Taking the Exudate - ConvaTec v Smith & Nephew [2011] EWHC 2039 (Pat)

Seeping wounds: not the name of a village in the West Country (the Kat has checked), and neither is it the most savoury of subjects for polite after-dinner conversation. However, it does form the background for the decision in Convatec v Smith & Nephew [2011] EWHC 2039 (Pat), handed down this morning by HHJ Birss – the Judge having discarded his usual Patents County Court hat for the matter and donned that of a Judge of the High Court.

When but a kitten, one of the first things that one learns about tearing around the place with reckless abandon is the fact that most inanimate objects simply cannot be trusted. Apparently immovable, this Kat lost count of the number of playgrounds and trees that conspired to take large chunks out of his paws, elbows and knees by subtly reorientating themselves in respect of his person at a critical point during a daring manoeuvre. Needless to say: there were often cuts and grazes, blood and associated ooze. Anyone that has suffered from high-speed playground contact syndrome will appreciate that the damage caused is usually relatively slight, and the blood loss low. The ooze factor, however, is high, and many a good pair of trousers has been the source of significant pain and discomfort by becoming firmly adhered to the graze site. Wounds, you see, seep, and fabric tends to stick to this seepage.

So back to the case in hand. ConvaTec own a number of patents relating to wound dressings. The patent in suit (EP(UK) 0 927 013) concerned a non-adherent dressing comprising certain fibrous material that operated to absorb wound exudate (i.e. seepage) whilst maintaining a moist environment around the wound. Keeping a wound moist is generally agreed to aid healing, but too much moisture is a bad thing as it can lead to maceration (i.e. over-hydration) of the surrounding skin. Accordingly, at the priority date of the patent there were a number of wound dressings on the market that promoted the maintenance of a moist wound environment by gelling – absorbing the exudate and forming a gel within the dressing itself.

Smith & Nephew wished to sell a wound dressing called Durafiber. ConvaTec alleged that this would infringe their patent, and so brought an action against them. Smith & Nephew, for its part, denied infringement and counterclaimed for revocation on the ground of invalidity.

Construction
Having orientated himself by considering the technical background to the invention, the identity of the skilled addressee and their common general knowledge, the Judge then addressed the issue of construction. Distinct issues of construction arose in respect of claims 1 and 3 of the patent:

Claim 1:
A wound dressing comprising a blend of discrete modified cellulose gel forming fibres with at least one other type of discrete gel forming fibres.
Claim 3:
A wound dressing as claimed in any preceding claim wherein the dressing comprises a wound contacting surface consisting of a blend of discrete modified cellulose fibres with at least one other type of discrete gel forming fibres.

Setting out the law, the Judge adopted the tried and trusted formulation found in Kirin Amgen Inc v Hoechst Marion Roussel [2004] UKHL 46, [2005] RPC 9, and also recited the 11-point plan endorsed by the Court of Appeal in Virgin v Premium Aircraft Interiors [2009] EWCA Civ 1062, [2010] RPC 8. When addressing claim 1, he explained that there 2 issues of construction: the first was the meaning of “blend of discrete fibres” and whether this rendered it a product by process claim; and the second was the meaning of the word “type”.

Rejecting the contention that claim 1 would be understood by a skilled reader to refer back to the process by which the product was made, the Judge explained that it was a simple product claim:

[55] “…The claim is a claim to a thing – a wound dressing. The thing comprises a blend of (at least) two types of discrete fibres. In other words a mixture of discrete fibres.”

[57] “No doubt the reader would expect it to be likely that one would make such a wound dressing by mixing (blending) the two fibre populations but that processing is not what the claim is talking about. The claim is talking about a product…. The reader would understand that the invention is about using the mixture of fibres which gives beneficial properties as a wound dressing. It is not an invention focussed on manufacturing methods. How you choose to make the mixture is irrelevant.”

