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...
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