05 February 2016

Unitary Patent: UPC's Power to Amend

Venetian Patent Act 1474
Source Wikipedia

















Yesterday I presented a talk on the unitary patent and the Unified Patent Court. I had a good audience which included some familiar faces as well as several new ones. At the end of the talk I took questions and one of them was on the Court's power to amend.  I was able to answer the question from memory but I could not give chapter and verse and promised to do so in this blog.

As I said yesterday, the starting point is the European Patent Convention art 138 (3) of which provides:
"In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings."
The competent court in actions or counterclaims for revocation of unitary or other European patents will be the Unified Patent Court (see art 65 (1) of the UPC Agreement).  Art 65 (3) of the agreement provides:
"Without prejudice to Article 138(3) of the EPC, if the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part."
The draft Rules of Procedure that have been prepared by the Preparatory Committee to which I referred yesterday provide for an application to amend to be pleaded in a reply and defence to counterclaim for revocation (rule 12 (3) (a) or in a defence to an action for revocation (rule 43 (2) (a)).

Rule 29 (a) requires a claimant to lodge an application to amend his or her patent within 2 months of service of a defence that includes a counterclaim for revocation together with the defence to that counterclaim.

An application to amend the patent must contain the following particulars (see rule 30):
"(a) the proposed amendments of the claims of the patent concerned and/or specification, including where applicable and appropriate one or more alternative sets of claims (auxiliary requests), in the language in which the patent was granted; where the language of the proceedings [Rule 14.3] is not the language in which the patent was granted, the proprietor shall lodge a translation of the proposed amendments in the language of the proceedings, and where the patent is a European patent with unitary effect in the language of the defendant’s domicile in a Member State of the EU or of the place of the alleged infringement or threatened infringement in a Contracting Member State if so requested by the defendant;
(b) an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid and, if applicable, why they are infringed; and
(c) an indication whether the proposals are conditional or unconditional;  the proposed amendments, if conditional, must be reasonable in number in the circumstances of the case."
Rule 50 (2) makes a similar provision where the application to amend is made in a defence to a a claim for revocation.

If an application to amend the patent is lodged, rule 12 (4) requires the defendant to lodge a defence the application to amend the patent in his or her reply to the defence to the counterclaim. The proprietor  may lodge a reply to the defence to the application to amend and the defendant may lodge a rejoinder to such reply. The defence to an application to amend the patent must be served within 2 months (rule 32 (1)).  There are similar requirements in rule 43 (3) where the application to amend is made in a defence to a claim for revocation.   

In his or her defence to an application to amend the defendant must state whether he or she opposes the application and, if so, why.  He or she may do so on the grounds that:
(a) the proposed amendments are not allowable; and
(b) the patent cannot be maintained as requested.
The proprietor may lodge a reply to the defence to the application to amend the patent within 1 month of service of the defence and the defendant may within one month of the service of the reply lodge a rejoinder. The rejoinder shall be limited to the matters raised in the reply (see rule 32 (3)).

The application to amend will follow the procedure set out in art 52 of the UPC Agreement.  An interim and possibly oral procedure will follow the written procedure mentioned above. Evidence will be taken in accordance with art 53.

The language of art 65 (3) of the UPC Agreement is very different from s.75 (1) of the Patents Act 1977 which confers a discretion  on the Court or Comptroller when dealing with a patent application albeit one that has been modified by s,75 (5) (see Zipher Ltd v Markem Systems Ltd and Another  [2008] EWHC 1379 (Pat), [2009] FSR 1). There does not seem to be any scope under the Agreement for an objection  based on covetousness as used to be the case in England.

I hope I have answered that question comprehensively.   If anyone wants to discuss this article or indeed the UPC or unitary patent in general he or she should call me on 020 7404 5252 during office hours or message me through my contact form.

Further Reading

Date
Author
Title
Source

Preparatory Committee
UPC website
23 Jan 2016
Jane Lambert
NIPC Law
23 Jan 2016
Jane Lambert
NIPC Inventors
26 Jan 2016
Jane Lambert
IP North West

24 January 2016

Caspian Pizza Ltd and Others v Shah and Another




















The sign that appears above is registered as a trade mark for
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared meals; soups and potato crisps; canned foodstuffs; pizza toppings; preparations for making pizza toppings; dried preparations for use as pizza toppings; ingredients for making pizzas
in class 29 in the name of Caspian Holding Franchise Limited under trade mark number 2,559,245 with effect from 21 Sept 2010. Until 12 Jan 2016 it had been registered to Behzad Zarandi (Mr Zarandi") and Nadar Zand ("Mr Zand").

Until that date Mr Zarandi and Mr Zand also owned UK trade mark number 2,396,396 whereby the word CASPIAN had been registered for restaurant services, take-away food services and catering in services in class 43 with effect from 8 July 2005.

Caspian Pizza Ltd. ("CP") run a chain of pizza restaurants in and around Birmingham which is a business that Mr Zarandi claims to have started in 1991. He was joined in that business by his brother in law, Mr Zand, in 2011. Mr Zarandi and Mr Zand transferred their business to CP in 2012 though they continued to hold the trade marks.  By a licence agreement dated 7 Aug 2012 they licensed the company to use their trade marks.

A Mr Makseen Shah ("Mr Shah") had run similar restaurants in Worcester also called CASPIAN since about 2002 but the premises from which he operated that business had been let to a company called Porcelain Ltd. which now ran the business. There had been negotiations and dealings between Mr Shah and Mr Zarandi over the years which Messrs Zarandi and Zand claimed to have crystallized into a franchise agreement but that was denied by Mr Shah.

