Fontem Holdings 1BV and Fontem Ventures -v- Ten Motives Limited and 10 Motives Limited, UK Patents Court (Mr Justice Norris), 2 October 2015
The Claimants (Fontem) has commenced patent infringement proceedings against a number of defendants, including 10 Motives, Nicocigs, JT International SA and Zandera. The infringement and related revocation actions are due to be heard together in May 2016. The actions all involve electronic cigarettes, a rapidly growing market.
10 Motives applied to the Patents Court for summary judgment of the infringement claim against them, alternatively a stay of the infringement claim pending the outcome of an opposition at the EPO. Summary judgment in patent proceedings in the UK has traditionally been difficult to obtain, given that the Court must decide what the words of the patent mean to the skilled person, regarding which expert evidence is usually relied upon. In this case the judge decided that Fontem’s infringement claim was “well arguable” and one for which expert evidence would be needed. He therefore declined to grant summary judgment.
The application for a stay was also dismissed. Any stay would have been for a long period of time, given that the EPO opposition proceedings were unlikely to conclude before 2019. The market for electronic cigarettes was rapidly developing and to preserve a (35%) market share for 10 Motives pending the outcome of the opposition proceedings, simply because 10 Motives had filed a Notice of Opposition, whilst the other defendants had the infringement cases against them determined in May 2016 would distort the market. It was also perfectly possible for the construction and infringement issues to be determined at the trial in May 2016 but for the question of what relief should be granted, assuming the patentee was successful, to be determined at a subsequent hearing. The Court therefore declined to stay the proceedings against 10 Motives, whilst making it clear that 10 Motives would be entitled to make a further application for a stay immediately before questions of relief came to be determined.
Read the decision here.
Head note: Graham Burnett-Hall, Marks&Clerk Solicitors