EPLAW Patent Blog

EU - UPC Update (UK and Denmark)

UK takes first steps towards ratifying the UPC agreement / DK: Two regional chambers proposed for the Unified Patent Court, by Nicholas Fox and Ben Hall, Simmons & Simmons

On 08 May 2013, an Intellectual Property Bill¹ was announced in the Queen’s Speech which will enable the UK to implement the Unified Patent Court Agreement. The new bill, in addition to providing a basis for enabling the UK to ratify the Unified Patent Court Agreement, also makes a number of amendments to UK design law.

Clause 16 of the Bill will introduce a new section into the UK’s Patents Act giving the Secretary of State power to amend UK law to enable the Unitary Patent Court to take effect.  There are no provisions in the Bill in relation to the Unitary Patent as any changes required to implement the Unitary Patent can be made under the existing powers the government has to amend national legislation to comply with EU obligations.

UK - Swarovski-Optik v. Leica

Swarovski-Optik KG v. (1) Leica Camera AG (2) Leica Camera Limited, Patents Court, Chancery Division, High Court, London, UK, 10 May 2013, [2013] EWHC 1227 (Pat)

The Patents Court held that Swarovski’s patent relating to sighting telescopes and riflescopes was valid and had been infringed by Leica.

Swarovski was the owner of EP (UK) 1 746 451 which related to sighting telescopes and riflescopes with a zoom factor greater than 4. Swarovski alleged that Leica had infringed the patent by the supply of riflescopes in its Magnus range. Leica counterclaimed that the patent was invalid because it was either not novel or obvious in light of the common general knowledge and the prior art as at the priority date. Leica also alleged that it was invalid due to added matter and insufficiency.

Mr Justice Vos held that the IOR riflescope sold before the priority date did not clearly and unambiguously disclose all the features of the claims of the patent and so the patent survived Leica’s novelty attack. Mr Justice Vos rejected Leica’s obviousness attacks based on common general knowledge and the four separate prior art citations relied upon by Leica. Mr Justice Vos also rejected Leica’s added matter and insufficiency attacks.

Mr Justice Vos held that Leica’s riflescopes infringed Swarovski’s patent.

Read the judgment (in English) here.

Head note: Rob Fitt

New - Intellectual Property Law and Policy Volume 12

The new volume of Intellectual Property Law and Policy edited by Hugh C Hansen and published by Hart Publishing is out.

EPLAW Blog readers get a 20% discount on the retail price.

The publisher's blurb: "This is the 17th Annual volume in the series collecting the presentations and discussion from the Annual Fordham IP Conference. The contributions, by leading world experts, analyse the most pressing issues in copyright, trademark and patent law as seen from the perspectives of the USA, the EU, Asia and WIPO. This volume, in common with its predecessors, makes a valuable and lasting contribution to the discourse in IP law, as well as trade and competition law. The contents, while always informative, are also critical and questioning of new developments and policy concerns. Hugh C Hansen is Professor of Law and Director, Fordham University School of Law, Intellectual Property Law and Policy Institute."

Click here to order the book online.

Readers form the US may click here.

To receive the discount please quote the reference ‘EPLAWBLOG’ in the voucher code field and click ‘apply’.

 

DE - Mölnlycke / comment: ruling gives more effect to torpedo actions

German Federal Supreme Court ruling on Mölnlycke case gives more effect to torpedo actions, by Dietrich Kamlah and Christof Höhne, Taylor Wessing

"In a recently published decision (ref. no. X ZR 70/12 – Wundverband), the German Federal Supreme Court ruled that an exclusive licensee cannot bring patent infringement proceedings, if the patentee himself has already brought patent infringement proceedings against the same defendant and the license was granted only after proceedings by the patentee had been initiated. This decision might limit the options of a patentee to sue an infringer who has already filed a “torpedo” action under the same patent."

Read the entire contribution here.

DE - First Munich International Patent Law Conference

On the 14th of June 2013 the first Munich International Patent Law Conference will take place.

The conference is organized by (amongst others) the District Court of Munich I, the Bavarian State Ministry of Justice and the Technical University of Munich. The European Patent Office and the Munich Patent Litigators (a group of presently 18 law firms with a strong patent litigation practise, which was formed for this purpose) support the conference.

This year's topic is: "Calculating Damages in Patent Infringement Cases". Language of the conference is English.

