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.
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.
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.
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:
Easy Sanitary Solutions B.V. v. Blücher Metal A/S, District Court The Hage, The Netherlands, 24 April 2013, Case No. HA ZA 12-895, with thanks to Frank Eijsvogels and Christopher Pierce, Hoyng Monegier, for providing the decision
Easy Sanitary Solutions alleged that Blücher infringed its patent on a triangular drain. Blücher argued that the patent was invalid due to lack of novelty and inventive step and that its triangular drain products that are offered for sale in the Netherlands do not infringe the patent.
Blücher's suggestion to not apply the problem-solution approach to inventive step, but a “common-sense approach” was not followed by the Court.The Court found that Blücher’s inventive step arguments were tainted by hind-sight. The Court found that Blücher’s triangular drain products which are offered in the Netherlands infringe the patent, and ordered Blücher to pay the costs of the proceedings.
Brigade (BBS-Tek) Limited v. Amber Valley Limited, Patents County Court, HH Judge Birss QC, 19 April 2013, London, UK, Case No. [2013] EWPCC 16
In this judgment, HH Judge Birss QC has found the Claimant’s (“Brigade”) UK Patent No. 2,318,662 (“the Patent”) partially valid and infringed by the Defendant’s (“Amber Valley”) vehicle reversing alarm product called Ecolarm.
The Patent relates to an alarm (or other device) that enables an individual to locate a given object and take appropriate action, and the use of such an alarm as a locating device, the core idea of the invention being an alarm in which the sound emitted is broad band noise (e.g. white noise). Tonal sounds, even complex tonal sounds, were deemed not to be broad band noise, as construed in the context of the Patent.
In the course of the proceedings, Brigade unconditionally applied to amend the Patent effectively limiting the claimed devices (and claimed use thereof) to “indicating” devices or vehicle sirens. There was no dispute as to the allowability of the amendments. Amber Valley challenged the validity of the Patent (as amended) on the grounds of added matter, anticipation and obviousness.
Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others, High Court of Justice, Patents Court, Justice Arnold, London, UK, 22 April 2013, Case No. [2013] EWHC 923 (Pat)
Nestec alleged that Dualit had infringed European Patent (UK) No. 2 103 236 (“the Patent”) by supplying coffee capsules compatible with Nestec’s Nespresso coffee machines. Dualit denied infringement and counterclaimed for revocation of the Patent.
On validity, Mr Justice Arnold held that none of the Patent's claims were entitled to priority from the Priority Document and that claims 1, 2, 7 and 8 lacked novelty over the Priority Document. The Priority Document disclosed arrangements having all the features of the relevant claims. As the claims of the Patent were broader than the disclosure of the Priority Document, the claims lacked novelty over the Priority Document even though they are not entitled to priority from it. Dulalit also contended the Patent lacked novelty over the use of "Essenza" machines during the priority interval. On the basis that (a) none of the claims were entitled to priority and (b) the Essenza machine fell within the Patent's claims, Mr Justice Arnold concluded that all the claims lacked novelty in the light of the information made available to the public by the prior uses. Dualit did not succeed on the other grounds of invalidity it relied upon.
On infringement, Mr Justice Arnold held that Dulait's NX capsules in combination with eight of the ten Nespresso machines in the case fell within claim 1. The Judge then considered whether Dualit was liable for contributory infringement under section 60(2) of the UK Patents Act based on Article 26 of the Community Patent Convention ("CPC"). Of particular interest, Mr Justice Arnold considered whether Dulait's NX capsules constituted “means relating to an essential element of the invention”. There appeared to be no English authority as to the correct approach to this requirement which is directly on point although, it has been considered by the courts of a number of other countries which have implemented Article 26 CPC, notably the Netherlands and Germany. Mr Justice Arnold favoured the German Court's approach: the fact the element was known in the prior art did not prevent it being an essential element of the claim, but if a feature was of completely subordinate importance for the technical teaching of the invention it could be regarded as a non-essential element. The NX capsule was held to constitute means relating to an essential element. Although claim 1 only requires the capsule to have a guide edge in the form of a flange, the flange played a significant role in the way the claimed invention worked.
Lizzanno Partitions (UK) Limited -v- Interiors Manufacturing Limited, Patents County Court, HH Judge Birss QC, London, UK, 12 February 2013, Case No. [2013] EWPCC 12
This judgment relates to an action for a declaration of non-infringement and revocation of the defendant’s United Kingdom patent GB 2 432 617 (“the Patent”) and the corresponding counterclaim for infringement. The alleged infringement concerned the claimant’s gasket for sealing between glass partition walls. The Patent was found valid and infringed.
In the judgment, the claimant is referred to as “Lizzanno” and the defendant as “Komfort” (Komfort Workspace Plc having been the original proprietor of the Patent).
Infringement
In essence, Komfort’s invention is based on a new gasket which is made of a hollow tube of non-rigid material and has a particular shape when it is not in use – namely it has a substantially rectangular cross-section, with substantially planar long edges and curved shorter edges. In contrast, Lizzanno contended that its “fan shaped” gasket did not infringe because: (i) its gasket has concave curves (rather than convex curves as shown in the figures of the Patent), (ii) the sides of the gasket are purposefully not parallel, (iii) the gasket is made using two different grades of PVC, and (iv) one of such materials is rigid.
Based on the Court’s construction of various features of the claims, in particular, the Judge’s finding that:
Ajinomoto v. Global Bio-Chem Technology, Helm et all. District Court The Hague, The Netherlands, 20 March 2013, Case No. C/09.268116 / HA ZA 06-2131
Ajinomoto is the proprietor of EP 0 796 912 relating to a “novel lysine decarboxylase gene and process for producing L-lysine”. Both Ajinomoto and defendants Global et al. produce and sell L-lysine. Global et al. claim that the L-lysine produced by them is produces using fermentation methods with micro-organisms. On 20 March 2013, the District Court of The Hague ruled that EP ‘912 was valid, in spite of Gobal et al.’s arguments based on lack of novelty, obviousness, insufficient disclosure and added matter, and it ruled that Global et al. had infringed the patent.
Legro Gartneri A/S v. Svegro AB, Svegro AB v. Legro Gartneri A/S, District Court of Stockholm, 26 April 2012, Docket No. T 106-10 and T 5193-10 (joint cases)
Svegro requested that the District Court should declare Lergo’s European patent EP1197137 (A method of growing two or more plants for the development of a composite or combined plant) invalid as far as concerns Sweden. The request was denied by Legro, including (as part of its defence) a request for a limitation of the patent should it otherwise be considered invalid. The parties also agreed that the District Court should assess whether Svegro infringed the patent-in-suit provided that it was valid.
In the invalidity case, focus for the assessment of novelty was whether the invention of the patent-in-suit had been disclosed by public use before the filing date of the patent application. In this respect, reference was made to case law from the EPO. It was first concluded that use of the invention in greenhouses or in private did not constitute “public use” unless the public had access to such facilities without a confidentiality undertaking. Furthermore, it was noted that there could be “public use” if the patented method was possible to understand following examination of the products produced by the use of such method but that the person skilled in the art would not have understood with certainty which method that had been used following such examination in this case. Hence, the invention was novel. However, the District Court concluded that the invention lacked inventive step when considering certain prior art invoked by Svegro. In support of its argument that the invention constituted an inventive step, Legro had invoked inter alia a licence agreement pursuant to which the patent-in-suit had been licensed to a third party. While commercial success can be a factor indicating an inventive step, the District Court was of the opinion that the existence of the licence agreement did not alter its assessment.
In the District Court's judgment, the patent-in-suit was declared invalid but that Svegro would infringe the patent if it was valid (hypothetical case). However, in its assessment of infringement in the hypothetical case, the District Court also considered whether there was any prior user rights defence for Svegro. The District Court concluded that one of Svegro’s suppliers had used the patented method in accordance with such prior user rights defence and, consequently, that Svegro’s handling of products manufactured during such time by its supplier did not constitute patent infringement. Legro was ordered to reimburse Svegro’s legal costs.
The infringement case was stayed pending any appeal of and final judgement in the invalidity case. The parties have now settled the case.
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