Publications
European IP Bulletin, Issue 6, November -
Patents
Patents
9. Coflexip SA v Stolt Offshore MS
Coflexip SA v Stolt Offshore MS ltd & Ors [2003] EWHC 1892
Stolt brought an action before the High Court of Justice, ChD Patents Court, in order to seek a stay of the enquiry as to damages. In 1996, Coflexip sued Stolt for infringement of its patent; Stolt was found guilty and damages were ordered. The judgment was appealed and upheld on 31 July 2000; moreover the petition for leave to appeal from the decision of the Court of Appeal was dismissed. Therefore, the order for damages was final and the enquiry was fixed for a hearing in April 2004. On the 15 April 2003, in a litigation based on the same patent, Rockwater succeed against Coflexip and the patent at stake was ordered to be revoked. This event was at the heart of Stolt submissions.
Considering the order for revocation, Stolt argued that it would be monstrous to have to pay such a sum, between ₤50 and ₤70 millions plus interest, for an infringement of a non-existing right. Coflexip pointed out that even if the revocation related back to the date of the grant, Stolt was still bound by the rule of cause of action estoppel; a rule that safeguards the finality in litigation. Citing an earlier judgment, Poulton v Adjustable Cover & Boiler Block Co. (1908) 25 RPC, it was argued that a defendant becomes estopped from denying the validity of the patent at the date of infringement in respect of which the damages are ordered, notwithstanding the later revocation of the patent. Stolt opposed that the revocation was in rem and related back; therefore an estoppel was put before a cause of action estoppel. Meanwhile, the judgment made the matter of the infringement and the validity of the patent res judicata, creating then a perfect estoppel: the patent has to be treated as null and void for the very first as an order for revocation of a patent is conclusive in rem, but this does not affect the existence of prior estoppels from a prior decision in personam that the patent was valid and infringed. Stolt referred then to a US case, Mendenhall v Barber-Green 26 F 3d 1573, and argued that because the patent became invalid and therefore was determined to be invalid after full and fair litigation, the plaintiff became then collaterally estopped from recovering for infringement in that pending case. Mr J Jacob opposed that in that case, the decision as to validity was not regarded as final; whereas the decision of validity was final between Stolt and Coflexip. Also, an inquiry for damages is supposed to be instantaneous and to take place at the very moment when the judgment is pronounced.
Mr Justice Jacob held that the general law of cause of action estoppel should be kept, therefore declined to order a stay. Judgment held on the 31 of July 2003.
10. Storage Computers v Hitachi Data Systems
Storage Computers Ltd v Hitachi Data Systems Ltd [2003] EWCA 1155 Civ
The English Court of Appeal considered the standard of obviousness when publications are referred to in a patent specification and acknowledged to disclose the pre-characterising part of a claim.
It is common practice in drafting patents in Europe to divide a claim into two parts which respectively define the class of products or processes to which the invention applies and which is known (the pre-characterising part) and a second part which describes the invention that has been made (the characterising part). It is also common practice in the European Patent Office to acknowledge in the specification prior art documents identified during prosecution of the application.
Storage Computer brought proceedings against Hitachi Data Systems in the Patents Court for infringement of EP 0 294 287 and EP 0 539 494 involving data storage media. The Defendant counterclaimed for invalidity and revocation of both patents. Pumfrey J held at first instance that there was no infringement and that both patents were invalid. Storage Computer appealed the findings of obviousness and infringement of EP 0 294 287. Hitachi Data Systems played no part in the appeal arising from a settlement agreement between the parties.
The issues in the appeal centred on the finding of obviousness based on the acknowledgement in the patent that the pre-characterising part of Claim 1 was disclosed in a cited prior art document, Timsit. Storage Computer contended that Timsit was not an appropriate starting point for a finding of obviousness since the disclosure of Timsit could not be equated with the pre-characterising part of Claim 1, particularly as the Defendant did not press the citation in cross-examination at trial. Secondly, they contended that the Judge’s combination of Timsit with a second cited prior art document, IBM1, was an impermissible “mosaicing” of prior art documents.
The Court of Appeal dismissed those arguments since it was clear from the specification that the pre-characterising part of the claim was acknowledged to be old and disclosed in Timsit. The Judge had also made a finding that the principles underlying the second prior art document were part of the common general knowledge of the skilled person. On that basis, the judge was entitled to make a finding of obviousness based on the pre-characterising part of the claim when considered with common general knowledge as exemplified in the second piece of prior art. The Court of Appeal added a cautionary note that where the application of a legal standard such as obviousness is a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation.
Attorneys in the London and Washington DC offices of McDermott, Will & Emery represented Hitachi Data Systems.
11. Progress of UK Patent Amendment Bill
In November 2002, the UK Patent Office and the Department of Trade & Industry jointly launched a consultation on proposed changes to UK patent legislation. The primary impetus for this was to prepare for ratification of revisions to the European Patent Convention (EPC) agreed in November 2000. The opportunity was taken to consult on a number of other possible changes, including provisions relating to compensation for employee inventors, co-ownership of patents, enforcement and office practice. The consultation closed on 21 February 2003. On 27 August 2003 the Patent Office gave notice of progress. The Patent Office note the large number and high quality of responses received to their consultation document. While continuing to analyse these with a view to publishing a summary in the autumn, they are using the information to help decide which of the optional proposals should be taken forward and are starting to prepare for the drafting of a Bill.
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