledged the problem solved by the patented plant and, in finding a solution, would have consulted the disclosures presented by Cresco and, in such an event, would have deduced the plant as an obvious solution from the state of the art at that time, based on general technical/professional expertise (not could, but) (Netherlands Supreme Court, 15 February 2008; LJN BB5066, Rockwool – Isover). In checking the argument against this criterion, the problem and solution approach used by the European Patent Agency can be used as an aid.

known seeds

5.20. On request, Cresco stated in court that it regards the seeds of radish lines GCN 6924 and GCN 7240 as the state of the art. These represent seeds from the two radish lines described in the patent of EP 938 as the basis for the improvement (see legal finding 4.7 for further reference). The sprouts that grow from these seeds contain anthocyanin. The difference between these seeds and the invention claimed in the patent is that, according to the patent, the sprouts of the radish plants have increased anthocyanin levels and, more specifically, anthocyanin levels exceeding 800 nmol per gram of plant. The effect of this difference is that the sprout is considered to be healthier, due to the health benefits ascribed to anthocyanin. On this basis, the objective problem the patent aims to solve can be defined as ‘obtaining a healthier vegetable’.

5.21. It cannot be assumed that the average person skilled in the art who, based on the known seeds, in the search for a healthier vegetable, would end up producing the plant claimed in the patent. Specifically, ToN argued that – and has not been challenged in doing so – that, if the average person skilled in the art was aware of the health benefits of anthocyanins on the date of the patent application and wanted to raise the level for this reason, he would not, in any event, have been aware that the sprouts growing from these seeds contain anthocyanin, let alone that these sprouts

contained relatively high anthocyanin levels. Improving a plant in order to enhance an unknown property of that plant is not an obvious choice.

5.22. The fact that the person skilled in the art could have determined the anthocyanin level of the sprouts by performing an anthocyanin test cannot result in a different opinion. The person skilled in the art had no reason to perform such a test, as he was unaware that the sprout contained anthocyanin. Besides, anthocyanin levels are not the only ‘health benefit’ that can be enhanced in vegetables. Cresco has failed to make clear why the non-inventive person skilled in the art who intends to develop a healthier vegetable would test for this property in particular. Furthermore, ToN has argued, and has not been challenged in doing so, that increasing the anthocyanin levels of the sprout is not an obvious choice for the seeds mentioned above, since these seeds were used at the time to grow radish bulbs rather than radish sprouts. Increasing anthocyanin levels in the bulbs would be much more obvious. This does not presume the same increase in these levels in the sprout, if only because a large part of the sprout consists of cotyledons, from which the leaves of the radish plant grow rather than the bulbs.

5.23. Cresco has argued that, from a health perspective, there is no relevant difference between sprouts growing from the known seeds and sprouts under the patent. This argument is based on analyses it has brought into the proceedings of the anthocyanin levels of sprouts growing from the known seeds, which demonstrate that these sprouts already had anthocyanin levels of approximately 600 nmol/g (see Exhibit 5 submitted by Cresco). However, as demonstrated by the report submitted, these analyses were performed on a selection of shoots that already displayed purple colouring.ToN rightly argued that this selection of shoots does not constitute a realistic basis for an attack based on inventive step, since this selection assumes knowledge of the invention. On the date of the patent application, the average person skilled in the art did not have access to such a selection that would prompt him to improve plants such that they produce a homogeneous population of purple sprouts based on his knowledge of a growing interest in anthocyanins, as claimed by Cresco.

Song

5.24. As a second basis for its attack based on inventive step, Cresco refers to a publication by Song et al. (Appendix D8 to Cresco’s Exhibit 3 in case 12-452; hereinafter: ‘Song’). Song describes the biosynthesis of anthocyanin in young radish plants caused by light exposure. In the publication, Song notes that anthocyanins are believed to play a role in protecting plants from UV rays, but makes no reference to the health benefits of anthocyanins. In other words, Song focuses on a different aspect of anthocyanin levels in radish sprouts than does the patent. Given this fact, it cannot be assumed that the average person skilled in the art would have consulted Song in order to find a solution to the problem described in the patent.

5.25. Furthermore, if Song is used as a basis, it cannot be assumed that the average person skilled in the art without inventive labour would have ended up producing the plants claimed under the patent, either in combination with Uphof’s article (submitted as Appendix D6) or otherwise. Specifically, contrary to Cresco’s suggestion, Song does not state that the anthocyanin levels in radish plants – let alone radish sprouts – must be increased. Song does not explicitly endorse an

increase in these levels. In addition, it cannot be assumed that the person skilled in the art would implicitly interpret the specification of the role of anthocyanins in the protection from UV rays as a plea to increase anthocyanin levels. In this context, ToN has pointed out that the average person skilled in the art will presume that millions of years of evolution will have ensured anthocyanin levels that provide the necessary protection.