Moving on to the construction of “type” within claim 1, the Judge noted (at [60]) that ConvaTec had argued that “type” referred to fibres with different absorbency properties. Smith & Nephew, by contrast, contended that “type” referred to a particular polymer – i.e. to the chemistry of the fibre. In a rather radical move, the Judge considered that “both the claimants’ and the defendants’ submissions are wrong.” He explained that

[63] “The flaw in each side’s submission is to approach the matter as one of construction of the word “type”. Type is a perfectly ordinary English word which ordinarily would not be expected to bear the kind of refined analysis each side have subjected it to. The key it seems to me is to appreciate that the correct question is to construe claim 1. Claims should, if they can, be construed as a whole.”

Accordingly, by focussing on the meaning of one word within the claim, the parties had missed the way in which claim 1 was written. As this Kat has long maintained, the process of atomising phrases within the claims is capable of distorting the message conveyed by the whole. The natural tendency when faced with a deconstructed sentence is to treat the individual particles as elements of precision. One assumes that the message conveyed by the whole is simply the sum of its parts, whereas often the true story is much more complicated. Or, as in this case, much simpler: accordingly as the Judge explained –

[65] “…[C]laim 1 is actually rather simple. If all the gelling fibres in the wound dressing are modified cellulose then the claim is not satisfied. The claim requires a blend of (gel forming) modified cellulose fibres and some other type of fibres, that is to say some other fibres which are not modified cellulose. If I ask in a shop for a bowler hat and another type of hat, I do not expect to be given two bowler hats, differing only in their size or colour or whatever.”

[66] “…Asking, out of the context of claim 1, what a “type” is, is an example of meticulous over analysis of the words. Once you embark on asking the (wrong) question of what is a type, there is support in the specification for many different answers.”

Moving on to claim 3, the Judge explained that the term “modified cellulose fibres” was not a term of art and was “not a term which reader would think was meant to impose a tight limitation. The term is broad and is not intended to be limiting.” Accordingly, it was not limited to chemical modifications.

Infringement
Given the Judge’s construction of the claims, there was evidently no infringement:

[104] “The only gel forming fibres in Durafiber are made of CES, i.e. modified cellulose. In other words, as regards gel forming fibres, Durafiber uses modified cellulose alone and there is no other type of gel forming fibre present. Therefore on the true construction of the claims, Durafiber does not infringe claim 1.”
[105] “Moreover since claim 3 is dependent on claim 1, Durafiber does not infringe that claim either, irrespective of the issues of construction of claim 3.”

Validity
Moving to validity: by the end of the trial ConvaTec had accepted that claim 1 of the patent was anticipated and therefore invalid. Claim 3, stated to have independent validity, was attacked on grounds of obviousness – it being alleged to lack inventive step over three pieces of prior art (Qin, Lassen and ‘746) and the common general knowledge. Diving in to the issues, the Judge applied the Pozzoli reformulation of the classic Windsurfing test and sought to apply this to the facts. In respect of the first two pieces of prior art (Qin and Lassen), claim 3 passed muster – it was not obvious in their light. ‘746 deserves special mention.

‘746 was a PCT application published about a year before the priority date of the patent in suit. It is entitled “Wound dressings” and relates a wound dressing employing CMC (i.e. carboxymethyl cellulose – modified cellulose) fibres in the wound contacting surface. On the Judge’s construction the point did not arise, however, on ConvaTec’s proposed construction – assuming that the defendants’ product did infringe the claims – then it was alleged that the product of ‘746 would also fall within the patent’s scope of protection. As such, the patentees were evidently on the classic “horns of a dilemma”: the defendants alleging that there was nothing patentably distinct between ‘746 and their actions which were alleged to infringe. As the judge noted (at [170]) this was “a Gillette defence of the purest kind.”

Nevertheless, as construed by the Judge, the patent was safe from these challenges. It was also not obvious in light of the common general knowledge – this being a case in which one could legitimately ask “if it was obvious why was it not done before?”

Accordingly the patent was valid, in part, but not infringed.