In  Caspian Pizza Ltd and Others v Shah and Another [2015] EWHC 3567 (IPEC) (9 Dec 2015) Messsts Zarandi and Zand and their company sued Mr Shah and the company that let the Worcester restaurant to Porcelain for trade mark infringement and passing off.  The defendants denied infringement on the ground inter alia that they had an earlier right under s.11 (3) of the Trade Marks Act 1994 and counterclaimed for revocation or invalidation of the trade marks on grounds of lack of genuine use, bad faith under s.3 (6), an earlier right under s.5 (4) (a) or that the use of the mark was prevented by copyright under s.5 (4) (b).

The action and counterclaim came on for trial before Judge Hacon on 26 and 27 Oct 2015 and he delivered judgment on 9 Dec 2015.  In his judgment he dismissed the claims for trade mark infringement and passing off and held that the word mark but not the device mark had been invalidly registered (see paragraph [83]).

The claimants had pleaded that Mr Shah had entered the franchise agreement with them in about 2008, that he had failed to pay the royalties due under that agreement and that they had terminated his franchise and licence to use the device and word marks for his restaurants but they abandoned that case at trial.  The judge found that Mr Shah had operated a restaurant under the CASPIAN name in Worcester since 2002 and that the goodwill generated by that operation would have been sufficient to found an action in passing off to prevent parties other than Mr Shah from conducting a pizza business under that name in Worcester.  That constituted an "earlier right" under s.11 (3).  As the claimants had no alternative case in the event of a finding that there had been no franchise agreement it followed that the claim for trade mark infringement failed.  

Although the judge noted at paragraph [11] of his judgment that the claimants' counsel had conceded that his case for passing off was unlikely to succeed if his claim for trade mark infringement failed His Honour considered at paragraph [34] the geographical extent of their goodwill. Finding that their restaurants were small outlets with a local clientèle he concluded that their goodwill associated with the CASPIAN sign never stretched as far as Worcester.   Consequently, there could be no claim for passing off.

The judge added at paragraph [48] that even if the business operated from the Worcester premises had infringed the registered trade marks and there had been an action for passing off neither Mr Shah nor his company would have been liable for the infringements or acts of passing off as they had divested themselves of the business by the start of the action.

Having dealt with the claim Judge Hacon considered the counterclaim for revocation of the marks or declaration of invalidity. Relying on Mr Allan James's decision in Re Sworders, West v Hudson BL O/212/06 (28 July 2006) the judge held that Mr Shah could have prevented the registration of the word mark under s.5 (4) of the Trade Marks Act 1994 and that he therefore had an "earlier right" within the meaning of s.47 (2) (b). However, there was no evidence of an earlier right in respect of the device mark.

As for the remaining defences, Mr Shah admitted in cross-examination that the CASPIAN trade mark had been used between 2005 and 2014 (see para [59]), there was no real evidence of registration in bad faith (paras [60] to [61]) and there was no evidence as to who owned copyright in the running chef illustration in the device mark.

The most interesting parts of the judgment concerned the s. 11 (3) defence to the claim for trade mark infringement and the counterclaim for a declaration of invalidity in respect of the word mark. Both arose out of Mr Shah's operation of his pizza business in Worcester between 2002 and 2004.

S.11 (3) of the Trade Marks Act 1994 defines "earlier right" for the purpose of that subsection as follows:
"For this purpose an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of—
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his;
and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off)."
As Mr Zarandi had given unchallenged evidence that he had started his pizza restaurant business in Birmingham in 1991 which was long before Mr Shah began his in Worcester the judge acknowledged at para [530] that  "[o]n a straightforward reading of s.11(3), particularly sub-paragraph (a), the defendants have no defence under that subsection."


However His Honour was not sure that is right because s. 11 (3) must be interpreted in a manner consistent with art.6 (2) of the Trade Mark Directive which provides as follows:
"The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised."
According to the judge the draftsman of s.11 (3) appears to have elaborated on art. 6 (2). Referring to Mr Justice Jacob' decision in British Sugar plc v James Robertson & Sons Ltd [1996] R.P.C. 281, at 292; Lord Nicholls of Birkenhead's speech in R. v Johnson : [2003] FSR 42, (2003) 167 JP 281, (2003) 167 JPN 453, [2003] 3 All ER 884, [2004] ETMR 2, [2003] 1 WLR 1736, [2003] HRLR 25, [2003] UKHRR 1239, [2003] 2 Cr App Rep 33, [2003] 2 Cr App R 33, [2003] WLR 1736, [2003] UKHL 28, at [30] and the judgment of the European Court of Justice in Budejovicky Budvar v Anheuser-Busch Inc  [2012] RPC 11, [2012] ETMR 2, [2011] EUECJ C-482/09, [2012] Bus LR 298 he concluded: "What matters is the language of the Directive". He could speculate as to how s.11 (3)(a) should be notionally reworded so as to arrive at a correct interpretation, but in his view was that it is better to ignore it and focus on art 6 (2).  On that basis Judge Hacon reached the view at para [56] that art.6 (2) provided the defendants with a defence.

I have to say that I am not entirely persuaded by the learned judge's reasoning on that point. Art 6 (2) refers to "the laws of the Member State in question" but it does not prescribe what those laws should be. That is surely the job of the national legislatures and there seems to me to be no reason why the statute that implements the Directive should not define "the earlier right" applying to the particular locality to which art 6 (2) refers.

