Publications
European IP Bulletin, Issue 30, March - Patents
Patents
4. Research in Motion UK v Inpro Licensing Sarl
Research in Motion v Inpro Licensing SARL [2006] EWHC 70 (Pat) was a patent action for revocation of a European Patent (UK) belonging to the defendant, Inpro Licensing SARL (“Inpro”). The grounds for revocation were invalidity for lack of novelty, obviousness and excluded subject matter. Inpro’s patent claimed a computer system that reduced the processing power used by portable computers making it quicker and easier to access the internet.
The claimant (RIM) was responsible for the well-known Blackberry device and Inpro counterclaimed for infringement against RIM and the mobile telephone service provider T-Mobile. The alleged infringement was said to occur when any Blackberry device downloaded a webpage including images transferred using the Blackberry service.
Before examining the case, Pumfrey J made clear that he was in disagreement with Laddie J’s decision for a streamlined trial and that although speed is desirable in all cases, it should not be so at the expense of fairness especially in view of the commercial importance of the patent. The choice of expert witness made by Inpro was also criticised for a lack of objectivity which led to an unreasonable view being given.
On the issue of infringement, the Blackberry device was found to infringe both the web browsing and email services of the patent. The court relied on the recent decision in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 for a correct interpretation of the claims in line with Art 69 of the EPC.
Validity of the patent was challenged on grounds of anticipation and obviousness in view of three publications, and obviousness in view of a fourth publication. On the issue of anticipation, the court relied on the recent decision in Synthon v SKB [2005] UKHL 55.
RIM argued that the patent fell under the ambit of excluded subject matter as it claimed a collection of programs for computers. However, the claims themselves resulted in a technical effect in that the computers ran faster and transmitted information more efficiently. Pumfrey J stated that the correct approach was to ask what the claimed invention contributed to the art outside the excluded subject matter and that the exclusions were not to be given too wide a scope since modern industry depended on programmed computers.
The patent was found to be invalid for lack of novelty and inventive step, but not for excluded subject matter. The claim for revocation succeeded and the counterclaim for infringement failed.
Inpro has sought to enforce their patent across the EC, but has been unsuccessful in another action brought in the German Court in Munich where their German patent was invalidated. A settlement ended the long-running US case where RIM faced infringement allegations by NTP. The final settlement reached $612.5m (£349m) following dismissal of the case by court order allowing RIM to continue its Blackberry-related business.5. Rhone-Poulenc Rorer v Yeda Research and Development
Rhone-Poulenc Rorer International Holdings v Yeda Research and Development [2006] EWHC 160 Ch involved the ownership dispute of a patent for therapeutic compositions containing monoclonal antibodies and anti-neoplastic drugs that together provide a cytotoxic effect (the killing of cancer cells) rather than a cytostatic effect (just preventing their replication). In the reference proceedings before the Comptroller of Patents, Designs and Trademarks, the claimant Yeda Research sought to amend its reference to allege sole proprietorship to the patent as an alternative to the joint proprietorship plea that it had raised earlier. The defendantsRhone-Poulenc, the registered proprietor of the patent, and Imclone, a licencee, argued that the amendment, if allowed, would bring a new claim that would be outside the two-year limitation period of section 37(5) of the Patents Act 1977, and could not be allowed as per the criteria of CPR rule 17.4.
The hearing officer accepted that section 37(5) of the Patents Act should be interpreted as a limitation period by virtue of Article 23 of the Community Patent Convention 1989 (“CPC”) but held that he was not bound to apply CPR rule 17.4. He exercised his discretion to allow the amendments. The defendants appealed.
Lewison J while allowing the appeal laid down the following propositions:
- Section 37(5) imposed a limitation period that barred the making of a claim outside the two-year time limit, but it does not bar the grant of a particular remedy. Although the hearing officer was right that s 37(5) of the Patents Act is a limitation period and that he is not bound by CPR, his omission of not considering the effect of the amendments was incorrect. He just assumed (wrongly) that, if the amendments were allowed, the questions raised by the amendment could be considered by the Comptroller at a later stage.
- “Legal certainty” is the relevant underlying policy of s 37 of the Patents Act and Article 23 of the CPC. It militates against an amendment allowing a new claim to be made after the expiry of the limitation period that related back to the date when the claim was originally made, even if it did arise out of the same facts. The correct test is to see if a useful purpose can be served by allowing the amendment.
Since the amendments if allowed, would not relate back to the date of the original reference, the limitation defence to the new claims remained available and there was thus no useful purpose in allowing them.
6. Non-Disclosure Agreements: Markem v Zipher Applied - Is There Any Change?
GE Healthcare Ltd v PerkinElmer Life Sciences (UK) Ltd & Anor [2006] EWHC 214 (Pat) involved a claim for patent infringement and a counter-claim for revocation of the patent or for a declaration that the Defendant, PerkinElmer, was entitled to the patent. The Claimant, GE Healthcare was known as Amersham Biosciences Corporation at the time the events in question took place and was referred to as Amersham throughout the judgment.
The patent in question concerned scintillation proximity assay technology (“SPA”). SPA technology allows the radioactivity in a solution to be measured by placing a treated surface (say a bead) in a solution without the need to separate the bead from the solution. This avoids unnecessary separation steps in complex microbiological or drug testing that might affect the results obtained.
PerkinElmer’s case concerned a number of disclosures:
- repeated suggestions over a long period of time were made to Amersham in respect of certain types of surface treatment being used to reduce the quenching of the signal being measured;
- repeated suggestions over a long period of time were made in respect of the use of more advanced detectors to measure the signal produced;
- on several occasions, the combination of the two suggestions; and
- suggestions in respect of applying these principles to other testing apparatus.
On the question of entitlement, Mr Justice Kitchin summed up the test in Markhem v Zipher [2005] EWCA Civ 267: first, the entitlement claim must be that the inventor contributed to the formulation of the inventive concept underlying the invention and not merely insubstantial additional features; secondly, the entitlement claim must be based on some rule of law to establish title to the patent, such as a breach of confidence or contractual rule.
The parties accepted that a number of meetings between researchers had taken place in confidence. On the evidence, suggestions concerning the different technical aspects of the matter were made; however, often the suggestions involved other apparatus and the underlying technical features communicated to Amersham were ones that Amersham researchers would be aware of in any event.
Further, and importantly, it was held that the suggestions were made only at a time that Amersham was not interested in such knowledge. Thus, Amersham would not have ‘picked up’ knowledge from these apparent suggestions. In short, it was held that the invention was arrived at independently by Amersham.
Despite non-disclosure agreements being in place, without a real contribution to the underlying inventive concept, no claim to entitlement in the patent could result, even from apparently confidential commercial collaboration.
Patent entitlement only arose as a defence against a claim of infringement in this case due to an unusually set of facts. Further, the patent was found invalid in any event. Nevertheless, it is an important lesson to all technology companies entering commercial research collaboration. A non-disclosure agreement is not sufficient if you want to gain entitlement to inventions resulting from research collaboration. The best protection is explicit contractual agreement detailing the ownership of resulting inventions.
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