(Publ. 12 NOV 2020) In a recent patent dispute between Volvo and Scania, Volvo’s patent was declared invalid by the Patent and Market Court in Sweden. The dispute concerns Volvo’s patent for a step-shifted gearbox for motor vehicles. Volvo will thus be obliged to pay legal costs of SEK 5 million. This is one of several disputes between the large vehicle companies in the Patent and Market Court in Stockholm, Sweden.

Volvo was granted a patent as early as June 10, 2003 and regards an automated step-shifted gearbox, which eliminates the disadvantages of the prior art by providing an automatic freewheel function in order to limit fuel consumption.

Scania started offering in 2013 and in 2014 selling trucks with gearboxes that had an automatic freewheeling function.

On 11 February 2019, Volvo filed a lawsuit against Scania for patent infringement and demanded, among other things, to prohibit Scania to manufacture, offer, bring to market or use certain gearboxes with the said freewheeling function in Sweden and to hold such gearboxes for such purposes as long as the patent is valid.

Scania disputed the patent infringement and filed an invalidation request against Volvo’s patent. In the invalidation action, Scania stated that the invention according to the patent was not so clearly described that a person skilled in the art could practice it on the basis of the description. In addition, Scania considered that the invention was not new and lacked an inventive step.

This was disputed by Volvo, which alternatively claimed that the patent be upheld in amended form.

The Patent and Market Court upheld Scania’s action for invalidation. At the same time, the Patent and Market Court however states that Scania’s dispositions of the gearboxes in question, assuming that the patent is valid in the notified wording, infringes on objective grounds. The decision in the infringement case, which takes the form of a so-called intermediate decision, should be allowed to be appealed separately. Pending the interlocutory decision gaining legal force, the infringement case must otherwise be declared dormant.

In this case, Volvo will be obliged to pay approximately SEK 5 million in legal costs.