Nokia v IPCom - Round Two of the English Leg of the International Patent Battle

The tussle between Nokia and IPCom has reached the courts once again and is, in the mind of this Kat at least, beginning to appear a little like the legal equivalent of UK TV uber-serial Eastenders - not quite up there with the Coronation Street-like behemoth of the Chiron v Organon litigation in the 1990s, of which this Kat seems to recall at least 14 decisions, but nevertheless still on its way to epic status.

By way of a reminder: IPCom (described by the Court of Appeal in previous litigation ([2011] EWCA Civ 6) as a “non practising entity”, i.e. a patentee with no business of its own in products covered by the rights it holds), owned a number of patents (which it had bought from Bosch) in the field of mobile communications technology. It originally approached Nokia offering to licence these rights, but Nokia refused to pay the sum that IPCom requested. IPCom therefore commenced infringement proceedings against the Finnish company in Germany. This riled Nokia who retaliated, seeking revocation of a number of the patents in Germany and the UK, and the dispute escalated into what has been described as “an international patent battle”.

Floyd J had previously dealt with matters between the two on a number of occasions and had produced three judgments (of 20th November 2009, [2009] EWHC 3034 (Pat) (“the first amendment judgment”); 18th January 2010, [2009] EWHC 3482 (Pat) (“the main judgment”); and 31st March 2010, [2010] EWHC 789 (Pat) (“the second amendment judgment”)). The parties, having taken a little time off to visit the Court of Appeal (which pronounced on the matter on the 20th January 2011, [2011] EWCA Civ 6 – noted by the IPKat here), were recently back before the Judge for another round. Floyd J’s latest decision in the matter was handed down yesterday.

This particular episode of litigation concerned IPCom’s European Patent (UK) No. 1 841 268, a divisional of European Patent (UK) No. 1 186 189 which had found fame in the previous round. The judge had found the parent patent invalid in his January 2010 judgment ([2009] EWHC 3482 (Pat)), and Nokia now sought the same fate for its offspring. IPCom, for its part, made a conditional application to amend the patent and also counterclaimed alleging infringement. Nokia denied this and also sought a declaration of non-infringement in relation to a series of other mobile phones.

Those who take delight in the technical aspects of the UMTS mobile telecommunications standard will, once again, be in seventh heaven reading this judgment. For the rest of the IP population, a summary will suffice. As the Judge explained (at [5]), the patent concerned a “method of managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station.” Essentially, it offered a manner of regulating a UTMS mobile radio network so as to distinguish between various user classes and to dynamically prioritise certain mobile traffic over others. Priority traffic would gain direct access to the network, whereas other traffic would compete for access in a ‘lottery’.

The meat of the judgment revolves around the obviousness attack upon the patent’s validity, although a significant portion of the judgment is also directed to discussion of added matter. Insufficiency gains a brief look-in as well.

Validity
Cutting to the chase, Floyd J was not convinced that any of Nokia’s three prior art references rendered the invention obvious. The same fate befell Nokia’s final challenge – that the alleged invention was actually obvious in light of the common general knowledge (CGK). Despite this being described (at [116]) as “a very simple and attractive argument, untrammelled as it is by any of the details of a practical working system”, it was nevertheless considered to fail. The Judge concluding (at [123]) that even though the patented invention may not have achieved anything in terms of general functionality when compared with the prior art or CGK, “it does not follow that IPCom’s approach to achieving that functionality is obvious. It is entirely possible that invention lies in achieving the same functionality in a different way.”

Objections to the amendment of the claim based on added matter went the same way: all failed. Similarly, all objections on the basis of insufficiency were also rejected, the Judge concluding that:

[176] “…The patent would not be understood to be pretending that the invention would work without modification in whatever UMTS system was ultimately agreed. This case is nothing like a patent where there is a missing essential ingredient. The cross-examination of Mr Gould did not show that a system could not have been built based on the draft standards: it merely showed that it would not have been possible to guess what choices would be made in the final standards, and that if there was a difference the phone would not work.”

