UK: Recent Patent Cases

Last Updated: 22 January 2013
Article by Beck Greener

Brigade v Back-Tec Worldwide Ltd and Jamie Martin MacSween [2012] EWPCC 52

Costs and Dissemination Order

This is a case heard in the Patents County Court before Birss HHJ which related to infringement of GB patent No. 2318662. The first defendant had failed to file an amended statement of case, as required in an earlier order by Floyd J on 12 July 2012 and subsequently in an order by Birss HHJ on 19 September 2012. Therefore, the first defendant's defence was struck out and judgement entered for the claimant. The claimant made a request for an injunction, delivery up, costs, an inquiry as to damages, additional damages and dissemination of the judgement. An order for injunction, delivery up and damages inquiry was made.

The claimant sought a summary assessment of costs. The evidence provided simply stated that the claimant's costs were higher than the scale limit and so the scale limit is claimed. This was held to be insufficient to allow a summary assessment to take place. It may be that a summary assessment of a party's actual costs for a given stage produces a sum lower than the scale limit.

The judge considered that although a dissemination order could be made, material should be made available to the court in order to be satisfied that such an order is desirable, as made clear in the Court of Appeal judgement in Samsung v Apple.

As the case is a judgment in default of defence, Birss HHJ indicated that considerations applicable to declaratory orders in similar circumstances were potentially relevant, such as Wallersteiner v Moir [1974] 1 WLR 991. The claimant was given liberty to apply for a dissemination order.

Mölnlycke Health Care v BSN Medical [2012] EWHC 3157 (Pat)

Construction, Novelty and Obviousness, Sufficiency

Mölnlycke sued BSN Medical for infringement of their European patent (UK) 0855921, which related to wound dressings and methods of making them.

Construction

Claim 1 of the patent relates to a wound dressing and requires a layer of absorbent foam material including a pattern of holes, where the foam material is coated with a layer of a skin-adhering hydrophobic gel.

The walls of the holes are defined as being coated with gel at those end parts of the holes that lie proximal to the wearer's skin when the dressing is worn. The primary issue of construction was whether the language of the claim required the gel to penetrate the hole, or whether it was sufficient for the gel to reach the perimeter.

Floyd Jconcluded that the claim 'requires the gel to coat the inside of the hole walls, and not merely to abut the edge of the hole'. The BSN products were found not to satisfy this claim feature, and accordingly, Floyd J reached the conclusion there was no infringement.

Novelty and Obviousness

The defendants alleged claim 1 to be neither novel nor obvious over US Patent Specification 4,995,382, referred to as "Lang 1". Lang 1 describes a dressing having an absorbent layer and a low wound adherency wound-facing layer. The wound-facing layer can be either a conformable, aperture film or net of elastomer coated with an adhesive or a pattern of adhesive spread in a conformable net-like configuration. Floyd J held that Lang 1 did not contain clear and unmistakeable directions to make a dressing with a hydrophobic gel layer.

It was further found that it was not obvious to use a silicone gel adhesive layer as the wound facing layer following the teaching of Lang 1.

Sufficiency

The judge also rejected allegations that the patent was insufficient because the breadth of the claims exceeded the technical contribution. BSN alleged that the claims covered products which did not have the required adhesive properties or softness of the wound contact layer to provide a functioning inventive dressing. Floyd Jconsidered that the technical contribution in this case lies in the novel structure and its components. The judge was able to differentiate this case from Pharmacia v Merck [2002] RPC 41, in which the technical contribution could only be the quality alleged to be possessed by all the compounds. Therefore, the ground of invalidity based on insufficiency failed.

Nokia Corporation v HTC Corporation [2012] EWHC 3199 (Pat)

Stay of Proceedings, Arbitration

HTC commenced sixteen revocation actions against Nokia patents and had applied for directions at a Case Management Conference ("CMC"). Four days prior to the CMC, Nokia filed independent actions for infringement.

HTC subsequently filed a request for arbitration in relation to seven of the patents. The request for arbitration was based on a confidential agreement containing an arbitration clause and including a licence granted by Nokia to HTC under "essential" patents to telecommunications standards.

Shortly thereafter, HTC made an application to stay the proceedings, predominantly based on section 9 of the Arbitration Act 1996 which recites:

"(1) A party to an arbitration agreement against whom legal proceedings are brought (by way of claim or counterclaim) in respect of a matter which under the agreement is to be referred to arbitration may (upon notice to other parties to the proceedings) apply to the court in which the proceedings have been brought to stay the proceedings so far as they concern that matter.

...

(3) An application may not be made by a person before taking the appropriate procedural step (if any) to acknowledge the legal proceedings against him or after he has taken any step in those proceedings to answer the substantive claim."

Floyd J had to decide whether, by holding the CMC in these proceedings and inviting the court to make orders, HTC had taken a step in the infringement proceedings to answer the substantive claim.

The judge came to the conclusion that the participation of HTC in the making of the order on the CMC was an unequivocal acceptance of the fact that the court was going to decide all of the issues which might foreseeably arise in the action.

Noting that the position would be entirely different if HTC had reserved their position at any stage prior to the CMC, Floyd J refused the stay under section 9.

The judge then considered the request for the stay under the inherent jurisdiction. This was also refused on the grounds that such a stay would be premature before issues in relation to consent and essentiality have been properly considered.

Ningbo Wentai Sports Equipment Co Ltd v Jonathan Hwan Wang [2012] EWPCC 51

Jurisdiction of Patents County Court

Ningbo had been successful in revoking Mr Wang's UK Patent No. 2473927 before the Patents County Court. An order by consent was made by the judge earlier this year. A counterclaim by Mr Wang for breach of contract and/or breach of confidence remained outstanding. The question arose as to whether the Patents County Court had jurisdiction to hear the matter.

Birss HHJ held that the case could proceed in the Patents County Court under its special jurisdiction under s. 278 Copyright Designs and Patents Act 1988. This was because the claim for breach of confidence (in equity and in contract) arose out of the same subject matter as the patent proceedings. It made no difference that the patent case had come to an end. Birss HHJ was doubtful that the case could proceed under the ordinary jurisdiction of the Patents County Court as a county court, but did not decide on this issue.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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