Equally courageous was the judge's preference for a decision of a hearing officer in Sworders over that of his illustrious predecessor in the later case of Redd Solicitors LLP v Red Legal Ltd and Another [2012] EWPCC 54; [2013] E.T.M.R. 13. In that case His Honour Judge Birss QC (as he then was) found that an earlier right which afforded a defence to infringement of a trade mark under s.11 (3) did not afford a ground for invalidity under s.5 (4) (a). Noting at para [67] that Judge Birss had not been referred to Sworders he declined to follow Redd on the following grounds:
"I think the difficulty with the approach to s.5(4)(a) taken in Redd may be that the resolution of the conflicting rights of parties using the same trade mark in different localities would come to depend arbitrarily on which party first gets to the tape of making an application to register the mark. Party A may have the more geographically widespread business and a greater legitimate expectation of expanding further. Party B, using the same trade name in another part of the UK, may be satisfied with a business limited to a relatively small locality. But if party B applies for a trade mark first then following Redd there would be nothing that Party A could do about it, save rely on its 'earlier right' to provide a defence to infringement under s.11(3), a defence strictly limited in geographical scope. The approach in SWORDERS is more likely to give the tribunal the opportunity, where possible and appropriate, to set a fair territorial limit to the trade mark right or rights granted. I therefore prefer the approach to s.5(4)(a)/art.4(4)(b) in SWORDERS."
Judge Hacon's argument on this point is attractive and I can see its force particularly as s.47 (2) (b) refers to the conditions in s.5 (4).  It would be anomalous if the same facts could found a defence to a trade mark infringement but not invalidate the trade mark in the absence of a disclaimer.   It will be interesting to see whether Caspian Pizza will be followed and, more importantly, endorsed on appeal.

Should anyone wish to discuss this case, earlier rights under s.5 (4) or s.47 (2) (b) or trade marks and passing off in general, he or she should not hesitate to call me on 020 7404 5252 during office hours or message me using my contact form.

23 January 2016

Preparing for the Unified Patent Court


Site of the London Section and UK Division of the Unified Patent Court

On 28 Jan 2016 I shall give a talk to the CIPA Merseyside Meeting entitled Preparing for the UPC. I will give another presentation in my chambers on 4 Feb 2016 entitled Unitary Patent and Unified Patent Court. The reason I shall give those talks is that the Unified Patent Court ("the UPC") is likely to come into being in the next few months which will in turn enable the European Patent Office to grant its first European patents with unitary effect ("unitary patents") for the territories of those countries that ratify the Agreement on a Unified Patent Court of 19 Feb 2013 ("the UPC Agreement"),

When will the UPC come into being?

Art 89 (1) of the UPC Agreement provides that it will come into force:
"on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest."
So far, nine countries have notified their ratification or accession to the UPC Agreement including France, which is one the three member states with the highest number of European patents in force in 2012 (see the ratification details page on the Council website). The United Kingdom, another of the three, has passed primary legislation to enable the UK to ratify the agreement (see s.17 of the Intellectual Property Act 2014). The government has recently responded to to replies to a Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent (see Government Response to the Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent of 14 Jan 2016). It has also taken a lease to space in Aldgate Tower for the London section of the Central Division and the British Division of the Court of First Instance. Germany, the last of the three, is thought likely to ratify the UPC Agreement in September (see the interview of Wouter Pors of Bird & Bird by the Kluwer UPC News blogger on January 4, 2016, 2016: Countdown to the start of the Unified Patent Court Kluwer Patent Blog).

Effect of the Unitary Patent and the UPC

For many years the cost of patent prosecution in Europe has been considerably higher than in the USA or Japan (see Cost of Patents: EPO Report tells us what most of us already knew 23 Dec 2005 NIPC Inventors' Club) and the cost of enforcement in the UK higher still.  In Why IP Yorkshire I wrote:
"According to the British government's own (but now disbanded) Intellectual Property Advisory Committee, it can cost over £1 million for an infringement action in the Patents Court and even £150,000 to £250,000 for the Patents County Court compared to no more than €50,000 in France, Germany and the Netherlands (see the table at page 50 of IPAC "The Enforcement of Patent Rights" published on 18 Nov 2003)."
There has been progress with the London Agreement (Agreement on the application of Article 65 of the Convention on the Grant of European Patents) Official Journal EPO 12/2001 550, the new Patent County Court Rules and the introduction of the Small Claims Track but patent protection in Europe is still significantly more expensive than in the USA and Japan and patent litigation in the UK more expensive than in most of the rest of Europe. The unitary patent should reduce considerably prosecution and maintenance costs in Europe and the UPC will level the playing field for British litigants. That is why Hargreaves urged the UK to "attach the highest immediate priority to achieving a unified EU patent court and EU patent system, which promises significant economic benefits to UK business" (page 25 of Digital Opportunity A Review of Intellectual Property and Growth May 2011).

What is the UPC?

The UPC is neither a European Union court like the Court of Justice of the European Union nor a national court like the Patents Court or the Intellectual Property Enterprise Court but a legal hybrid.  It is a self-contained legal system with its own substantive and procedural law shared by the EU member states that ratify the UPC Agreement. Immediately it will share jurisdiction with national courts over infringement and revocation claims relating to European patents designating individual countries and exclusive jurisdiction over such claims relating to European patents having unitary effect. Eventually it will have exclusive jurisdiction over infringement and revocation claims relating to all European patents leaving national courts only with jurisdiction over national patents and property and other ancillary issues relating to European patents. The UPC will consist of a Court of Appeal and Registry in Luxembourg and a Court of First Instance with its seat in Paris and sections in London and Munich and local and regional divisions elsewhere in the contracting member states.

Substantive Law

In addition to the European Patent Convention, much of which is already imported into the laws of the constituent parts of the United Kingdom by the Patents Act 1977, the states that ratify the UPC Agreement become bound by Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 31.12.2012 L 361/1)Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (OJ 31.12.2012 L 361/89) and of course the UPC Agreement.

The Regulations set out the framework for the substantive law and the UPC Agreement fills in the details. For instance, art 5 (1) of Regulation 1256/2012 provides:
"The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations."
That provision is supplemented by art 25 of the UPC Agreement:
"A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent."
The following articles prohibit indirect infringement and provide for limitations and exceptions to the monopoly.

Procedure

The UPC Agreement outlines the procedure, the composition of the judiciary and the remedies and these are supplemented by a comprehensive set of Rules of Procedure which have been drafted by a Preparatory Committee of representatives of all the contracting EU member states. Those Rules are likely to be submitted for public consultation shortly. Interestingly art 71 (1) of the UPC Agreement provides for legal aid for natural persons who are unable to meet the costs of proceedings, either wholly or in part.  As I helped to set up, and chaired, the Leeds, Liverpool and Sheffield inventors groups for many years I shall be taking a close interest in that provision and its implementation in the Rules of Procedure. It is also a consideration for patentees when considering an opt-out.

