EPLAW Patent Blog

UK - Environmental Recycling Technologies v. Upcycle Holdings

Environmental Recycling Technologies plc v. Upcycle Holdings Limited, Patents County Court, London, UK, 5 February 2013, [2013] EWPCC 4

The Patents County Court held that Upcycle’s patent relating to a process for moulding plastic articles was valid in its amended form.

Environmental Recycling Technologies (ERT) applied to revoked Upcycle’s patent, GB 2 2460 838, relating to a process for moulding plastic articles called PIM (powder impression moulding). Upcycle applied to amend its patent and elected not to defend the validity of the patent in its unamended form. ERT alleged that the amended patent was invalid for obviousness in view of a patent application entitled Aylmore and a prior use known as Contour.

HHJ Birss QC held that the patent was not obvious in view of Aylmore or Contour and that the proposed amendments to the patent were allowable.

Read the judgment (in English) here.

Head note: Rob Fitt

UK - Omnipharm Limited v Merial

Omnipharm Limited v Merial, Court of Appeal (Civil Division), London, UK, 23 January 2013, Case No [2013] EWCA Civ 2

This was an appeal against the judgment of Floyd J, dated 21 December 2011, following a trial of an action brought by Omnipharm to revoke two of Merial’s patents, EP (UK) 0 881 881 (the ‘881 patent) and EP (UK) 2 317 564 (the ‘564 patent) on the grounds of obviousness and insufficiency.
The patents in suit both relate to ‘spot on’ formulations of parasiticide for protecting small animals against ticks and fleas; the ‘881 patent relating to formulations of fipronil and the ‘564 patent relating to fipronil in combination with an insect growth regulator (“IGR”).  The patents protect Merial’s “Frontline” products which provide Merial with global sales of approximately $1 billion per year.  

After allowing Merial’s proposed amendments, the trial judge declared the ‘881 patent valid, but found the ‘564 patent invalid for insufficiency.  He also ordered Merial pay 40% of Omnipharm’s costs.  Merial appealed.  By way of contingent cross-appeal, Omnipharm contended that if the ‘564 patent was found to be sufficient, the judge would or ought to have found it invalid for obviousness and by parity of reasoning, should also have found the ‘881 patent invalid for obviousness. 
The Court of Appeal upheld the trial judge’s decision on insufficiency. As a result the cross-appeal was not pursued.

SE - EveryMed v. Roche Diagnostics

EveryMed AB v. Roche Diagnostics GmbH, Svea Court of Appeal, Sweden, 27 June 2012, Docket No. T 5531-11

On appeal of a District Court of Stockholm judgment in joint infringement and invalidity proceedings, the Svea Court of Appeal confirmed the District Court's judgement by dismissing Everymed’s claim that Roche’s European patent EP0622119 (System for dispensing test elements) was invalid as far as concerns Sweden. However, unlike the District Court, the Court of Appeal concluded that the patent-in-suit was not infringed by Everymed (through its system “EveryX3”) and therefore reversed the District Court’s judgment on damages, injunction and reimbursement of legal costs.

The key differences in the assessment by the Court of Appeal, compared to the assessment by the District Court, was that the Court of Appeal made a stricter interpretation of two terms in the patent claims and whether they should be interpreted as a requirement that a test element completely leaves the chamber of the device or whether it also includes a system in which the test element partially stays in the chamber. For its conclusion that the scope of patent protection was limited to a system in which the test element completely leaves the chamber, the Court of Appeal found support in the linguistic meaning of the relevant terms and also how the technical problem was formulated in the description.

Interesting to note from the Court of Appeal judgement is, to begin with, that it was established that a patent cannot be declared partially invalid upon request from the counterpart to the patentee only, i.e. when the patentee has not requested in its defence that the patent be limited at the risk of otherwise being declared invalid in its entirety (a possibility that was introduced in the Swedish Patents Act in 2007 for the implementation of the EPC 2000). The background was that Everymed requested that one (independent patent claim) of the (in total 13) patent claims of Roche’s patent be declared invalid.

