No Relief for EIS – Federal Court Invalidates Pressure Wave Massager Patent and Dismisses Infringement Claims Against LELO

EIS Gmbh v LELO Oceania Pty Ltd (Liability Trial) [2025] FCA 1111

Introduction

In a victory for LELO, Justice Downes of the Federal Court has declared invalid and ordered the revocation of EIS GmbH’s (EIS) patent relating to feminine pressure wave massagers.  EIS had brought infringement proceedings against LELO Oceania Pty Ltd, LELOi AB and distributor Calvista Australia Pty Ltd (together, LELO) over LELO’s pressure wave massage products.  LELO then cross-claimed seeking the revocation of EIS’ patent and alleging unjustified threats and misleading conduct.  EIS has subsequently filed an appeal to the Full Court.

Background

The dispute concerns EIS’s patent AU2018200317 (the Patent), entitled “Pressure Wave Massager”.  The Patent describes a compression wave massage device with a single-chamber cavity that generates a stimulating pressure field through volume changes.  A key feature is the volume change ratio (VCR) which requires that the ratio of volume change to minimal volume must be between 1/10 and 1.  The Patent stated that this range was critical to ensuring the pressure field was stimulating but not painful.

EIS initiated Federal Court proceedings alleging infringement of claims 1-7, 9, 10, 15, 19-22 and 31 of the Patent by LELO’s products.  LELO denied infringement and cross-claimed for invalidity on multiple grounds.  LELO also alleged that EIS made unjustified threats and engaged in misleading conduct in its various communications to distributors and industry publications.

The proceedings generated two key interlocutory decisions.  In July 2024, Justice Downes granted LELO leave to rely on experimental evidence conducted in China, and in December 2024, her Honour ruled that one of LELO’s witnesses was not permitted to participate in the joint expert conferences concerning novelty and inventive step.  This article reports on the decision following the liability trial heard in February 2025.

Key Issues and Considerations

Construction and Infringement

EIS alleged the LELO products incorporated all essential integers of the asserted claims.  LELO denied infringement, arguing the products did not have the following integers: defined “ends” because the cavity is made from a single piece of silicon; a “single chamber” due to the cavity having a round or “honeypot” shape and a narrowing space towards the opening; and the VCR requirements when being used as intended.

Key to the infringement claims was the construction of the integer “a compression wave massage device when used on the clitoris” in claim 1.  EIS contended that the reference to “a compression wave massage device when used on the clitoris” meant the device must be capable of such use, but that the claimed features (including VCR) which are described in the subsequent integers of claim 1 are not referable to its use on the clitoris.  EIS’ construction was premised on the alleged practical inability to measure these features (including VCR) when the device is being used on the clitoris.  LELO disagreed, arguing the claim required all features to be present when the device is used on the clitoris.

Justice Downes agreed with LELO, holding that the phrase “compression wave massage device when used on the clitoris” in claim 1 limits the scope to a device that functions as a compression wave massager when used on the clitoris and has the features identified in the subsequent integers when so used.  Her Honour rejected EIS’ argument that the features identified in subsequent integers need only be present in the standalone device, noting that:

the words “when used on the clitoris” govern all of the features of the device that follow those words, such that each of those features must be present when the device is used on the clitoris when it is performing its function as a compression wave massage device.

The specification’s references to the VCR affecting whether the vacuum becomes “too strong and perhaps even painful” or whether “the suction effect becomes too low” could only refer to pressure generated when used on the clitoris.  Further, the amendment from “for use” to “when used” had a narrowing effect.

Given this finding on construction, Justice Downes held that EIS had not established that the LELO products infringed claim 1.  The testing of LELO products in laboratory conditions with a virtual planar surface did not establish that they infringed claim 1 when actually used on the clitoris, given insufficient information in the Patent about how to measure VCR in actual use conditions.  As all claims depended on claim 1, none of the LELO products infringed.

Clarity / Definition

LELO challenged whether the VCR feature provided a workable standard for defining the invention, arguing that VCR alone was an imprecise proxy for pressure and failed to account for critical variables.  Justice Downes found claims 1, 4, 6, 9 and 22 were invalid for lack of clarity and definition.

In making her finding in relation to claims 1 and 22, her Honour stated that:

… there is insufficient information in the Patent to enable the PSA to achieve the claimed stimulating pressure field, and the PSA cannot objectively ascertain whether what they propose to do falls within the ambit of the claims of the Patent as they do not identify a workable standard suitable to the intended use.