Infringement
Having concluded that IPCom’s patent was valid, the Judge went on to consider the question of infringement. He noted that there was a “Product and Process Description for each of 14 types of Nokia device designated “the A1”, “the A2”, “the B1”, “the B2”, “the C1”, “the C2”, “the D1”, “the D2”, “the E1”, “the E2”, “the F1”, “the F2” , “the G1”and “the G2”.” A1 and A2 were found to infringe, but the B to G devices were not. As the Judge explained:

[206] “The only case of infringement which IPCom could have advanced on these devices would have to be based on class barring. But they cannot espouse that construction because they have now accepted that on that construction the patent would be invalid over GPRS.”

Accordingly, a declaration of non infringement was granted in respect of the B to G devices.

With this round going, on balance, to IPCom the next instalment in the €12 billion European saga is eagerly awaited.

Letter from Amerikat: Happy Bunny Day!

The AmeriKat has been enjoying the warmth of the sunbeams that have danced across her numerous files, spreadsheets and bundles this past week. The warmer weather brings out the summer clothes and English smiles, but also insects. Almost this time last year the AmeriKat was in the throws of a biblical scale warfare with swarms, floods, and drought inflicting her house. She had hoped that the spring and summer of 2010 was a blip in the calendar of insect infestations she would have to deal with, but alas, with the warmer weather the ants are back. She has now found the gap in her floorboards were the pesky insects have been arriving from, but like plugging a hole in a leaky boat, the water will always find somewhere else to spill in from. So instead of lounging out in the sun, dying eggs, eating chocolate and drinking lemonade on Easter Sunday, she is instead attacking any small six-legged body racing across her floor. (picture, left- the AmeriKat inspecting an alleged Easter bunny) Happy Easter from the AmeriKat!

Bratz Beats Barbie with $89 million jury-award

From pesky six-legged insects, to perky two-legged dolls. Last week a Californian federal jury issued their verdict in favor of Bratz (picture, right) in the now-famous copyright and trade secret battle between Barbie and Bratz (see previous reports here). Barbie's maker, Mattel, had alleged that the maker of the Bratz doll - MGA Entertainment- stole the idea for the Bratz doll by entering into a deal with the designer of the doll, Carter Bryant, who had previously worked for Mattel. Mattel subsequently filed a lawsuit for copyright infringement and trade secret violations, while MGA alleged unfair competition and also trade secret theft. This case was heard by first by Judge Larson who ruled in favor of Mattel, but that $100 million verdict was overturned on appeal. The Court of Appeals for the Ninth Circuit held that the federal court judge had erred in ruling that Mattel automatically owned the designer's sketch of the doll under the terms of the 'Employee Confidential and Inventions Agreement' between Mattel and the designer and remanded the case back to the federal court.

Bryant's employment agreement had assigned all rights, titles and interests in any such inventions, patents and copyrights to Mattel. The contract defined "inventions" as including, but not limited to, discoveries, improvements, processes, designs and know-how. The district court had held that this agreement assigned Bryant's ideas to Mattel despite 'ideas" not being included on the list or mentioned anywhere else. Mattel argued that the list of examples in the contract were illustrative not exclusive, but the Court held that "ideas" are "markedly different from the list of examples including discoveries, improvements and designs" (People ex rel Lungren v superior Court (1996)). (picture, left - no amount of law school could prepare Lawyer Barbie for the cruelty of a jury verdict) The Court of Appeals stated that the contract was arguable capable of either including or not including ideas, but that the trial court did not recognize this ambiguity and thus did not examine the extrinsic evidence before it on this issue.The Appeals Court concluded that the agreement could be interpreted to cover ideas, but that the text of the agreement did not compel that reading and thus remanded the issue back to the district court. They stated that:

"Designs, processes, computer programs and formulae are concrete, unlike ideas which are ephemeral and often reflect bursts of inspiration that exist only in the mind."

