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European IP Bulletin, Issue 11, April -
Patents
Patents
5. Once Bitten Not Twice Shy: Rockwater v Technip France
On 1 April 2004, the Court of Appeal delivered its judgment in Rockwater v Technip Offshore [2004] EWCA Civ 381.
The patent in this case related to a method and a device for laying flexible pipes offshore, especially in very deep sea. The key claims for the purposes of this appeal were claim 1 (method claim) and claim 3 (device claim). Rockwater, which made the vessel Toisa Perseus, was sued by Technip, the patentee, for patent infringement in a suit alleging that Rockwater’s vessel falls within the device claim of Technip’s patent. Rockwater counterclaimed for revocation of the patent on ground of lack of novelty and obviousness.
The patent in this case had already been the subject of previous litigation. The previous litigation was brought by Technip under its former name, Coflexip. In that case Coflexip had sued Stolt for patent infringement. The findings in Coflexip v Stolt determined some of the Claim constructions and the inventive concept. The parties in the present case accepted all the points as determined previously by the Court of Appeal. Thus, the court in this case only had to look at the construction of the phrase ‘last means for guiding the flexible conduit’, as it had substantial bearing on the outcome of this case and was not determined in the earlier case. It also had to reassess the inventive concept in relation to the new prior art which was disclosed in this case. Likewise, the new prior art had a bearing upon the concept of obviousness.
The court first defined the concept of ‘the skilled man’ and ‘common general knowledge’ in this case and accepted Laddie J’s exposition of the general background as it was not challenged. Then the court went on to examine whether the Toisa Perseus falls within claim 3, and construed the phrase ‘last means for guiding the flexible conduit’ to mean last significant guidance for the flexible conduit which was provided by the tensioning means. The court relied upon the principles laid down in the Catnic case in reaching its purposive construction of the claim and held that Rockwater’s vessel indeed falls within Claim 3 of patent. On the issue of novelty, the court reiterated the test laid down in the case of General Tire v Firestone Tire before holding that the prior art did not destroy the novelty of the patent because there were no clear and unambiguous directions which could impeach the novel concept of patent. The court reached a similar conclusion in favour of the patentee for non-obviousness, based on the test laid down in the Windsurfing case. It held that ‘why was it not done before’ is a powerful consideration when considering obviousness, particularly when all the components of a combination have been long and widely known, which can tilt the balance in favour of non-obviousness of the patent.
As the patent was subjected to an earlier litigation, a number of practice issues arise from the decision of this case:
- If the claims were already construed in some respects and the inventive concept was also determined in an earlier case, the inventive concept can be applicable in the later case involving different parties, subject to a consensus between the parties in this regard.
- The patent, once held valid in earlier proceedings, is not unimpeachable in the latter case involving different parties, and can be challenged on the basis of different evidence of prior art. If the occasion does arise, the court will revisit the questions of novelty and non-obviousness of the patent in question.
- Prior art lacking clear and unambiguous instructions in relation to a device claim will not impeach the novel concept of the patent.
In assessing obviousness, ‘why was it not done before’ is a powerful consideration, particularly when all the components of a combination have been long and widely known, which can tilt the balance in favour of non-obviousness of the patent.
6. Collateral Use Of Patent Evidence: Dendron v Regents Of University Of California
On 16 March 2003, Justice Laddie delivered his judgment in Dendron v University of California [2004] EWHC 589 (Pat).
This dispute involves parallel invalidity proceedings in the United Kingdom, The Netherlands, Germany, the European Patent Office and the United States, relating to a patent involving equipment for placing a special metallic coil within a weak artery to avoid it from bursting. Dendron challenged the patent, which was granted to University of California, on the ground of prior use.
In support of its contention, Dendron intended to use evidence obtained under orders of the UK and US courts in the other proceedings. The court had to rule on two aspects: whether there is any implied restriction on the right of Dendron to use the evidenced compiled from witnesses by the English court order evidence; and whether the lawyers in the German and Dutch proceedings were entitled to see the disclosed documents which were to be put before the witnesses in the American proceedings.
While dealing with the UK evidence which was obtained pursuant to a letter of request under EC Regulation 1206/2001 (Regulation) which relates to co-operation between national courts with regard to civil evidence, the court looked at the question of restriction upon collateral use of evidence from the perspective of both the Regulation and that of the common law. It held that the Regulation seeks to facilitate the taking of evidence within the courts of Member States and only governs civil and commercial matters. Article 1 of the Regulation holds that the evidence can only be used for judicial proceedings. Therefore, the Regulation allows a limited use and any use of the evidence outside that limitation is prohibited, unless the permission of the requesting court or the person or parties from whom the evidence is being sought is given. Thus the Regulation put restrictions on the collateral use of evidence by Dendron. On this construction such evidence could not be used in opposition proceedings before the European Patent Office, as that is essentially a non-judicial proceeding.