NL - Visys / Best

Visys N.V. v. Best N.V., District Court of the Hague, 17 October 2012, Case/Docket no. 410962 / HA ZA 12-85

Visys and Best are competitors in the laser sorter industry. Visys seeks annulment of the patent of Best on several grounds, or, alternatively, a declaratory judgment of non-infringement. Visys' sorting machine has distribution surface with a concave shape with channels in the longitudinal direction, whereas the patent of Best relates to machines having distribution surface with a smooth convex shape.

The claims of the patent were altered in such a way that an feature describing the convex shape of the distribution surface was deleted. In proceedings in Belgium, Best would have alleged that the patent also encompassed sorting machines having a concave distribution surface. In this case, the court rules that the deletion of said feature amounted to added subject-matter, since the patent would now also encompass concave surfaces, whereas only convex surfaces are disclosed in the original application. It would not be directly and unambiguously clear for the skilled person that also surface having other shapes than convex would fall within the scope of the invention. An auxiliary request filed by Best which again added said feature is allowed. A claim directed at a machine having a straight surface was invalidated. The patent is maintained taking into account these amendments.

Other added matter arguments of Visys were rejected, as well as their arguments with regard to priority/novelty, inventive step and insufficient disclosure.

With regard to the declaratory non-infringement claim, the court ruled that Visys has no cause of action, because it should have been evident that Visys' laser sorters do not fall within the scope of the patent, which was also confirmed by Best.

Read the entire decision (in Dutch) here.

Head note: Paul van Dongen

UK - Nokia v IPCom

Nokia GmbH v IPCom GmbH & Co. KG, High Court, 20 February 2012, Case No. HC09C04868, Neutral Citation Number: [2012] EWHC 225 (Pat)

In the latest of a long line of patent cases between IPCom and Nokia, Mr Justice Floyd held that IPCom’s proposed amendments to its patent be allowed in order to preserve validity but that none of the claims of the amended patent was in any event essential to the UMTS, GSM or LTD mobile telecommunications standards. The case was relatively unusual in that neither infringement nor validity of the patent as granted were directly in issue. Rather IPCom sought to maintain validity based on three alternative sets of amendments, whilst Nokia sought a declaration that the patent as granted or as proposed to be amended was not essential to various standards, implying that it was possible to sell a device which conformed to that standard without infringing the patent.

FR - Teisseire France S.A.S. v. La Societe Routin

Teisseire France S.A.S., le directeur de l'INPI, v. La Societe Routin S.A., Paris Court of Appeal, France, 30 March 2011, Case No. 10/10045

The Paris Court of Appeal here gives one of its first decisions regarding the admissibility of a third party appeal against the decision of the Patent Office Director to limit a French patent (further to the request of its owner). The Paris Court of Appeal ruled that such appeal was not admissible.

Routin SA sued Teisseire France SAS for patent infringement before the Paris First Instance Court.  In  counterclaim, Teisseire  requested  the revocation of the patent (lack of novelty, inventive step, insufficiency).In parallel with the infringement/revocation proceedings, Routin SA filed a request before the Patent Office  requesting  limitation of its patent, on the grounds  of article L.613-24 of the Intellectual Property Code (introduced by  law n°2008-776 of 4 August 2008), which was accepted.

Teisseire France SAS filed an appeal against the decision of the Patent Office Director to accept the limitation and claimed that the limitation was not a real limitation and did in fact result in a extension of the scope of the patent.

The Paris Court of Appeal ruled that such appeal was not admissible.

DE - Maschinensatz (Machine assembly) / infringement proceedings

DE – Maschinensatz (Machine assembly), infringement proceedings, German Federal Supreme Court, 6 May 2010, Docket No. Xa ZR 70/08

German Federal Surpreme Court on staying infringement proceedings in cases in which the patentee asserts only a limited claim version as compared with the granted claim version: If a patent is asserted in infringement proceedings with a limited claim version – which is defended in parallel invalidity proceedings –, the limited claim version must be considered in the infringement proceedings even before a final decision in the invalidity proceedings is rendered.