Further Information

This is the first of a series of articles that I shall be writing on the unitary patent and UPC over the next few weeks.   If anyone wishes to attend my presentation on 4 Feb 2016 or obtain a copy of my slides and handout afterwards, he or she should call Steve Newbery on 020 7404 5252 or email my clerks.

Further Reading

Date
Author
Title
Source

Preparatory Committee
UPC website
23 Jan 2016
Jane Lambert
NIPC Inventors
26 Jan 2016
Jane Lambert
IP North West
5 Feb 2016
Jane Lambert
NIPC Law

09 December 2015

The Importance of Keeping Promises: Warner-Lambert Company LLC v Sandoz GmbH and Others

Rolls Building

















In Swiss Style Claims: Warner-Lambert Companv Actavis 25 Jan 2015 I explained that Warner-Lambert LLC had a patent for a drug called pregabalin for treating epilepsy and GAD (generalized anxiety disorder). That patent expired in 2013 although the monopoly was extended for a short time by a supplementary protection certificate which has now lapsed. Warner-Lambert discovered a new use for pregabalin in the treatment of neuropathic pain for which it was granted a new patent. Actavis sought the revocation of the new patent on grounds of obviousness and insufficiency and applied for permission to market pregabalin for the treatment of epilepsy and GAD. The case that I discussed in my case note was an unsuccessful attempt by Warner-Lambert to impose conditions on the sale of pregabilin in the UK (see Warner -Lambert Company, LLC v Actavis Group Ptc EHF and others [2015] EWHC 72 (Pat)).

The action came on for trial before Mr Justice Arnold in  Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) (10 Sept 2015) which I discussed in The Pregabalin Trial: Generics (UK) Ltd v Warner-Lambert Company LLC on 18 Sept 2015. In his judgment Mr Justice Arnold held that certain claims of the new patent were invalid for insufficiency, that the patent had not been infringed and that Warner-Lambert's parent company Pfizer had made groundless threats.  The learned judge gave Warner-Lambert permission to appeal and suspended revocation of the invalidated claims pending the hearing of the appeal.

Sandoz GmbH and its subsidiary Sandoz Ltd ("the Sandoz companies") are part of a large group of companies ("Sandoz") that supply generic pharmaceuticals.  After the patent for the original use of pregabalin had expired and the supplementary protection certificate had lapsed, Sandoz applied to the European Medicines Agency for authorization to market the product for both its original use and its new use. Warner-Lambert's solicitors wrote to Sandoz in December 2014 warning that they considered that the sale of the product even for the original use might infringe their patent. Sandoz replied with a promise to give Warner-Lambert at least 7 days notice before launching pregabalin on the British market.  In June 2015 Sandoz advised Warner-Lambert that it would supply the product for all uses if it "received confirmation from the High Court that the second patent is invalid". Following judgment in the Pregabalin trial Sandoz decided to launch preabalin for all uses and delivered a large consignment of packs of the medicine to the retailer Lloyd's Pharmacy Ltd ("Lloyds") without first notifying Warner-Lambert or its solicitors.

As soon as it learned that Sandoz had started to market pregabalin for all uses, Warner-Lambert applied by telephone to Mr Justice Birss for an order restraining further distribution of the product over the hearing of its application for interim injunctions until trial. That judge granted an injunction over the hearing of the application and ordered the Sandoz companies to provide information including the names of any third party to which they might have delivered the pharmaceutical and whether there was any provision for recall or return of the product.  The telephone application had been made upon informal notice to the Sandoz companies (what used to be know as "an ex parte application with notice") and there was a further hearing before Mr Justice Birss a few days later at which both parties were represented by leading counsel. Upon Sandoz's disclosing that it had supplied the drug to Lloyds, Warner-Lambert joined that retailer as a third defendant. The relief sought by Warner-Lambert was for (1) an interim injunction to restrain the Sandoz companies from infringing the patent for the second medical use by dealing in a generic pregabalin product for pain relief and (2) an interim injunction requiring Lloyds to refrain from dispensing the quantities of pregabalin in its possession. The judge ordered the application to be heard as an application by order, extended the injunctions that he had already granted and gave the usual directions for the exchange of witness statements and exhibits.

The application by order came on before Mr Justice Arnold in Warner-Lambert Company LLC v Sandoz GmbH and Others [2015] EWHC 3153 (Pat) (4 Nov 2015). Even though he had decided that several claims of the patent were invalid in the Pregabalin trial and had denied rather less extensive injunctive relief to the same claimant almost a year earlier the judge granted the injunctions sought against the Sandoz companies [paragraph [103]] and Lloyds [paragraph 118].

In his judgment in the hearing before him (Warner-Lambert Company LLC v Sandoz GmbH and Another, [2015] EWHC 2919 (Pat) )Mr Justice Birss said:
"24. … What is manifest in my judgment is that this is a matter which should have been dealt with by Lloyds and Sandoz and AAH giving proper notice to Warner-Lambert and the whole matter could have been resolved in an orderly fashion. To have taken the course they have taken by attempting to shift such a large volume of material in such a short space of time, Sandoz, AAH and Lloyds only have themselves to blame.
25. The court's task in a situation like this is to hold the ring as best one can in order that the dispute can be resolved in an orderly and proper fashion. By taking the course they have taken, Sandoz, AAH and Lloyds have made it as difficult as they could to allow that to take place. It would be entirely right that I should make the order sought and I will do so, subject to [joinder of Lloyds as a party to the proceedings]"
Mr Justice Arnold endorsed those observations and added at paragraph [48] of his own judgment:
"The Patents Court expects litigants in patent disputes before it to behave responsibly to enable disputes to be resolved in an orderly manner. That generally entails the giving of prior notice in circumstances such as these. As the history related above demonstrates, the Patents Court will not hesitate to use its powers, and in particular its powers to grant urgent interim relief, to attempt to ensure that parties who try to steal a march on other parties and thereby present the Court with a fait accompli do not benefit from such conduct."
However, his lordship also said:
"While I have thought it right to endorse Birss J's observations with respect to the failure of Sandoz, AAH and Lloyds to give Warner-Lambert prior notice of their intended launch of the Sandoz Full Label Product, I should make it clear that in my judgment that failure has relatively little bearing on Warner-Lambert's present application."
The judge also commented on an inaccuracy in the Sanders companies' head of retail's witness statement on whether the goods that had been delivered to Lloyds could be recalled or returned although he added that it had very little bearing on the application before him.