Giusti

5.26. Cresco believes that the average person skilled in the art, based on the seeds described above, would end up producing the plant specified in claim 1 by combining it with a publication by Giusti et al. (Appendix D4 to Exhibit 3 submitted by Cresco in case 12-452; hereinafter: ‘Giusti’). This publication shows the anthocyanin levels in the bulbs of several species of radish and describes the impact of growing conditions, including location, season and ripeness, on these levels. Giusti notes that there is a need to use anthocyanins as natural colorants.

5.27. This argument does not hold, since it cannot be assumed that the average person skilled in the art would consult Giusti, since the latter is not concerned with the health aspects of sprouts. Besides, the combination would not result in the invention, as Giusti focuses on anthocyanin levels in radish bulbs as opposed to radish sprouts. Cresco has not made clear why the average person skilled in the art would nevertheless develop a plant whose sprouts contained high anthocyanin levels.

McGhie

5.28. Cresco further states that a combination of the known seeds and D7 would be obvious. D7 concerns the ʻProgramme, Abstracts and Delegates Listʼ of the ʻ8th International Rubus and Rabies Symposiumʼ held in Scotland in July 2001. The abstract submitted entitled ʻBreeding Rubus cultivars for high anthocyanin content and high antioxidant capacityʼ states that anthocyanins are beneficial to health. The abstract states that by improving Rubus (a genus of berry species)can significantly increase anthocyanin levels.

5.29. However, the Court does not believe it plausible that the average person skilled in the art would produce the stated combination, since, as discussed above, it must be assumed that he was not aware of the fact that radish sprouts contain anthocyanin.

inventive step of claim 14

5.30. Cresco finally states that claim 14 does not involve inventive step, since the person skilled in the art mentioned in D4, Giusti, shows that anthocyanins can be derived from Raphanus plant materials and D1 shows that the sprouts revealed therein can be used for this purpose. This argument does not hold for the sole fact that, as stated above, the publications of D1 do not demonstrate that the sprouts, in accordance with claim 1 of the patent, contain anthocyanin levels exceeding 800 nmol per gram of sprout.

reproducibility

5.31. Crescoʼs argument that the patent is non-reproducible does not hold on account of the reasons stated below.

impact of external circumstances

5.32. First of all, it must be assumed that, contrary to Crescoʼs argument, the fact that anthocyanin levels in radish sprouts depend on environmental factors such as temperatures and light intensity, does not obstruct the reproduction of the plant claimed. In this context, ToN has pointed out – which has remained unchallenged – that the impact of environmental factors on anthocyanin levels is limited, representing a difference of several percentage points at the most. Furthermore, the patent contains a detailed description of how radish sprouts can be grown in accordance with the invention. It has been neither stated nor proved that reproducing these instructions results in a product with insufficient anthocyanin levels. In addition, it has been established between the parties that sprouts, including the radish sprouts claimed in the patent, are generally not grown in an open field but rather in a greenhouse or similar environment. In these types of environments, the external factors can be adapted to a large extent to the growing conditions described in the patent.

determining anthocyanin levels

5.33 Crescoʼs argument that the patent determines anthocyanin levels based on an inaccurate standard must be dismissed. The parties agree that it is advisable to use a standard corresponding to the types of anthocyanins that are most common in the samples. ToN has argued, and has not been challenged in doing so, that malvin forms the basis of one or more of the anthocyanins contained in the samples described in the patent, and that these vary from the anthocyanins contained in state-of-the-art radish bulbs. In the same vein, the patent prescribes malvin as the standard based on which to determine anthocyanin levels.

5.34. Additionally, Cresco has argued that the method for determining anthocyanin levels described in the patent using an HPLC system and a calibration curve based on malvin is not the standard method, which, according to Cresco, would produce unreliable results. The person skilled in the art would therefore allegedly be unable to determine the point at which the plant falls within the scope of the patent. This argument must be ignored. Beside the fact that ToN challenges that the pH differential method presented as standard by Cresco was also the standard method at the time of the patent application, a patent can also be reproduced if the standard method is not used. What matters is whether the average person skilled in the art can use the method prescribed without making an excessive effort. It has been neither stated nor proved that the HPLC method described in the patent does not satisfy this requirement. On the contrary, ToN has argued, and has this has remained unchallenged, that the average person skilled in the art can apply this method without any problem, as demonstrated by the analyses performed on behalf of Cresco by the University of Ghent.

5.35 Finally, Cresco has stated that there is information missing from the description of the analyses in the patent. For example, the patent allegedly does not specify the amount of starting material and the number of plants used. ToN stated in response that at least one example did contain an exact description of the amount of material extracted, while the amount of used plants could also be

precisely determined. In addition, ToN justly argued that the fact that a specific sample implementation cannot be exactly reproduced does not exclude that the invention claimed is described sufficiently clearly for the person skilled in the art to be able to use it. In light of these facts, Crescoʼs argument does not hold.

conclusion

5.36. Based on the foregoing, it must be concluded that the patent is valid if Cresco fails to provide evidence of the stated public prior use. In this case, the declaration of invalidity for the patent demanded in case 12-452 will therefore be dismissed.