At the end of last year, Mattel and MGA applied for summary judgment on the issue of copyright infringement for the first and second generation Bratz dolls. Judge Carter granted summary judgment in MGA's favor in respect of the second generation Bratz dolls, but the remaining issues, including breach of copyright for the first generation of Bratz dolls and the breach of confidence/trade secret claims, remained for trial. The court was tasked with determining whether the Inventions Agreement entitled Mattel to Bryant's ideas for names like "Bratz" together with sketches that he created outside working hours. Also, ripe for ruling was MGA's trade secret claim against Mattel through a campaign of corporate espionage, whereby MGA alleged that Mattel's employees gained access to regulated private MGA toy showrooms by deceptive means.

On Thursday, a federal court jury in Santa Anna, California, found in favor of MGA and following the Court of Appeals opinion held that Mattel did not own the sketches or ideas for the Bratz dolls. The jury verdict also held in favor of MGA's counterclaim that Mattel had willfully misappropriated trade secrets and slammed Mattel with a $88.5 million damages price tag. A slight saving grace, albeit an insulting one, was that the federal jury also found that MGA had interfered with Bryant's contract with Mattel and issued Mattel a $10,000 award for the interference.

Although the battle may not be over with reports that Mattel will file a motion for a retrial within two weeks and will reserve the right to appeal, the case does remind everyone of the importance of carefully drafted employee contracts, as well as taking the business decision to litigate over seven or so years even if it costs your shareholders $400 million (see MSN money report here). However, if Mattel's intention was to quash the rival dollmaker, the litigation may have just done that. MGA's CEO, Isaac Larian is reported as saying that the Bratz brand "will never be the same level it was before."

The IPKat will keep you posted on any further developments in the case.

Tony Duquette seeing Spots with J.Crew sweater

Tony Duquette, Inc, the proprietor of the various IP rights associated from the late namesake artist and designer filed a trade mark infringement suit against clothing retailer and AmeriKat favorite, J.Crew in a New York federal court last week. For those not in the know, the late Tony Duquette was a Tony award-winning designer and artist who counted Elizabeth Arden and the Duke and Duchess of Windsor as clients. Tony Duquette allege that J.Crew has infringed the DUQUETTE name and trade mark by producing and selling a sweater with the style name the "J.Crew Duquette Factory Leopard Print". The complaint alleges that J.Crew knowingly and willfully used the DUQUETTE trade mark in connection with their leopard print sweater because of Duquette's alleged unique association with leopard prints, in particular with woven and printed textiles including carpets and tapestries. (picture, left - a fabric design by Duquette) The AmeriKat is seeing more and more product descriptions that use trade marked words become the subject of trade mark disputes. In the UK, one can always invoke the fun game of whether the product description is being used as a function (of many, many functions) of a trade mark. In the U.S., the case is arguably little more straightforward.

Albeit having not read the complaint, the AmeriKat's gut instinct is that there is not enough here to satisfy the test of trade mark infringement. i.e., namely where is the confusion and whether Duquette has enough reputation in his name associated with leopard print textiles to claim dilution? Further live trade mark registration for DUQUETTE the AmeriKat found on USPTO is for tapestries of textiles, carpets and rugs - not apparel (Reg No. 3863326). The AmeriKat perused J.Crew's website today and found one leopard print sweater which is called the "Wild spots cardigan" - a very un-J.Crew product name - so her guess is that J.Crew has already taken steps to change the name of the contentious product. The Amerikat predicts this lawsuit to die a quickish death, just like the animal print trend of last season.

Apple v Samsung v Apple v Samsung v Apple....

Last year the AmeriKat was constantly up-to-date reporting on the latest of the patent mobile phone wars. She has now officially lost track, except for the latest of the battles now between Samsung and Apple. Apple sued Samsung two weeks ago in California federal court for trade dress, design patent, trade mark and patent infringement against Samsung's Galaxy line of smartphones and tablets. Apple allege that Samsung's products are copies of the iPhone and iPad designs including the "icons with the rounded corners."