In relation to claims 1 and 22, her Honour noted that there were various deficiencies in the Patent, including:

• (i)   Insufficient information about measurement: The Patent taught measurement using a “virtual planar surface” in laboratory conditions but provided no method for measuring VCR when the device is used on the clitoris, where the cavity will have limited air exchange with the environment and the clitoris will occupy part of the cavity volume.
• (ii)   Starting position of membrane not specified: Expert evidence established that the starting position of the flexible membrane critically affects the pressure generated. If the membrane starts forward, only negative pressures are produced.  If it starts rearward, only positive pressures result.  The Patent did not specify the starting position.
• (iii)   Presence of clitoris not accounted for: The clitoris protrudes into the cavity, reducing the minimum volume and thereby increasing vacuum pressures. Given substantial anatomical variation, the resulting pressures will significantly vary, yet the Patent’s measurement method using a virtual planar surface did not account for this.
• (iv)   Air leakage when used on skin: EIS’ expert witness acknowledged that when used on skin, the device is “essentially closed” but there is “a limited exchange of air between the cavity and the outer environment. This means VCR measured in airtight laboratory conditions will not accurately predict pressure when used on skin, as the entry and exit of air will affect the resulting pressure.
• (v)   Use underwater: The Patent contemplates underwater use, however, LELO’s expert witness explained that water is incompressible, so there can be no effective volume change when the cavity is full of water. Specifying a VCR range is therefore meaningless for underwater use.

In relation to claim 6, her Honour found that the reference in claim 6 to the lateral wall of the chamber being “free from discontinuations” was unclear, noting that, if it was intended to claim something different to claim 3, then it was uncertain what that difference was intended to be, as there were many possibilities. In relation to claims 4 and 9, her Honour found that the reference to length in claim 4 was unclear and that the meaning of “the ratio of the width of the cavity of the chamber…to the length of the cavity of the chamber” in claim 9 was similarly unclear.

Insufficiency and Lack of Support

For the same reasons relating to VCR measurement, Justice Downes held that the Patent failed to enable the person skilled in the art to make the device without undue burden, and that the claims lacked support because there was no experimental data justifying the VCR ranges claimed.

Novelty and Inventive Step

LELO’s novelty challenge based on a Japanese patent in the name of Panasonic Electric Works Co failed because the VCR integers were not disclosed.  Similarly, all inventive step challenges failed because the experts agreed that the VCR integers and certain other claim features were not obvious based on common general knowledge, prior art documents, or prior use of other pressure wave massage devices.

Best Method and Utility

LELO’s best method challenge, which asserted that EIS knew of a method that would not be useful (a geared motor with high torque), failed.  While LELO relied on emails showing EIS rejected geared motors as “noticeably louder” with “unsatisfactory” operating noise, Justice Downes held that EIS was “not required to disclose idiosyncratic features of the motor which it has decided not to use in relation to its commercial embodiment of the invention”.  This was merely a design choice and the disclosed motor (without gears) was the best method.

The utility challenge also failed.  LELO alleged the Patent promised a simple and effective design with improved hygiene, easy handling with lubricant or underwater, and other features.  However, Justice Downes found the claimed device met the stated objectives.  While LELO argued that device could not be waterproof based on limited evidence of rust in one particular device and alleged leakage during experiments, her Honour found this evidence wholly inadequate to discharge LELO’s burden of proving the “waterproof promise” had not been met.

Unjustified Threats and Misleading Conduct

LELO alleged that EIS had made unjustified threats and misleading representations in its correspondence to distributors and press releases referencing victories in German courts, which LELO claimed incorrectly suggested that these victories were relevant to Australia.

Despite her Honour’s finding of no infringement, Justice Downes did not consider that any of the cited correspondence or press releases constituted unjustified threats or misleading representations. In particular, while a November 2023 email to distributor Calvista constituted a threat under section 128 of the Patents Act, it was not unjustified given:

• (i)    the European Patent Office’s rejection of LELO’s opposition and the similarity between the Australian and European patents; and
• (ii)   EIS’ infringement contentions not being unarguable.

Subsequent press releases to industry magazines were also not misleading, as statements about German court victories providing support for Australian proceedings were statements of opinion that would be perceived as such, and incorrect opinions did not constitute misleading conduct.  Further, most of the communications did not constitute threats as the Australian proceedings had already been commenced or because the communications did not convey a threat to bring infringement proceedings against other recipients or readers of the press releases.

Outcome and Implications

Justice Downes declared the Patent invalid and ordered its revocation (subject to a 28-day stay for appeal), dismissed EIS’ infringement claims, and otherwise dismissed LELO’s cross claims for unjustified threats and misleading conduct.  EIS subsequently filed an appeal in October 2025.

Justice Downe’s decision illustrates the critical importance of claim construction, which in this case underpinned both the infringement finding and the lack of clarity, definition, support and sufficiency findings. As the patent claims were limited by result, the disclosure in the patent of abstract measurements serving as proxies for the claimed result did not account for critical variables.  Further, the deliberate choice to claim a device “when used” in a particular way meant all claim features had to be present and measurable during that defined use – and laboratory testing that did not replicate those use conditions was not enough.

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