The Sandoz companies had two excuses for their conduct. The first was that Mr Justice Arnold's decision in the Pregabalin trial was tantamount to invalidation of the patent in suit. The second was that  some pharmacies are not willing to stock and dispense skinny label generic pregabalin products, but are willing to stock and dispense a full label generic pregabalin product. Although the only specific evidence on this point came from Lloyds, it appeared that Boots, Well and some other pharmacies took the same view.

It is perhaps worth explaining here what is meant by the terms "skinny label" and "full label". Under Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001on the Community code relating to medicinal products for human use(OJ L 311, 28.11.2001, p. 67) companies that wish to supply pharmaceutical products must supply certain information about the drug which is known as "the label". Where a generic product is supplied for some uses but not others the supplier need provide information only in respect of the uses for which the product is marketed. Such information is known as "the skinny label".

Mr Justice Arnold was not persuaded by either excuse.  As to the first he said at paragraph [39]:
"any competent English patent lawyer would know that:
i) Warner-Lambert V would be likely to be the subject of an appeal, provided permission to appeal was granted by either the Patents Court or the Court of Appeal;
ii) an order for revocation is ordinarily stayed pending appeal, or at least pending an application to the Court of Appeal for permission to appeal if the Patents Court has refused permission to appeal; and
iii) in any event, the Patent was found partially valid with respect to a number of pain indications."
As to the second he made the following observations at paragraph [63]:
"First, many other pharmacies are stocking and dispensing skinny label generic pregabalin products. Secondly, it is not clear to me that Lloyds has taken into account the fact that the SmPC and PIL for skinny label generic pregabalin products can and do include warnings as to adverse events when pregabalin is taken for the treatment of neuropathic pain (see Warner-Lambert V at [443]). Furthermore, at least in the case of Actavis' skinny label product, the PIL also includes the so-called "blue box" wording about prescription of the product for the treatment of conditions not listed in the PIL (see Warner-Lambert V at [444]-[447]). Thirdly, I find it difficult to see why Lloyds should be blamed if the pharmacist on duty does not know what indication pregabalin has been prescribed for. As one would expect, Mr Howard makes it clear in his evidence that Lloyds strives to ensure that, if the pharmacist does know, then the appropriate product is dispensed."
His lordship then considered the merits of the application in accordance with the principles expounded by Lord Hoffman in paragraphs [16] to [20] of the Privy Council's judgment in  National Commercial Bank Jamaica Ltd v. Olint Corp Ltd (Jamaica) [2009] WLR 1405, [2009] UKPC 16, [2009] 1 CLC 637, [2009] 1 WLR 1405, [2009] Bus LR 1110. "The key point" in Mr Justice Arnold's view "is that the court should adopt whichever course seems likely to cause the least irremediable prejudice to one party or the other." Notwithstanding his own judgment in the Pregabalin trial he held that there was a serious issue to be tried in that the appeal might be successful or the patent might be saved by amendment.  In weighing the risk of injustice against the Sandoz companies he said at paragraph [103]:
"In my judgment, granting the relief sought by Warner-Lambert would create a lesser risk of irremediable harm than refusing it. This is for two main reasons. First, I consider that there is a greater risk of Warner-Lambert suffering unquantifiable and irremediable loss if an injunction is refused than there is of Sandoz suffering unquantifiable and irremediable loss if an injunction is granted. Secondly, I consider that there is a strong case for preservation of the status quo pending trial (or the decision of the Court of Appeal, if that is available sooner). If no injunction is granted, the arrival of full label generic pregabalin on the market will make it significantly more difficult for the Court to ensure appropriate compensation of those parties which it is finally determined merit compensation."
As for the risk of injustice against Lloyds he concluded that "the  balance of the risk of injustice comes down in favour of the grant of an injunction against Lloyds for the reasons explained above."

Would the outcome have been different had the Sandoz companies given Warner-Lambert 7 days notice of their intention to market full label pregabalin as they had promised at one point? Mr Justice Arnold said that it had very little bearing on his decision but that begs the question why he mentioned the point in his judgment. It would certainly have saved the parties the costs of the without notice application before Mr Justice Birss and it might have induced Mr Justice Arnold to consider the defendants' arguments more sympathetically. The decision whether or not to grant an interim injunction is an exercise of judicial discretion and it certainly does no harm at all to be on the right side of the tribunal.

Should anyone wish to discuss this case note, interim injunctions or patent law in general call me on 020 7404 5252 during office hours or send me a message on my contact form.

28 November 2015

Defending your Domain Name in the UDRP

Partial View of the Internet
Author The Opte Project
Source Wikipedia
Creative Commons Licence



























Whenever you apply to register, or to renew the registration of, a generic top level domain name such as one ending in ".com", ".org" or ".biz" you represent and warrant to the registrar that:
(a) the statements that you make in your agreement with the registrar are complete and accurate;
(b) the registration of the domain name will not to your knowledge, infringe upon or otherwise violate the rights of any third party;
(c) you are not registering the domain name for an unlawful purpose; and
(d) you will not knowingly use the domain name in violation of any applicable laws or regulations.
It is your responsibility and not the registrar's to determine whether your domain name registration infringes or violates someone else's rights.