The incestuous ties of the smartphone and tablet manufacturers and retailers are felt in this case. In 2010 Samsung earned a reported $5.7 billion revenue from Apple by way of their purchase of Samsung semidconductors. Tim Cook, Apple's CEO, told the Wall Street Journal that Apple is

"Samsung's largest customer, and Samsung is a very valued component supplier to us, and I expect the strong relationship will continue. Separately from this, we felt the mobile communication division of Samsung had crossed the line, and after trying for some time to work the issue, we decided we needed to rely on the courts."

The litigator in the AmeriKat sensed a nice little bargaining chip for Apple in this suit, however not to be uncharacteristic in this type of litigation Samsung then "countersued" Apple last week, but not in the U.S. Samsung filed patent infringement lawsuits against Apple in Korea, Japan and Germany alleging violations of patents filed in each of those jurisdictions. The allegedly infringed patents involve "transmission optimization and reduction of power usage during data transmission, 3G technology for reducing data-transmission errors and a method of tethering a mobile phone to a PC to enable the PC to utilize the phone's wireless data connection." The speed in which these lawsuits were filed indicate that Samsung may have been preparing itself for this counter-attack for sometime.

This latest chapter in the mobile patent war saga again demonstrates that when it comes to litigation surrounding smartphone technology, the best defence that is repeatedly being employed by parties is that of pursuing offensive litigation strategies on a global level. Whether or not that will prompt the parties to settle sooner is not a certainty, but the more complicated and more jurisdictions in which a company has to battle, the more attractive it becomes to resolve the dispute before litigation costs rocket and stated commercial relationships are massively affected.

"Making"? It's Open and Schütz...

There are days when it rains and, for a Kat at least, others when it paws… Today is definitely one of the latter. In an avalanche of activity, the Court of Appeal has handed down a trio of IP judgments this morning. First on this Kat’s platter for the day is the decision in Schütz v Werit [2011] EWCA Civ 303.

Schütz is the exclusive licensee of a European Patent (EP (UK) 0 734 947) belonging to Protechna. The patent is for an intermediate bulk container (IBC). As Jacob LJ explains: “An IBC is a large (about 1000 litres, so about a metric tonne or more) container used for the transport of liquids. They have to be able to withstand the tough conditions of transport – they must be leak proof, capable of being stacked in threes or fours (so the bottom one may have about 6 tonnes on it), capable of withstanding prolonged or violent vibration and withstanding the forces caused by the liquid within sloshing around.”

Prior to the patent, IBCs of a two-part construction (basically a plastic bottle within a metal cage) were well-known. Due to the generally tough conditions of transport and the inherent differences in durability between plastics and metals, the average lifespan of the cage is some five times that of the bottle that it holds. Consequently, an industry has developed to repair any damage to the cases and to refresh the containers themselves by “re-bottling” (i.e. replacing the old bottle with a new one from the same manufacturer) or “cross-bottling” (i.e. replacing the old bottle with one from a different source). Schütz objects to its cages being used by cross-bottlers, which, as you might expect, is the root of this dispute.

As the Court explains:

[10] “Werit sells bottles for IBCs to a company called Delta, a reconditioner. Delta buys discarded Schütz IBCs, removes and discards the original Schütz bottles, makes any necessary repairs to the cage, replaces them with Werit bottles and offers the resulting IBC to the market in competition with Schütz.”

Schütz originally brought an action for infringement against Werit, as is their right pursuant to s67 of the Patents Act 1977, it being common ground that if Delta infringed the Patent by their reconditioning then so also did Werit. Werit did as any alleged infringer would do and counterclaimed for invalidity. Protechna were formally parties to the proceedings, but took no active part therein – and so for the purposes of this note can conveniently be forgotten. At First instance ([2010] EWHC 660 (Pat)), Floyd J found the patent valid but not infringed. Both Schütz and Werit appealed against the findings that they did not agree with, and the case arrived before the Court of Appeal.

