District Court, The Hague. 25 November 2015, C/09/483615 / HA ZA
15-245 (HP v Digital Revolution)
There is a sizeable market for printer ink cartridges. HP
brought the patent proceedings against Digital Revolution, one of
the largest suppliers of original and generic cartridges in the
Netherlands and the owner of the website www.123inkt.nl. HP alleged
Digital Revolution infringed the Dutch part of its European patent
2 170 617 relating to a printer cartridge provided with a memory
unit ("EP 617") by offering and trading in generic
cartridges compatible with HP printers. Digital Revolution denied
infringement and counterclaimed for invalidity.
Digital Revolution argued EP 617 lacked novelty over an earlier
patent granted to HP for virtually the same invention. HP did not
contest that a number, but not all, of the claimed elements of EP
617 could be found in the earlier patent. The parties differed,
however, as to the question whether the remaining elements could be
"imagined away", on the basis that they concerned
functional, rather than structural features.
Although the District Court agreed with HP that all technical
claim elements must be considered, it did not mean automatically
that the contested technical elements conferred novelty. The
District Court gave the example of a mould for molten steel. A
mould for tallow (a rendered form of beef or mutton fat) is not
novel over a mould for molten steel, as the average skilled person
would understand that a mould for molten steel will also be
suitable for tallow without requiring any structural adaptations.
According to the District Court, the question that should be dealt
with is whether or not the claim elements require a structural
difference over the prior art. In other words, whether the prior
art was suitable for achieving what was later claimed in EP
The District Court ruled that the contested claim elements of EP
617 did not require any physical/structural change over the earlier
patent granted to HP, as EP 617 did not disclose that the
validation fields and the other storage portions were structurally
different to the prior art of the earlier HP patent. Therefore,
such elements could not confer novelty over the prior art. The
District Court therefore held that EP 617 was not novel over a
cartridge according to HP's earlier patent.
The Dutch part of EP 617 was held invalid and HP was ordered to
pay over €93,000 in litigation costs to Digital Revolution. It
is expected that HP has already appealed against this ruling.
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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