What Rights might be violated or infringed?

These are usually registered trade marks and the rights to bring an action for passing off or equivalent cause of action in other legal systems. 

Trade marks do not exist in a vacuum but are registered with a national or intergovernmental trade marks registry for specified goods or services. The trade marks registry for the United Kingdom is the Intellectual Property Office in Newport. It is also possible to register a trade mark for the whole of the European Union at OHIM (the Office for Harmonization in the Internal Market) in Alicante. The US Patent and Trademark Office ("USPTO") is the trade marks registry for the United States of America. You can find the websites or other contact details of almost every trade marks registry in the world from the member states page of the World Intellectual Property Organization ("WIPO") the UN specialist agency for intellectual property.

In most countries of the world a trade mark is infringed if you use a sign that is the same or similar to a registered trade mark in respect of goods or services that are the same or similar to those for which the mark is registered. However, there are some marks that are so well known that their use in respect of any type of goods or services could amount to an infringement. Examples that spring to mind include Rolls Royce and Microsoft.

"Passing off" is misrepresenting one supplier's business or its goods or services as those of another by the use of the same or similar trade name, trade mark or other get-up. In some other countries it is called "unfair competition" or "concurrence déloyale" but it amounts to very much the same thing.  A complainant has to prove that he or she has goodwill or a reputation in the market place in relation to goods or services by reference to a trade mark, trade name or other other get-up, that someone has used or threatens to use a similar name, mark or get-up that has induced or is likely to induce the complainant's customers to do business with the other party in the mistaken belief that they are dealing with the complainant.

How to you find out whether you are infringing or violating the Rights of a Third Party

Most trade mark registries have searchable databases  that can be searched by members of the public. In addition, the WIPO keeps a database of trade marks that are registered or sought to be registered for more than one country. There is probably a duty to make a search of your own and perhaps other leading trade mark registries' databases. In respect of well-known marks or marks with a reputation you will probably know of them from everyday experience. 

It is important to stress that the registration of a domain name that is the same or similar to a registered trade mark is not necessarily an infringement or violation of a third party's rights. Some trade marks can be registered quite legitimately by different entities for different goods and services. Lloyds, for example, is the name of a clearing bank, a corporation of insurers and a chain of pharmacies in then UK. Each of those businesses is entitled to register a domain name that includes the name Lloyd.

What happens if you infringe or violate the Rights of a Third Party?

Clause 3 of your registration agreement reserves the right for the registrar to cancel, transfer or make changes to your domain name registration in certain circumstances. These include an order of a court or arbitrator or a decision of an administrative panel in an administrative proceeding under the UDRP (Uniform Domain-Name Dispute-Resolution Policy)

The UDRP

Paragraph 4 (a) of your registration agreement provides:
"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure,
that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
A "mandatory administrative proceeding" is a form of alternative dispute resolution ("ADR") provided by one of five dispute resolution service providers. One of those service providers is the WIPO.  It is a documents only adjudication before one or three panellists who must decide whether the three elements listed above are present. If they find that they are they must order the cancellation of your domain name or its transfer to the complainant. Most of the panellists are intellectual property lawyers or patent and trade mark attorneys. You can find out more about the process from my Introduction to Domain Name Dispute Resolution 21 Nov 2015.

How will you know if you have to respond?

Some complainants or their lawyers or other representatives send letters before claim to intended respondents but for many the first inkling of a complaint will be a COMPLAINT TRANSMITTAL COVERSHEET similar to the one that can be downloaded here.  If you get one of these forms you must move very quickly for you have only 20 days in which to respond.

Essential Reading

If you are not familiar with the UDRP you should read the following documents carefully:
As I explained above there are five domain name dispute resolution service providers to which you can take your dispute and they all have their own rules of procedure which supplement the UDRP and the Rules. It is the complainant who chooses the service provider. Whichever service provider is chosen, you should also read the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), its Domain Name Dispute Resolution Resources and in particular its Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

Two or three Member Panel

Unless the complainant has asked for the complaint to be decided by a 3 member panel you must consider whether you want the case to go before a single panellist or a 3 member panel.  If you choose a 3 member panel you are entitled to suggest 3 names on the dispute resolution service provider's list from which one will be chosen. On the other hand, you must bear one half the costs of the proceeding.  You do not have to pay anything if you are content for the case to go before a single panellist.

Completing your Response

Your response should be on the model form prescribed by the dispute resolution service provider. For example you can download WIPO's model response from the WIPO's UDRP Model Response and Filing Guidelines page or complete it on-line.

Your best chance of defeating a claim for the transfer or cancellation of your domain name lies in your showing that you have rights or legitimate interests in the domain name.  The best evidence of rights or legitimate interests is a trade mark registration anywhere in the world that is the same as, or similar to. the domain name. If you have a registration certificate you should produce a facsimile or at least a printout of the particulars of registration from the relevant trade marks registry. A corporate name that is the same or similar to the domain name is almost as good provided that you did not adopt the name after the dispute arose. The best evidence is your certificate of incorporation.

Paragraph 4 (c) of the UDRP lists a number of circumstances which if found to be present may show that you have rights or legitimate interests in the disputed domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
If any of those  circumstances or if any similar circumstance applies, it is up to you to produce evidence of it. The complainant does not have to prove a negative. All he or she needs to do is to assert that the complainant never licensed or authorized you to register the domain name and that none of the circumstances in paragraph 4 (c) applies.

Complainants are assisted by paragraph 4 (b) which provides that the following circumstances shall be evidence of registration and use in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Such evidence is not conclusive and if you can rebut the evidence or explain the circumstances then you should do so.

You should be careful to avoid unnecessary citation and prolixity. Noting irritates a panellist more than having his or her time wasted and repetition and case references on obvious points are very annoying.