Before the Court, three issues remained live: (a) whether the patent was invalid for insufficiency or was so ambiguous that it could not be infringed; (b) whether the Patent was invalid for added subject matter; and (c) whether, if valid, what Delta does amounted to an infringement within the meaning of s60(1) PA 1977 – in other words, was Delta “making” the patented article?

The first two points are described by Jacob LJ as having “no general importance”, the real focus of the appeal being issue (c). To cut a long story short, the patent was found to be valid and so the Court turned to the main point of contention: “making”.

Making
The patent claimed an IBC consisting of three items: a pallet, a bottle, and a cage. The cage was considered to be the novel and inventive bit – to which the bottle and pallet add nothing of interest, save that the bottle is “exchangeable” and co-operates with the frame. This interaction between frame and bottle provided the IBC with its strength and stability. The question before the Court was therefore whether when Delta puts a Werit bottle into a Schütz cage it infringes the Patent.

(As a brief aside: the background to the drafting of the PA 1977 is well known, as is Jacob LJ’s wonderment at the lengths that were taken to turn the perfectly serviceable wording of the various International Conventions upon which certain provisions of the Act were based into anglicised shadows of their former selves. Fans of such comments will accordingly not be displeased with [36] to [39] of this judgment.)

However, back to making: the starting point for the discussion of “making” was considered to be Art 25 CPC, which, in turn, brought in Article 69 EPC, as the “extent of protection is determined by the claims.” The only question before the Court was therefore whether the act of putting a bottle into a Schütz cage constituted “making a product which is the subject-matter of a patent”.

With this point sorted, Jacob LJ then dived headlong into an analysis of United Wire v Screen Repair Services [2001] RPC 24, noting that this had been the main battleground of the parties in this case. The crux of the dispute was whether United Wire established (or indeed prohibited) a “whole inventive concept” test for the determination of whether there had been “making”. If such a test had been adopted, then it was argued that, as the cage embodied the whole of the inventive concept of the claimed invention, anyone putting a new bottle into an existing cage could not be said to be “making” the patented article.

In particular, the parties disputed the meaning to be attributed to the following excerpt from Aldous LJ’s judgment in United Wire in the Court of Appeal:

[25] “It is therefore better to consider whether the acts of a defendant amount to manufacture of the product rather than whether they can be called repair, particularly as what could be said to be repair can depend upon the perception of the person answering the question. Even so, when deciding whether there has been manufacture of the product of the invention, it will be necessary to take into account the nature of the invention as claimed and what was done by the defendant.”

Schütz argued that Aldous LJ was saying that what mattered was whether the defendant was making the patented article. Werit, on the other hand, considered that the final sentence was by implication bringing in the Judge’s “whole of the inventive concept” test. The distinction mattered as the House of Lords had explicitly endorsed Aldous LJ’s judgment in the case as correct.

Jacob LJ considered that Aldous LJ could not have been adopting a “whole inventive concept” test. To have done so would have rendered it impossible to subsequently hold (at [29] of United Wire) that it was an infringement for Screen Repair Services to recondition or repair a frame made by United Wire and re-use it to make an assembly as claimed in claim 1 of that patent. This was because (as explained at [54] of the Schütz decision) in the case of one of the patents alleged to be infringed in United Wire the inventive concept resided solely in the use of a flexible frame. Adopting a “whole inventive concept” test would have meant that when Screen Repair Services sandblasted and re-meshed this frame they would not have infringed, having not made the invention afresh.

Turning, then, to the House of Lords’ decision, Jacob LJ noted that Lord Hoffmann explicitly endorsed the Court of Appeal’s approach in the case. Moreover, his Lordship had explained that “whilst “repair” might as a matter of acontextual language overlap with “making” it could not do so for the purposes of s.60(1)(a) (i.e. Art. 25).” The important thing was to identify the patented product. In the instant case the product was the IBC. This ceased to exist when the bottle was removed. What remained at this stage was, according to Jacob LJ, “merely an important component from which a new IBC could be made.”

