IP Bulletin - March 2011 Edition - Cases From February 2011

KEY CASES AND DEVELOPMENTS

Media CAT Ltd v Adams and others, Patents County Court – permission to discontinue action refused. The Patents County Court has held that an attempt to discontinue claims was an abuse of process. The court also made other observations of interest concerning infringement by using a P2P filing-sharing network, infringement by authorisation, an order preventing letters threatening proceedings for copyright infringement, and management of Norwich Pharmacal orders. More >>> Virgin Atlantic Airways Ltd v Delta Airways Inc, Court of Appeal – summary judgment. The Court of Appeal has reversed the High Court decision granting summary judgment to the defendant in a case concerning a patent owned by Virgin for a system of aircraft passenger seats. More >>> PATENTS

Court of Appeal – summary judgment Virgin Atlantic Airways Ltd v Delta Airways Inc, [2011] EWCA Civ 162, 23 February 2011 The Court of Appeal has reversed the High Court decision (see last month's Bulletin) granting summary judgment to the defendant in a case concerning a patent owned by Virgin for a system of aircraft passenger seats.

In the High Court, Arnold J had concluded that Virgin had no real prospect of establishing infringement pursuant to section 60(1)(a) on the basis that Claim 1 was limited to a seating system comprising seat units assembled and arranged on an aircraft.

The fact that seat units had been made and supplied within the UK which were capable of being assembled and arranged on an aircraft in the claimed manner was not enough, as the seat units had not been assembled and arranged on an aircraft in the UK. Virgin appealed and the Court of Appeal, in a unanimous judgment given by Jacob LJ, allowed the appeal and referred the case back to the High Court for trial.

The Court of Appeal disagreed with Arnold J's construction of claims for "A passenger seating system for an aircraft", and held that a purposive construction did not limit the claim to the seating system actually installed on an aircraft.

The court said that it is classical patent law that "for" claims are normally construed as meaning "suitable for", and this was supported by recent UK and EPO case law. Even without this authority establishing a very strong presumption, a skilled man reading the claim in context would expect it to mean "suitable for". They were not the words anyone would naturally use to claim an aircraft fitted with a system.

Draft Patents County Court (Financial Limits) Order 2011 http://www.legislation.gov.uk/ukdsi/2011/9780111507155/contents

The draft Patents County Court (Financial Limits) Order 2011 has been laid before Parliament. It introduces a limit of £500,000, excluding interest, on the value of claims in patent and design cases which may be heard in the Patents County Court.

EPO – overview of patent litigation in Europe EPO, Patent litigation in Europe, November 2010 http://www.epo.org/service-support/publications/studies/litigation.html

The EPO has published the second edition of Patent Litigation in Europe. This provides an overview of the national patent litigation systems across the EPO's 38 Contracting States. It includes descriptions of the different national revocation, nullity and infringement procedures, and details of the courts at first instance and appeal.

The survey can be accessed by completing a form on the EPO's website.

TRADE MARKS

High Court - post-sale confusion Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), Arnold J, 14 February 2011 In the High Court, Arnold J has held that ECJ case law supports the proposition that post-sale confusion can be relied upon as demonstrating the existence of a likelihood of confusion under Article 5(1)(b). He also reviewed recent ECJ case law and its effect with regard to the distinction between Article 5(1)(a) and Article 5(1)(b).

The claimant, DataCard Corporation, alleged that the defendant, Eagle Technologies Limited, had infringed two patents and two registered trade marks owned by DataCard. This part of the Bulletin deals only with the trade mark aspects.

DataCard is one of the biggest suppliers of card printers and related products, including printer ribbons. Card printers are used to print on plastic cards such as credit cards. It markets its desktop card printers and ribbons under a number of trade marks, including the word mark DATACARD. It owns registrations for DATACARD for goods in classes 7 and 9, including printers and printer parts.

Eagle sells card printers and printer ribbons manufactured by various manufacturers, including DataCard. It also sells compatible printer ribbons under the PLUS-RIBBON mark ie that work in a particular manufacturer's printer, but are made by someone else.

Eagle used DATACARD on websites to describe its inking ribbons, which were compatible with Datacard's printers, and on packaging labels for the inking ribbons.

In particular, Eagle described Plus-Ribbon products for DataCard printers on its website homepage as "DATACARD PLUS RIBBON"".

The order system on Eagle's website included a page displaying various icons consisting of logos of printer manufacturers, including DataCard's logo. Clicking on this could take the customer eventually to a page including Plus-Ribbon products, described as "Datacard Plus-Ribbon"" with the same "Product ID" and "Manufacturer P/N" as the part number used by DataCard for its equivalent ribbon.

DataCard-manufactured products were not identified as such. They were described generically with a "Product ID" and a "Manufacturer P/N", accompanied by images of generic ribbons rather than by images of a DataCard box. The Product IDs were different to those used for the Plus-Ribbon products which were based on the original Datacard numbers.

The large label on the front of the box sent to the customer containing the Plus-Ribbon product included the Product ID, a description of the type of ribbon, printer model, and in small font the words "Datacard card printers" or "Data Card Card Printers". There was no statement as to who made the ribbon or the country where it was manufactured. A smaller label stated: "Shelf Life – 1 Year P/N: RBC035-0100 Type: YMCK-K-135 Brand: Datacard Made in USA".

Eagle denied infringing the trade marks, and in the alternative, defended on the basis that it was necessary for it to use the trade mark to indicate that its ribbons were compatible with DataCard's printers under Article 6(1)(c) of the Trade Marks Directive.

The High Court held that Eagle's use infringed Datacard's rights under Article 5(1)(b)...

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