Recent Decisions In The English Courts

Infringement

Recovery of Damages on Transfer, Section 33

Thorn v Siemens [2008] EWCA Civ 1161

Court of Appeal: Mummery, Arden and Lewison LJJ: 22nd October

2008

In October 2007, Mann J found European patent (UK) No. 0577094

to be both valid and infringed. In this appeal there was no

challenge to the decision on validity but the question as to

whether the patent had been infringed was appealed. The appeal

court also considered whether Siemens were entitled to recover

damages in respect of the period of infringement which predated

their registration as proprietor of the patent.

Infringement

Mummery LJ, giving the judgment of the court, upheld the

judge's construction of Claim 1 of the patent. However, whilst

acknowledging that they should proceed with caution in reversing an

infringement judgment which would have been based on the

judge's evaluation of the facts, the appeal court did not agree

with him that the evidence supported a finding of infringement.

The patent claimed a printed circuit board having a protective

coating consisting of a film made from a thermoplastic material.

The thermoplastic material incorporated wax to improve its flow

properties. In the claim, the wax was said to facilitate

"through-plating" and soldering operations through the

protective coating. The film, in the claim, was said to be

"fused" onto the printed circuit board by the action of

heat.

The judge had identified several practical benefits which arose

if the wax facilitated through-plating. The appeal court did not

agree with him that the evidence "supported the finding

that this possible theoretical benefit of a coating with wax had

been proven to be a practical benefit present in Thorn's

coating." The appeal court also found that in the Thorn

product, whilst heat was applied to provide optimal conditions for

fusion, the adhesion or fusion was by the application of pressure.

Therefore, they concluded that the Thorn product did not infringe

the patent.

Transfer

The original owner of the patent merged in 1998 and there was a

second merger in 1999. The effect of the first two mergers, which

were both under Swiss law, was not registered at the British Patent

Office until 2002. A third merger taking place in September 2004

was registered within six months. It was therefore necessary to

consider whether Siemens were barred from recovering damages by

virtue of Section 68 of the Patents Act 1977.

Before it was changed in April 2006, Section 68 provided that

damages or an account of profits should not be ordered unless the

transaction was registered. The amended Section 68 removes the bar

on the recovery of damages and, instead, provides the lesser bar of

one on the recovery of costs and expenses.

Mann J had determined that whilst the mergers under Swiss law

provided that transfers of the property should take place, a merger

did not effect the transfer itself. In the judge's view, the

transfers of the patent were by operation of law, and this was not

a transaction as set out in Section 33 of the Patents Act. Mann J

therefore held that the transfer fell outside the regimes of

Sections 33 and 68. Therefore, any damages recoverable were not

limited by Section 68 of the Patents Act 1977.

Mann J accepted that the result was anomalous or, as set out in

the grounds of appeal, had "opened up a large lacuna in

which the purpose of [s 68] is defeated".

The appeal court disagreed. They judged that "The term

"assignment" is inherently capable of more than one

meaning." Warning against a narrow literal approach, they

considered the opening words of Section 33(3)

"transactions, instruments or events" were wide

and open textured.

There is no reason why an assignment, if given a wide

meaning, should not be an instrument in some circumstances and an

event in other circumstances, or a combination of an event and an

instrument in other circumstances.

Therefore, the appeal court set aside Mann J's decision that

the transfer was not covered by the provisions of Section 33(3).

They also overruled an earlier decision of Mann J in Tamglass

Ltd OY v Lyoyang Glass technology Co Ltd [2006] EWHC 655

(Ch):

that an assignment had to be an express consensual

bilateral document transferring a patent.

Added Subject Matter

Construction and Infringement

Corus v Qual-Chem: [2008] EWCA Civ 1177

Court of Appeal: Pill, Scott and Jacob LJJ: 29th October

2008

HHJ Fysh QC sitting in the Patents County Court held in February

2008 that Qual-Chem's UK patent No. 2363635 was valid and

infringed. Lord Justice Jacob, giving the first judgment, dismissed

the appeal which had been restricted to a single issue of non

infringement and to an allegation of added subject matter.

Jacob LJ remarked:

"Although Corus pleaded many more points originally,

the Judge had to deal with what, by my count, were no less than 10

discrete points or sub-points. The taking of many points is often

the mark of a party which does not feel it has a single

"killer". So it proved before the Judge who rejected all

of them."

Added Subject Matter

There were no questions of legal principle in this terse

judgment. Jacob LJ noted that the authorities for the added subject

matter objection were well known and quoted from his own judgment

in Richardson-Vicks Patent [1995] RPC 568:

..the test of added matter is whether a skilled man

would, upon looking at the amended specification, learn anything

about the invention which he could not learn from the unamended

specification.

Construction

Corus had contended that whereas the granted patent claimed a

method of cooling or treating slag, the A specification was

confined to the treatment of molten iron. This attack was

rejected.

The claim of the patent included an integer requiring

"the conveying gas pressure being tailored with respect

to the conveyed additive material to cause the conveyed additive

material to penetrate into and remain in the slag."

Corus contended that "being tailored" meant that once

all the other variables had been selected,

the pressure had to be adjusted (tailored) so that

additive was conveyed into and remained in the slag. You could only

infringe if your apparatus had some pressure adjustment

means.

These submissions were rejected.

"Given the known purpose I think the skilled reader

would read the word "tailored" meaning "so arrived

at" or "chosen" so as to have the desired effect. To

carry out the method there are a variety of variables which must be

adjusted in interdependence on others ? one of these is

the pressure. If that is correct for the rest of the variables then

it is "tailored" within the meaning of the claim. Giving

it that meaning is not ignoring it."

"The conclusion is reinforced by the body of the

specification. It uses "tailored" for other variables

such as the gun and the briquettes of additive. In context the word

clearly includes "selected so as to be suitable

for."

Declarations of Non-Infringement

Gore v Geox: [2008] EWHC 2311 (Pat)

Floyd J: 7th October 2008

Gore sought a declaration of non-infringement of patents of Geox

and the revocation of those patents. The Court of Appeal had

previously ordered an expedited hearing, and Floyd J agreed to hear

these matters in a limited trial slot in September. Geox had

acknowledged non-infringement of two of the patents in suit and

Floyd J had also ordered that the issues of validity of those two

patents should come on at a later hearing.

This case was concerned with two Geox patents, European patent

(UK) 0858270 ("270") and European patent (UK) 1185183

("183"). The issues considered were the validity of each

of the patents, whether a cemented product of Gore infringed 270,

and whether an injected product of Gore infringed 183.

The patents were concerned with shoes having a waterproof and a

breathable sole. In the judgement, Floyd J construed the main

claims of the patent and then considered whether products made to

submitted process descriptions would infringe the claims as

construed. On the facts, the judge found that both patents were

valid.

Construction

Not surprisingly, Gore argued for a very specific and limited

construction to the language of the claims. For example, they

argued that a mid-sole said to comprise a number of layers had to

mean a unitary assembly positioned in...