On the issue of common law, the court held that unless modified by the Civil Procedure Rules (CPR), there exists an implied obligation not to use, without the permission of the court or the consent of the witness, evidence obtained by compulsion under letters of request for proceedings other than the one before the court. CPR 34, which deals with evidence under compulsion, is not a definitive code in relation to collateral use of such evidence. Thus, Dendron does not enjoy an automatic right to use the evidence obtained in all proceedings; it is instead subject to the discretion of the court or the consent of witnesses. While dealing with the evidence which was obtained via the US courts, it held that under common law the same considerations would apply.
Since there has been no consent of the witnesses put on record, the court had to use its discretion whether to allow the request of Dendron to use the evidence for collateral purposes in other proceedings. On reaching its conclusion, the court relied on the case of SmithKline Beecham and held that to allow the evidence to be used for collateral purposes one has to see whether the release of the material from the restriction would serve the ends of justice. Each case has to be decided on its own facts. Following these principles, the Court ruled that the UK evidence obtained by Dendron could be used in German and Dutch proceedings but not before the EPO proceedings. However, with regard to the US evidence, the court refused to allow the evidence to be used, despite the US court order being expressly directed to obtaining evidence for all proceedings.
This was because the court felt that the material was unlikely to have significant impact, but in any event, could be obtained by an application directly to the Dutch or German proceedings.
This case formulates the following principles in respect of the collateral use of the evidence obtained by one of the parties pursuant to a letter of request made under EC regulation 1206/2001 and under Common Law:
- The Regulation has a limited purpose and any use of the evidence outside that limited purpose is prohibited save with the permission of the requesting court or the person or parties from whom the evidence is being sought.
- CPR 34 which deals with the evidence under compulsion is not a definitive code in relation to the issue of collateral use of evidence obtained under compulsion. A party therefore does not have an automatic right to use the evidence obtained from one court in all proceedings and collateral use of such evidence is subject to the discretion of court or the consent of witnesses.
- In exercising discretion in lifting the implied restriction on collateral use of the evidence, one has to see whether the release of the material from the restriction on collateral use would serve a purpose to meet the ends of justice, and each case has to be decided on its own.
This ruling is significant for cases involving intellectual property as the territorial nature of such rights means multi-jurisdictional litigation is not uncommon. This judgment restricts the extent to which evidence can be shared between lawyers in different territories acting for the same party in the same dispute, increasingly the logistical difficulties in bringing such disputes. This therefore highlights the importance in selecting the appropriate forum of force for bringing proceedings in the first place.
7. Russell Finex v Telsonic
On the 17 March 2004, the High Court of Justice, Ch.D, gave its judgment in relation to an action for a declaration of non infringement in Russel Finex Limited v Telsonic AG [2004] EWHC 474 (Ch).
The main issue in the case was the construction of a patent claim and in particular, the application of the Improver test. The Improver test, Improver v Remington [1990] FSR 181, is used to assist in the understanding of the construction of a claim by providing a method to define its purposive construction. This is especially useful in patent litigation when the supposedly infringing entity does not fall within the literal wording of a claim.
The invention at stake was a mechanical device used for screening, filtering or sizing substances. This device includes a perforated screen attached to a source of ultrasonic vibrations that are used to assist the screen in filtering. The inventive concept ensures that the maximum energy provided by the vibrations is transferred to the screen, and in order to do so, a specific design is used. The case hinged upon the construction of a phrase in Claim 1 “that the resonator has rod-type resonators or at least one circular rod”.
Literal infringement was excluded, so the defendant argued that the patent was potentially infringed under a purposive construction of its claim. The Improver test was then considered, which consists of a set of three questions:
- Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no:
- Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes:
- Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
The first question was replied in the negative and the second in the affirmative; and the issue therefore remained in the third. Referring to a previous judgment, Merck & Co Inc v Generic (UK) Ltd [2003] EWHC 2842 (Pat), the court reasoned that where the notional skilled reader cannot conclude, with reasonable confidence, that the patentee intended to cover a particular embodiment, then the embodiment is excluded from the Claim’s scope. The limitation of Claim 1 appeared to be arbitrary with regard to the effect of the invention; the notional reader would not know the reason for such a limitation, and therefore would be unable to decide that the embodiment in question was intended to be covered. The claimant was therefore entitled to a declaration of non infringement.
A practice lesson arising from the case is that it is important to draft claims with clarity because when the intention of the patentee cannot be clearly understood by the skilled reader, the claim is unlikely to prevail.
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