Please find the entire programme and the registration form here.

NEW - Follow EPLAW Patent Blog on Twitter

For those interested, the EPLAW Patent Blog is on Twitter: @EPLAWPatentblog

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NL - FX Prevent v. Wagner Group

FX Prevent B.V. v. Wagner Group GmbH, District Court The Hague, The Netherlands, 8 May 2013, Case No. HA ZA 12-857, with thanks to Carreen Shannon and Charlotte de Boer, Deterink, for sending in the case and a head note in English

Wagner is the holder of a European patent relating to an inerting method for preventing and extinguishing fires in enclosed spaces. After a previous judgment of the District Court The Hague that FX Prevent had infringed Wagner’s patent, FX Prevent appealed that decision (which appeal is still pending) and separately initiated invalidity proceedings before the District Court, arguing that Wagner’s patent was invalid due to lack of novelty and inventive step.

As part of its statement of defence Wagner filed an auxiliary request. Also the amended claims were, however, found to be invalid by the court due to lack of inventive step. The court applied the problem-solution approach and held that if the solution to the posed problem did not already form part of his common general knowledge, the skilled man would have in any event learned that solution from a wide range of prior art documents. Wagner was ordered to pay the full costs of the proceedings.

Read the decision (in Dutch) here.

UK - Phil & Ted’s v. TFK Trends

Phil & Ted’s Most Excellent Buggy Company Limited v. (1) TFK Trends for Kids GmbH (2) Oliver Beger (3) Udo Beger, Patents County Court, London, UK, 8 May 2013, [2013] EWPCC 21

The Patents County Court held that TFK’s patent relating to a baby buggy was invalid.

Phil & Ted’s commenced proceedings for unjustified threats and revocation of TFK’s patent, EP (UK) 1 795 424. TFK responded with a counterclaim for infringement in respect of Phil & Ted’s Promenade buggy which has a seat which transforms into a carry cot and vice versa. Phil & Ted’s denied infringement and alleged claim 1 (the only claim in issue) was invalid for obviousness in light of a Chinese Utility Model Patent (Goodbaby), a UK patent application (Bigo) and common general knowledge based on a product called the Bugaboo Frog.

HHJ Birss QC held that the Promenade buggy fell within the scope of claim 1 of the patent but noted that the points on non-infringement were squeezes on validity.

HHJ Birss QC held that the patent was invalid for obviousness in light of Goodbaby but that the attacks based on Bigo and common general knowledge failed. 

Read the judgment (in English) here.

Head note: Rob Fitt

 

HU - Refusal to withdraw PI after revocation of patent

The Metropolitan Tribunal in Budapest refuses to withdraw preliminary injunctions in the VIAGRA case after the first instance revocation of the patent

Not long after the Metropolitan Tribunal had granted six  preliminary injunctions against distributors of generic versions of VIAGRA (see post of October 2012) the Hungarian Intellectual Property Office (HIPO) revoked the underlying national patent.

Each defendant of the six parallel cases requested the withdrawal of the respective preliminary injunction immediately but the Metropolitan Tribunal Court rejected each request and maintained the injunctions (in one case an out-of-court agreement was reached). The importance of the decision lies in the fact that this is the first time that the first instance revocation of the patent did not prevent the patentee from keeping a preliminary injunction against presumably infringing products. The present report is based on one of the remaining five cases, as the questions dealt with by the court were similar in each proceeding.

UK - HTC v. Apple (Appeal)

HTC Europe Co. Ltd. V. Apple Inc. and Apple Inc. v. HTC Corporation, Court of Appeal, London, UK, 3 May 2013, [2013] EWCA Civ 451

The Court of Appeal allowed in part Apple’s appeal of the decision of the Patents Court that one of its patents was invalid.

The original trial before Mr Justice Floyd concerned four actions between HTC and Apple regarding four patents owned by Apple. Following the judgment, HTC and Apple settled their dispute and so HTC did not take part in the appeal.

The appeal only concerned the validity of two of the Apple patents, EP (UK) 2 098 948 (“the ‘948 Patent) and EP (UK) 1 964 022 (“the ‘022 Patent”). The ‘948 Patent relates to computer devices with touch sensitive screens which are capable of responding to more than one touch at a time and the ‘022 Patent relates to ways unlocking computer devices with touch sensitive screens. The issues before the Court of Appeal were as follows: