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.
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.
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.
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.
Remu OY v. Knoop Machinery B.V. & Waterking B.V., District Court The Hague, The Netherlands, 9 January 2013, Case/Docket No. 415046 / HA ZA 12-354
Accelerated patent proceedings on the merits with respect to Remu's patent for a Pontoon crawler track assembly, EP 1 727 687 ("EP687"), the characterizing portion of which saw to the breadth of the pontoon crawler track assembly being adjustable, to allow both use in a narrowed position (eg. for road use) and a broadened position (eg. for maximum stability when operating in water).
Remu sought to enforce its patent against the two Dutch sister companies Knoop and Waterking, who both market amphibian tracked vehicles. In an earlier case of 2 November 2012, between Remu and RDS France SARL on one side and Sodineg SARL, Tecman SARL and Entreprise Leriche SAS on the other side, the French Tribunal de Grande Instance de Paris judged that claims 1, 2, 5, 6 and 10 of the French part of EP 687 were novel and inventive. The Court of The Hague finds differently, albeit with several additional pieces of prior art than were used in the French proceedings.
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.
Novartis AG v Generics (UK) Limited, Court of Appeal (Civil Division), London, UK, 12 December 2012Case No. A3/2011/2970
In this decision, the UK Court of Appeal confirmed that obviousness must be assessed by reference to the invention as described and claimed by a patentee. In order to undertake that assessment, all the circumstances including, where appropriate, whether it was obvious to try a particular route with a reasonable or fair expectation of success, must be taken into account. What is a reasonable or fair expectation of success will again depend upon all the circumstances, and is fact dependent.
Sometimes, it may be appropriate to consider whether it is more or less self-evident that what is being tested ought to work. However, simply including something in a research project in the hope that something might turn up is unlikely to be enough. The Court rejected that a finding of obviousness can only be made where it is manifest that a test ought to work. Such a straightjacket upon the assessment of obviousness is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable.
Population Diagnostics Inc v Comptroller General of Patents, Designs and Trade Marks, High Court of Justice, Patents Court, London, UK, 13 December 2012, Case No. [2012] EWHC 3541 (Ch)
This was an appeal to the High Court of a decision by a UK Intellectual Property Office Hearing Officer not to grant two patent applications (one directed at human subjects, the other to animals). The invention in this case relates to the field of genetics and was directed towards a screening method for differentiating between copy number variants (“CNV”s- repeated sections of DNA) which are associated with a particular condition or phenotype, and CNVs which are present in the population at large, and do not appear to cause disease.
Claim 1 referred to the provision of genome-wide CNV frequency data from a control group of at least 1,000 individuals who did not possess the particular phenotype. The issue was whether there was an inventive step, and whether the invention fell foul of the mental act and the computer program exclusions. The Hearing Officer held that the contribution of the invention lay solely in excluded fields, and there were no other technical contributions.
Smith & Nephew plc v Convatec Technologies Inc, 14 December 2012, Case No. A3/2012/1456, Neutral Citation Number: [2012] EWCA Civ 1638
HHJ Birss QC held Convatec’s patent claiming a way of making moist wound dressings containing ionic silver in a light stable form to be sufficient and inventive. Smith & Nephew appealed the finding of inventive step over Kriedl, a US patent published in 1946, which disclosed a method for making silver halide preparations with an excess of halide to bring about light stability. The appeal was dismissed.
The key issue which had been before Judge Birss was whether it was obvious to apply the teaching of Kreidl to new materials such as Aquacel, a gel forming fibre, which formed part of the common general knowledge by the priority date. The Judge had held that the skilled person would consider whether to test Aquacel in Kreidl’s conditions but would have no certainty that the test would work due to the existence of alternative explanations for Kreidl’s results (namely adsorption, which was the theory set out in Kriedl or physical shielding, a theory suggested by Convatec’s expert).
Microsoft Corporation and others -v- Motorola Mobility LLC and another, Patents Court, High Court of Justice, London, The Hon Mr Justice Arnold, 21 December 2012, [2012] EWHC 3677 (Pat)
This case concerned the validity of Motorola’s European Patent (UK) No. 0 847 654, relating to the synchronisation of message information across multiple mobile devices, and its alleged infringement by Microsoft in relation to two classes of Microsoft software products, namely Exchange Active Sync (“EAS”) and Live Messenger. (An alleged infringement in relation to a third class of products, Lync, was abandoned in Motorola’s closing submissions at trial.)
In a decision handed down on 21 December 2012, the High Court held that Motorola’s EP ’654 is invalid: three of the seven claims of EP ‘654 were held to lack novelty over three items of prior art, and all claims were found to be obvious in light of the common general knowledge and/or over the pleaded prior art. The Court also held that, if the claims had been held to be valid, Microsoft would have infringed EP ’654 by its supply of its EAS and Live Messenger products save that, as a result of the acquisition of Motorola Mobility Inc. by Google, Inc. in May 2012, Microsoft could claim the benefit of a pre-existing cross-licence between Microsoft and Google (“the Google Licence”) in relation to EAS.
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