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European IP Bulletin, Issue 15, September - Patents
Patents
6. The First Anti-Suit Injuction In a Patent Case Before the Dutch Court of the Hague
This case highlights the problem of trying to enforce a portfolio of weak patents, the so-called “patent thicket”. It involved an initial action brought by Israeli company Mendinol against Cordis, a subsidiary of Johnson & Johnson, claiming infringement of its family of patents relating to improved stents (structures placed in blood vessels to support and keep the vessels open).
At first, Mendinol obtained an interim injunction against Cordis based on the patent. Subsequently, however, the patent was found to be invalid pursuant to opposition proceedings in the EPO. Only one divisional application was upheld, which was appealed to the Board of Appeal, while a number of other divisional applications remain in opposition before the EPO.
However, before the opposition was heard by the EPO, in order to guard against such a finding of invalidity, Mendinol applied to the Court in The Hague for further injunctions based on two other divisional applications. This tactic failed, as the Court found that the injunctions covered the same invention, the case being dismissed on the grounds of double patenting. Undeterred, once the original injunction had lapsed, Mendinol brought a third action based on a further divisional application. The Court yet again ruled that this divisional application covered the same invention as the patent and dismissed the case on grounds of double patenting. It was at this time that Cordis counter-claimed for an anti-suit injunction. This was granted until the validity of the divisional application is settled by the EPO.
Counsel for Cordis hailed the decision as a warning against the bringing of “frivolous” actions before the Court. Certainly, patentees should regard the case as a note of caution against trying to amass patent portfolios. This decision serves as a reminder to those paying to file and maintain the applications that quality is more important than quantity when it comes to enforcement.
7. Sandoz GMBH v Roche Diagnostic GMBH
On 28 July 2004, the High Court of Justice, Chancery Division, gave its judgment in relation to an action for revocation of a European patent in Sandoz GmbH and Roche Diagnostic GmbH [2004] EWHC 1313 (Ch).
The main issue in the case was the determination of inventiveness and the definition of the person skilled in the art and his relation to prior art. Pursuant to section 3 of the Patent Act 1977, an invention must involve an inventive step which is not obvious to a person skilled in the art. Therefore, it is important to know the standard of the person having skills in the art which will be used in patent litigation
The patent in question related to the way injectible liquid formulations (also known as parenteral), which have proteins as their active ingredient, might be prepared for multidose. The main purpose of the invention was to ensure that no contamination happened while it was used. This was achieved by a combination of antimicrobial preservatives. The question was whether the process involving the combination of low concentration of two or more of the identified preservatives was obvious as at the priority date.
While there were differences in opinion in defining whether the skilled addressee could be either a team or an individual, the Court mostly focused on the way the skilled addressee could use available knowledge. To that extent, it was re-affirmed that the ability of the skilled addressee may include making a mosaic out of relevant documents, either when it is part of his technical background or where a sufficient cross-reference justified an association, but that this must be achieved with no inventive capacity, Rockwater v Technip France SA [2004] ECWA Civ 381.
The skilled addressee’s access to knowledge was reviewed under three sources: common knowledge, an international patent application and previous publications. The court found that as at the priority date of the patent, combining those antimicrobial preservatives was a common practice. Further, the court viewed the teaching of the international patent as irrelevant because it would not have been used unless verified by the skilled addressee’s own common general knowledge. Therefore, the claims for revocation of the patent were dismissed.
Pursuant to this decision, when considering litigation in relation to the inventive step, it is important to note that not only will the prior art be limited to the skilled addressee knowledge, but the way the skilled addressee might incorporate different knowledge may be restrained to what the standard will allow him to use, even though information is available regarding the teaching of the patent at stake.
8. Patent and Design Rights in Ultraframe v Eurocell: One and One Makes Eleven
On 22 July 2004, Justice Lewison gave his decision in the case of Ultraframe (UK) Ltd. v Eurocell Building Plastics Ltd. & Ors [2004] 1785 EWHC (Ch).
Ultraframe (UK) Ltd is one of the market leaders in the manufacture and supply of conservatories called “Ultralite 500” and “Ultralite 250”, which Eurocell distributed until it started manufacturing and selling its own conservatory system “Pinacle 500”, in competition with Ultralite 500. Ultraframe brought the suit of infringement against Eurocell for infringing its patents and design rights. Eurocell counterclaimed that the Ultraframe patent and designs were invalid, or alternatively that their system falls outside the monopoly claim, and/or that its designs were original and did not infringe Ultraframe’s design rights, or alternatively the designs fell within the “must-fit” and “must-match” exclusions.