Read the decision (in German) here.

Read a summary, provided by Bardehle & Pagenberg, (in English) here.

Head note: Tilman Müller-Stoy

DE - Polymerisierbare Zementmischung

Polymerisierbare Zementmischung, Federal Court of Justice, Germany, 11 May 2010, Case no. X ZR 51/06

As the nullity action in the first instance was only based on one or more ground(s) set out in Art. 138 (1) EPC the inclusion of a further ground for nullity in the appeal represents an amendment to the claim within the meaning of the requirement of § 533 no. 1 Code of Civil Procedure, which is also applicable in patent nullity proceedings pursuant to § 99 (1) Patent Act.
 
This Federal Court of Justice decision states that in patent nullity proceedings under the old law (patent nullity claims filed with the Federal Patent Court prior to 01.10.2009) the inclusion of a new ground for nullity may as a rule be regarded as relevant if the new ground for nullity can become part of the oral hearing in the appeal. Hence the inclusion of a new ground for nullity would normally be permitted.

On the other hand it is doubtful whether or not this applies to patent nullity proceedings filed after 01.10.2009. Pursuant to the new requirements set out in §§ 116, 117 Patent Act an amendment to the claim may as a rule only be supported by facts which were already subject of the first instance. Given the above, the inclusion of a new ground for nullity under the new law may only then be permitted if all facts necessary to illustrate the new ground were already pleaded in detail in the first instance so that on this basis alone a decision can be taken on the new ground for nullity.

Read the decision (in German) here.

Head note: Jan Dombrowski

NL - Newell Rubbermaid v. Vermop Salmon

Newell Rubbermaid Luxembourg SARL, v. Vermop Salmon GmbH, District Court The Hague, 14 July 2010 Case No. / Docket No.: 367112 / KG ZA 10-677

During the ISSA Interclean fair Rubbermaid has presented a mop that allegedly infringes Vermop's European patent on a mop holder. Vermop has seized the mop during the fair. Rubbermaid requests a lift of the seizure in summary proceedings. Vermop has filed an amended set of claims one day before the hearing, which the court finds undesirable in the light of due process of law.

The court, under reference to case T 1067/99, finds that the amendments in the claims are features extracted from a preferred embodiment and these features had a clear functional relationship with other features of that embodiment. These features may therefore not be extracted from the other features of the preferred embodiment. Therefore the court rules that there is a real chance that the patent will be held invalid for added matter in a procedure on the merits and lifts the seizure because the amended claim cannot be the basis for a seizure.

Read the judgment (in Dutch) here.

Head note: Paul van Dongen

UK - Fosroc v. Grace

Fosroc International Limited v. W.R. Grace & Co-Conn, Patents Court, Chancery Division, High Court of Justice, London, UK, 12 July 2010, [2010] EWHC 1702 (Pat)

The Patents Court has held Grace’s amended patent EP (UK) 0 415 799 to be valid.

Grace’s patent related to cement compositions used to form concrete and in particular the addition of higher trialkanolamine compounds.Fosroc sought to revoke the patent and as a result Grace made an unconditional application to amend the patent. Fosroc opposed the amendment on the basis of added matter and contended that the patent lacked inventive step even in its amended form. Forsoc also claimed that the patent was insufficient.

Mr Justice Floyd rejected the added matter objection and held that the amendments proposed by Grace were allowable in principle. The allegation of lack of inventive step based on four prior art documents failed as did the allegation of insufficiency. Mr Justice Floyd observed that a case of obviousness is seldom enhanced by the citation of multiple prior art references and the present case was no exception.

Read the judgment (in English) here.

Head note: Robert Fitt