5.37. Even if no proof is furnished of the stated prior use, the claims of infringement brought in case 12-577 cannot be granted automatically, since it has not yet been established that Cresco infringed on the patent. While ToN has submitted two test reports from Groen Agro Control (hereinafter: ʻGACʼ) which ToN believes demonstrate that Crescoʼs products match the properties specified in the patent, Cresco has denied that the products tested were produced by its company. Furthermore, Cresco pointed out that ToN did not submit any documents regarding the origin of the products of the first test. With regard to the second test, Cresco submitted an e-mail message from the company which, according to ToN, procured the products from Cresco, i.e. J.A. Meeder BV (hereinafter: ʻMeeder’) (Exhibit 10 submitted by Cresco). In this e-mail, a Meeder employee states that products Meeder ordered from Cresco were used for a shelf life test at Meeder and that these products ‘remained with us.’ Based on the documents submitted by the parties, it cannot be established whether this statement relates to a batch of sprouts other than the batch ToN assigned GAC to test on its behalf, which ToN has stated to be the case.

5.38. In view of the foregoing, ToN will be ordered to furnish proof of its statement that Cresco is infringing on its patent. ToN can furnish this proof by providing further evidence of its statement that all the products tested by GAC originated from Cresco. If required, it can also furnish the proof based on a different batch of products.

5.39. If ToN proves that the products from GAC’s second test report originated at Cresco, it must be concluded that Cresco has infringed on the patent. Cresco has not provided sufficient evidence in denying the accuracy of the test results. Contrary to Cresco’s beliefs, the mere fact that an entity affiliated with ToN regularly uses the services of the GAC test institute is insufficient to doubt the accuracy of the test report. Cresco’s objection that the report provides insufficient information on the environmental factors to which the plants are exposed must be ignored, given the statement submitted by ToN confirming that the tests were performed in accordance with the protocol relating to the patent (Exhibit 15 submitted by ToN).

5.40. Since the Court will not be suspending the cases pending the decision of the Enlarged Board of Appeal in case G 2/12, the condition under which the provisional claims were instituted does not apply. Consequently, these occasional claims need not be addressed.

6. The decision

The Court

in case 12-577

6.1. orders ToN to prove that Cresco is infringing on, or has infringed on, the patent,

6.2. rules that the case will be placed on the cause list again on 19th June 2013, when ToN will state whether it is willing to furnish proof by providing items of evidence, by hearing witnesses and/or by providing an alternative item of evidence,

6.3. rules that ToN, if it is unwilling to provide evidence from witnesses but is willing to submit items of evidence, must bring these documents into the proceedings immediately,

6.4. rules that ToN, if it wishes to have witnesses heard by the court, must immediately provide the names of such witnesses, along with any Tuesdays and Thursdays during the months July to October 2013 on which the parties and their legal counsel are unable to attend, after which the court will set a date and time for the examination of witnesses.

6.5. rules that the examination of witnesses will be held at the session of P.H. Blok, LLM, appointed magistrate for this purpose, at the Palace of Justice in The Hague at Prins Clauslaan 60,

6.6. rules that all parties must submit all available items of evidence to the Court and the counterparty no later than two weeks prior to the first examination of witnesses,

6.7. suspends any further decisions.

in matters 12-577 and 12-452

6.8. orders Cresco to prove that Koppert was already supplying products under the patent to customers prior to the patent application date,

6.9. rules that the case will be placed on the cause list again of 19th June 2013, when ToN will state whether it is willing to furnish proof by providing items of evidence, by hearing witnesses and/or by providing an alternative item of evidence,

6.10. rules that Cresco, if it is unwilling to provide evidence from witnesses but is willing to submit items of evidence, must bring these documents into the proceedings immediately.

6.11. rules that ToN, if it wishes to have witnesses heard by the court, must immediately provide the names of such witnesses, along with any Tuesdays and Thursdays during the months July to October 2013 (inclusive) on which the parties and their legal counsel are unable to attend, after which the court will set a date and time for the examination of witnesses,

6.12. rules that the examination of witnesses will be held at the session of P.H. Blok, LLM, appointed magistrate for this purpose, at the Palace of Justice in The Hague at Prins Clauslaan 60,

6.13. rules that all parties must submit all available items of evidence to the Court and the counterparty no later than two weeks prior to the first examination of witnesses,

6.14. suspends any further decisions.

This judgment was delivered by P.H. Blok, P.G.J. de Heij and J.H.F. de Vries and was pronounced in an open court on 8 May 2013.

[Signature] [Signature]