The patent related to a structure comprising building elements of plastic material inter-engaged by a stiffening beam to build a roof. After going through the industry background and legal propositions, Lewison J held that the outcome of the patent dispute related to the construction of patent itself. Having recourse to the patent claim and specification, expert evidence, and the protocol questions relating to how Article 69 of the European Patent Convention is to be interpreted, the Court rejected Eurocell´s contention that the patent was invalid. However, having considered the Court rules, it was found that the Pinnacle 500 fell outside the monopoly claimed by Ultraframe and did not infringe the patent.
Therefore, Ultraframe’s case was narrowed down to whether it could claim design rights in the panels, ducts, channels and caps forming part of the structure, and on the interpretation of concepts such as original, commonplace, ‘must fit’ and must-match’ under Section 213 of Copyright, Designs and Patents Act, 1998.
The Court concluded that while the Pinnacle 500 did not infringe Ultraframe’s design right in the top caps or end caps, it infringed Ultraframe’s design right in the assembly and panels, as a whole.
In arriving at its conclusion, the court laid down the following propositions relating to designs:
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Subject to the exception for “commonplace” designs, a design is “original” for the purpose of design right if it is the product of skill and labour, and it has not been copied from another pre-existing design. This type of originality is called originality “in the copyright sense”. It is not necessary that the design be novel
- If a design is original in that sense, the court must then consider whether it is “commonplace”. If it is commonplace then it cannot be “original” within the meaning of section 213. To that extent, there is a difference between a design that is original “in the copyright sense”, and a design that is original “in the design right sense”
- The exclusion from originality may apply to a design that is commonplace, but not to the individual parts of a design that is commonplace. In other words, the fact that a design is made up of features which, individually, are commonplace does not necessarily make the design as a whole commonplace
- Since a design right has a relatively short life and confers only limited protection against copying, references to “commonplace” designs should be narrowly construed. The court reiterated the five stage test laid down in Farmers Build Ltd v Carier Bulk Materials Handling Ltd for deciding whether a design is a) original in copyright sense and b) not commonplace
- The genesis of the “must-fit” exception under section 231 (3)(b)(i) lies in the policy that there should be a free market in spare parts which must, therefore, be manufactured so as to fit into the assembly of which they are parts The “must-match” exclusion referred to in section 231 (3)(b)(ii) is a narrow one, which applies only to those features of the design that must match the remainder of the assembly of which it is a part. This means that it is limited to features dependent on the appearance of another article. Thus internal (invisible) features of an article are not excluded by this exception
- To the interpretation of term “design”, the court expressed its reservation on Justice Laddie’s definition in Ultraframe UK Ltd v. Fielding, which provided that “The combination of features left after individual features are excluded under the “must fit” and “must match”, is the design in issue. If that combination of features is commonplace, the design is not protected.” Rather, the court held that whether a design is commonplace is a question that must be considered before subtracting from it any features that will fall within those two exceptions
- In order to determine whether a person is guilty of infringement of a design right by substantially copying a design, the evaluation of the design must be viewed through the eyes of the person to whom the design was directed.
9. Patents Act Receives Royal Assent
The Patents Act 2004 (the “2004 Act”) received Royal Assent on 22 July 2004. The Act will come into force after the commencement order is made.
The 2004 Act amends the Patents Act 1977 (the “1977 Act”) with a view to modernising, and updating the patent law in the United Kingdom and bringing it in line with the revised European Patent Convention. The UK patent practice will thus become similar to that of other European countries making it easier for UK businesses to operate in Europe. It is hoped that the changes will reduce the number of patent cases determined by the courts by encouraging alternative dispute resolution and reducing the cost of patent litigation especially for the small and medium sized enterprises, and thereby create a more efficient patent system in the United Kingdom.
Some of the major amendments to the 1977 Act are as follows
- Section 1 – methods of treatment and diagnosis will not be able to be patented
- Section 2 – in relation to amendments to the patent after the grant, any pre amendment cases may be deemed to have been done in good faith
- Section 3 – relief for infringement may be granted if the proprietor of the European patent (UK) limits it at the EPO
- Section 4 – where the court or comptroller finds a patent partially invalid, the court may order the revocation of the patent unless the proprietor limits his patent at the EPO
- Section 6 – the new application will be treated as if it were filed on the original date of application without the requirement of publication
- Section 10 – compensation will be granted to the employee inventor where the patent or the invention or a combination of both has been of outstanding benefit to the employer
- Section 11 – damages awarded by the comptroller in infringement proceedings may be recovered through the enforcement mechanisms of the county courts
- Section 13 – the Patent Office may provide independent non binding opinions on patent validity or infringement.
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