Accordingly, Jacob LJ considered that the House of Lords in United Wire had excluded the “whole inventive concept” test. The only question of importance was whether the alleged infringer had made the patented product. Here Delta had done just that when they replaced Schütz’s bottles with those manufactured by Werit.

The Court of Appeal also considered that there were additional reasons for rejecting the “whole inventive concept” test, notably that in practice it is likely to be fuzzy and uncertain:

[72] “…How precisely do you ascertain it? Take this very case. The cage co-operates with the bottle in the complete IBC. It is the combination of both which is claimed. So what is the whole inventive concept? Just the cage? Or the combination?
…
[76] “Another way in which the test is uncertain is that it would depend on what piece of prior art you took into account. For in a general sort of way the “inventive concept” is the difference between the patented idea and the old idea. That depends on what the old idea was.”

Furthermore, Canon v Green Cartridge [1997] AC 728 was considered to address one of the Judge at first instance’s concerns in the present case – the fact that if there was infringement Schütz would, as a commercial matter, have a monopoly in unpatented replacement bottles for their cages. Jacob LJ considered (at [79]) that this was “not really an apt matter for patent law”:

[80] “Does it really matter if Schütz has a monopoly in replacing bottles for its cages? One cannot really say whether there is any public interest in the nature of freedom of competition seriously involved. If anything it would seem not. Schütz’s actual customers would appear to be largely indifferent concerning the activities complained of. They simply want the used IBCs off their premises. They are not people who want their IBCs “repaired.””

The Judge at first instance had also considered (at [196] of that decision) a hypothetical patent on an inventive tennis racquet frame, with claims calling for a strung racquet coupled to the inventive frame. He asked: “Does this prevent re-stringing, even though the invention is said to lie in the features of the frame alone?”. Again, Jacob LJ considered that this was not an important consideration:

[90] "It is not necessary for us to provide any general answer to the “restringing problem”. It suffices to say that Delta, when it fits Werit bottles into Schütz cages, is making IBCs which fall within the Patent and are doing so without the licence of Schütz. That they themselves on their own website say they are “re-manufacturing” says it all."

Open and Schütz…

Jurisdiction to deal with foreign patents: Solvay goes all the way

Sticky issues go to the ECJ

Here comes another set of riddles for the Court of Justice of the European Union to resolve: it comes in the form of Case C-616/10 Solvay S.A v Honeywell Fluorine Products Europe B.V., Honeywell Belgium N.V. and Honeywell Europe N.V.  This was a reference for a preliminary ruling from the Rechtbank's-Gravenhage, The Netherlands, regarding the application of Articles 2, 5(3), 6(1) and Article 22(4) of Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the Brussels Regulation). Background to this reference can be found on PatLit, here.

The questions are as follows:

Regarding Article 6(1) of the Regulation:

In a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, does the possibility arise of ‘irreconcilable judgments’ resulting from separate proceedings as referred to in Article 6(1) of the Regulation?

Regarding Article 22(4) of the Regulation:

1. Is Article 22(4) of the Regulation applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of the Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against infringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibility exists that the patent invoked would be declared invalid by the competent court?

2. In order for Article 22(4) of the Regulation to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the Regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of the Regulation are already pending or are to be commenced - within a period to be laid down by the court - or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law?

3. If question 1 is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) of the Regulation has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised?

4. If question 1 is answered in the affirmative, can Article 31 of the Regulation confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a cross-border prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) of the Regulation does not affect the jurisdiction of the Rechtbank to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid?

5. If question 4 is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link, as referred to in paragraph 40 of the Van Uden v Deco-Line judgment [Case C-391/95], between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought?

This particular member of the IPKat team freely admits that, if Kats have Achilles' heels, the Brussels Regulation is definitely one of his, so he is keeping quiet about this one till he is faced with a neatly packaged, carefully reasoned judgment to criticise.  However, if any reader would like to comment on this case to the UK's Intellectual Property Office you can email the IPO at policy@ipo.gsi.gov.uk before 28 February 2011.