Challenging a Decision

If the decision goes against you then you may be able to suspend its implementation by launching proceedings in the courts of the jurisdiction to which the complainant has submitted. However, you have ti be quick because the registrar will wait only 10 business days before implementing the panel's decision. For advice on how to challenge a UDRP decision see my article How to challenge a UDRP Decision 25 Oct 2015.4-5 IP.

Conclusion

Should you wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours or message me through my contact form.

Patents - Infringement and Revocation: Glass and others v Freysinnet Ltd.




In Glass and Others v  Freyssinet Ltd [2015] EWHC 2972 (IPEC) the inventors of a treatment process for concrete sued Freysinnet Ltd. ("Freysinnet") for infringement of their patent in the Intellectual Property Enterprise Court. Freysinnet counterclaimed for revocation of the patent on grounds of anticipation and obviousness. The action and counterclaim came on before His Honour Judge Hacon.

The Invention

The technical problem that the patented invention addressed was summarized by Judge Hacon at paragraph [3] of his judgment:
"Reinforced concrete is concrete containing bars made from another material, usually steel, which confer added strength (known as 'rebars'). The strength in compression of the concrete is complemented by the higher tensile strength and ductility of steel. Calcium hydroxide and alkaline salts within the concrete combine to create an iron oxide film on the surface of the steel which protects it from corrosion. That film may be broken down, typically by atmospheric carbon dioxide or carbon dioxide dissolving in rain water, creating carbonic acid, which enters the pores of the concrete and reacts with the iron oxide layer. Alternatively chloride ions from de-icing salts or seawater may destabilise the layer. Corrosion of the steel is then liable to occur. Rust created by corrosion occupies a volume greater than the steel it replaces, creating an expansive force which leads to cracking and spalling (surface failure leading to flaking) of the concrete. The structural capacity of the concrete accordingly suffers. In addition the cracks allow further ingress of water, accelerating the deterioration."
A number of solutions were known at the time of the application for the patent, one of which was cathodic protection whereby an electrochemical cell is created within the concrete in which the rebar acts as a cathode and thereby inhibits corrosion.  Two types of electrochemical cells were known. In one a direct current is used to create an impressed current. An anode is located in the concrete and connected to the positive terminal of the current supply. The rebars are connected to the negative terminal so that they become cathodes. The concrete serves as the electrolyte. This is known as an impressed current cathodicrprotection system. The other relies on the difference in electrode potential between metals. Where, for instance, zinc and steel are electrically connected and both contained in an electrolyte, an electrochemical potential is created between them so that current will flow. The zinc will form the anode and the steel the cathode. The zinc anode will then corrode preferentially. The zinc forms what is known as a sacrificial or galvanic anode. The metal to be protected must be less electrochemically active than the metal which is to be sacrificed. Using the traditional language of chemists, it must be a more 'noble' metal than that of the sacrificial anode. That arrangement is known as a sacrificial or galvanic cathodic protection system.

The patented invention was a hybrid system for protecting steel rebars in reinforced concrete, combining the impressed current and sacrificial anode techniques. There is an initial impressed current phase in which an external source of direct current is used with the steel serving as the cathode and another less noble metal as the anode. This is followed by a longer sacrificial phase in which the external current potential is no longer applied but the difference in electrode potential between the metals sets up a flow of a current and, thus, a sacrificial system to protect the steel.

The Disputed Claims

The claims  alleged to have been infringed were as follows:
"Claim 1: A method of protecting steel in concrete comprising an initial temporary high impressed current electrochemical treatment using a source of DC power to improve the environment at the steel followed by a long term low current preventative treatment to inhibit steel corrosion initiation where the same anode is used in both treatments and the anode at least in part consists of a sacrificial metal that undergoes sacrificial metal dissolution as its main anodic reaction and the anode is embedded in a porous material in contact with the concrete."
and 
"Claim 12: A method as claimed in claim 11 where the sacrificial metal is formed around an inert impressed current anode."
Freysinnet alleged that claim 12 lacked novelty but not claim 1. However, it contended that both claims were obvious having regard to the prior art.

Prior Art

Freyssinet  cited UK Patent Application No. 2 239 591 ("Fosroc 1"), PCT Application, publication no. WO 00/26439 ("Fosroc 2"), PCT Application, publication no. WO 01/71063 A1 ("Enser") and common general knowledge in support of its counterclaim.

Anticipation

The judge said at paragraph [40] that
"The prior art must both (a) disclose subject-matter which, if performed, would necessarily result in an infringement of the patent and (b) enable the invention in the sense that the skilled person would have been able to perform the invention, see Smithkline Beecham plc's (Paroxetine Methanesulfonate) Patent  [2005] UKHL 59, [2006] 1 All ER 685, [2006] RPC 10."
It is not enough to show that the patented invention was anticipated in a mosaic of previous inventions although that may be relevant to a claim that the invention lacked an inventive step.  An issue in this case was whether any of the previous inventions actually disclosed the patented invention.  As His Honour put it at [41]:
"A point of law which arises in the present case concerns what one of the cited items of the prior art discloses. Specifically, to what extent are alternative disclosures listed in, or otherwise derivable from, a single item of prior art each separately disclosed for the purposes of the law on novelty?"
After referring to Mr Justice Pumfrey's decision in Ranbaxy UK Ltd and another v Warner-Lambert Company [2005] EWHC 2142 (Pat), (2006) 29(1) IPD 29005, [2005] EWHC 2142 (Patents), [2006] FSR 14 which I noted in IP Case Law Update - Patents: Ranbaxy UK Ltd and another v Warner-Lambert Co. [2005] EWHC 2142 (Patents) (12 Oct 2005) 13 Oct 2005 Judge Hacon said at paragraph [49]:
"I think that an important criterion in determining whether a combination from within a single item of prior art deprives a subsequent claim to that combination of novelty is whether there is clear and unambiguous teaching, taking the prior art as a whole, that the relevant combination can be made. Absent such a clear and unambiguous indication, the prior art will not disclose subject-matter which, if (comprehensively) performed, would necessarily result in an infringement of the patent in suit (see Smithkline Beecham's Patent at [22])."
 The closest item of prior art to the patent in suit was Fosroc 1. One of the essential features of claim 12 was a sacrificial metal element as referred to in the previous claims. The specification of Fosroc 1 suggested that the invention could work without such an element:
"The anode may be provided with a non sacrificial conductor to maintain electrical continuity through the anode. When the anode is an impressed current anode such as a mixed metal oxide coated titanium, the non sacrificial conductor may be a titanium wire. When the anode is a sacrificial anode, such as zinc, the non sacrificial conducted may be a steel wire."
For that reason alone Fosroc 1 could not have anticipated claim 12.

Obviousness

The judge directed himself to Lord Justice Oliver's test in Windsurfing  as restated by Lord Justice Jacob in Pozzoli Spa v BDMO SA and Another  [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 at paragraph [23]:
"(1) (a) Identify the notional "person skilled in the art"
      (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
He also considered Lord Justice Kitchin's guidance in  Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Others [2013] RPC 27, [2012] EWCA Civ 1234 1234 (10 Oct 2012) on step 4 between paragraphs [89] and [93]:
"[89] It is step (4) which is key and requires the court to consider whether the claimed invention was obvious to the skilled but unimaginative addressee at the priority date. He is equipped with the common general knowledge; he is deemed to have read or listened to the prior disclosure properly and in that sense with interest; he has the prejudices, preferences and attitudes of those in the field; and he has no knowledge of the invention.
[90]  One of the matters which it may be appropriate to take into account is whether it was obvious to try a particular route to an improved product or process. There may be no certainty of success but the skilled person might nevertheless assess the prospects of success as being sufficient to warrant a trial. In some circumstances this may be sufficient to render an invention obvious. On the other hand, there are areas of technology such as pharmaceuticals and biotechnology which are heavily dependent on research, and where workers are faced with many possible avenues to explore but have little idea if any one of them will prove fruitful. Nevertheless they do pursue them in the hope that they will find new and useful products. They plainly would not carry out this work if the prospects of success were so low as not to make them worthwhile. But denial of patent protection in all such cases would act as a significant deterrent to research.
[91] For these reasons, the judgments of the courts in England and Wales and of the Boards of Appeal of the EPO often reveal an enquiry by the tribunal into whether it was obvious to pursue a particular approach with a reasonable or fair expectation of success as opposed to a hope to succeed. Whether a route has a reasonable or fair prospect of success will depend upon all the circumstances including an ability rationally to predict a successful outcome, how long the project may take, the extent to which the field is unexplored, the complexity or otherwise of any necessary experiments, whether such experiments can be performed by routine means and whether the skilled person will have to make a series of correct decisions along the way. Lord Hoffmann summarised the position in this way in Conor at [42]:
"In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. He correctly summarised the authorities, starting with the judgment of Diplock LJ in Johns-Manville Corporation's Patent [1967] RPC 479, by saying that the notion of something being obvious to try was useful only in a case where there was a fair expectation of success. How much of an expectation would be needed depended on the particular facts of the case.'
[92] Moreover, whether a route is obvious to try is only one of many considerations which it may be appropriate for the court to take into account. In Generics (UK) Ltd v H Lundbeck, [2008] EWCA Civ 311, [2008] RPC 19, at [24] and in Conor [2008] UKHL 49, [2008] RPC 28 at [42], Lord Hoffmann approved this statement of principle which I made at first instance in Lundbeck:
'The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.'
[93] Ultimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim. As Aldous LJ said inNorton Healthcare v Beecham Group Plc (unreported, 19 June 1997):
'Each case depends upon the invention and the surrounding facts. No formula can be substituted for the words of the statute. In every case the Court has to weigh up the evidence and decide whether the invention was obvious. This is the statutory task.'"
The difference between claim 12 and Fosroc 1 is that the latter does not disclose an anode of a metal less noble than steel with a connector made either of titanium or carbon fibre. The dispute came down to whether it was obvious to the skilled person at the priority date to use a zinc anode in a Fosroc 1 assembly with a titanium connector.  Both sides' experts agreed that it would have been obvious to use a titanium connector with a zinc anode because unlike steel it did not corrode and titanium crimped connections were known to be convenient to use. In the light of that evidence Judge Hacon concluded that the invention claimed in claim 12  lacked an inventive step relative to Fosroc 1. He made a similar finding on more or less the same grounds in respect of Fosroc 2 but not in respect of Enser or common general knowledge.

The case for obviousness in respect of claim 1 in the light of Fosroc 1 and 2 depended on a construction of the claim that the judge had rejected. The case in respect of Enser was not pleaded to the judge's satisfaction and he disregarded it.

Infringement

An unusual feature of this case was that there was no evidence of any disposal by Freyssinet of an infringing anode in the United Kingdom. At trial the issues were whether
  1. there has been an offer to dispose of an anode falling with claim 12 of the patent in this country and 
  2. Freyssinet offered the method of claim 1 for use in the UK when Freyssinet knew, or it was obvious to a reasonable person in the circumstances, that the use of the method in the UK without the claimants' consent would be an infringement of their patent.
Freysinet did issue a data sheet that had been prepared in the course of negotiations with the claimants for the right to distribute the patented system but those negotiations came to nought.  The judge held that neither claim 1 nor claim 12 had been infringed by those data sheets. Freyssinet did admit that another of its data sheets would have infringed claim 12 had it been valid but the judge had held that it was not.

Conclusion

Judge Hacon held that claim 1 was valid but had not been infringed and that claim 12 would have been infringed had it been valid.

This is quite a meaty case for IPEC. If anyone wants to discuss it with me or patent law in general he or she should call me on 020 7404 5252 during office hours or contact me through this form.