Monday, 30 April 2012

Paint-spray, proof and prior disclosure

Wagner International AG & Others v Earlex Ltd [2012] EWHC 984 (Pat) is a decision of Mr Justice Floyd on 18 April in the Patents Court, England and Wales. Though not a major ruling, enriched by profound pronouncements of legal principle, it is nonetheless instructive for the tidy and efficient manner in which the trial judge marshalled the evidence -- and as a reminder of how easily a claimant patent owner can sow at least some of the seeds of its own defeat in court through disclosure of its own prior art in an exhibition. Wagner's patent was for a paint spray gun with venting passages in the air cap which relieved the problem of back pressure to the air source. Earlex made a spray gun which, according to Wagner, infringed. Earlex denied infringement and counterclaimed invalidity.

After comparing Earlex's products with the patent as claimed, the judge dismissed the infringement claim.  He then turned to the patent itself.

In the first place, Wagner's patent was invalid for added matter since the content of the specification of the granted patent extended beyond that disclosed in the application for the patent as filed. As if that wasn't enough, there was a problem of prior disclosure too. It appeared that at least one prototype of Wagner's paint sprayer with the venting passages in the air cap, as described in the patent, featured at their exhibition stand at the Home Center Show 1991 in Chicago, which the public could not only see but even try for themselves. The holes in the air cap would have been visible to anyone who looked at the gun with interest and there was evidence that it would be possible from an examination of the device to estimate the holes' diameters and their relative positioning on the air cap. Having installed the venting holes, the skilled person would undoubtedly have been able to make adjustments by a simple process of trial and error to avoid interference of the venting air with the paint spray, and would thereby be working the invention. The skilled person would be interested in the function of the holes, which represented a departure from the standard air cap, and would be able to establish their function without the exercise of inventiveness. Accordingly, the invention as described in the patent was obvious in the light of the disclosure at the show.

This conclusion is a neat blend of objectively provable fact, plausible hypothesis and projection of the characteristics of the person skilled in the art. Since the burden in civil proceedings is only on the balance of probabilities, inferences such as that drawn by the judge in this case are more than plausible: they are constitutive of fact.

Friday, 27 April 2012

Book Review: China Court Cases on Intellectual Property Rights


Like it or not - the rapidly developing field of intellectual property law in China including its national procedural particularities will inevitably move into the focus of everybody working in international IP prosecution and litigation. However, the non-chinese language references are still rare, such that the new book edited by Professor Zhou Lin is highly welcome to anybody doing business in china.

According to the publisher’s blurb:
This book presents, in extraordinary detail, sixteen landmark cases that profoundly affect the protection of intellectual property rights in China. Written by six prominent Chinese legal scholars and jurists – including judges who themselves participated in these decisions – each case is fully described and analysed: the parties and their representatives, the basic facts, the facts ascertained by the court, the evidence presented by plaintiffs and defendants, the judges’ opinions with their arguments and reasoning, the unanimous conclusions, and the judgment, along with a wealth of deeply informed comment.
The book includes cases covering the entire field from unfair competition over trade secrets, copyright, trademarks to patents, wherein only one of the cases is a purely patent law case. The cases are explained in detail in a language that is not always easy to read. However, it gives a good impression on the course of litigation procedures in China and on the decisive legal questions in the 16 cases in a way that is understandable for readers acquainted with the basic concepts of Intellectual Property Law.

A little bit disappointing for a book edited in September 2011 is the fact that the decisions date from 1996 – 2001. It is called an "Update and Commentary Version" of an earlier version published in 2002 in the context of the EU-China IPR Cooperation Programme. However, the updates are difficult to identify.  Given the rapid development of its subject-matter, e.g. copyright law in the internet, some more recent cases would surely be interesting. Further, the task of sorting out the special features of the Chinese case-law as compared to what is commonplace in the rest in the world is left to the reader.

Bibliographic Data:
Edited by: Zhou Lin
September 2011,
  ISBN 9041134190
XV+316 pages, Hardcover
USD price: $174.00
Web page here

Friday, 20 April 2012

Australia fine-tunes non-infringement declarations

All the way from Australia comes some news from Baker & McKenzie of the Intellectual Property Laws Amendment (Raising the Bar) Act 2011, which covers a range of IP areas. This Act, which came into force on 16 April, makes provision for a number of legislative reforms that don't take effect until 15 April 2013. One such reform will interest PatLit readers since it deals with how declarations of non-infringement are pleaded. According to our source:
"The statutory reference to a person who wishes to "exploit the invention" will be replaced with a person who "has done, is doing, or is intending to do an act". This means that a person seeking a declaration will need not have sought or been granted a patent themselves in order to make use of the provision, and clarifies that a declaration can apply to a present, current or future act. An applicant for a non-infringement declaration will also be able to challenge the validity of a patent in the same proceedings".

It's Not Over When It's Over

Many jurisdictions know the legal remedy of re-establishment of rights or, as the humanists among us would call it, restitutio in integrum. A further common point is that the deadline for requesting the re-establishment of rights starts with the the removal of the cause of non‑compliance with the period, but ends at the latest within one year of expiry of the unobserved time limit.

The latter one-year term is usually considered an absolute one esuring legal certainty for third parties and expires irrespective of  the reasons for the failure observe a time limit.

The Starting with the decision "Überwachungsvorrichtung" in 2009, the 10th senate of the German Bundespatentgericht and the BGH have develpoed a theory allowing for a re-establishment of rights even after expiry of the one-year term. The most spectacular decision "Crimpwerkzeug III" ( ZR 193/03) reported here and available (in German) here, the BGH granted re-instatement into the delay for filing new grounds of an appeal against the decision of an upper distruct court not to admit revision to the BGH because the new grounds related to contradictory claim interpretations in judgements, wherein the (binding) interpretation of the BGH was available only after the expiry of the delay.

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term
"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".

Wednesday, 4 April 2012

Intent and indirect infringement: a comparative article

"What intent, whose intent, and to what extent? The knowledge requirement in indirect patent infringement" is the title of an article by David Nilsson (Bird & Bird, Stockholm) and Timo Minssen (assistant professor, Centre for Information & Innovation Law (CIIR), University of Copenhagen). According to the abstract:
"Recent UK and US case law has shed light on the requirements for a successful indirect patent infringement claim, in particular the knowledge requirement. In light of these cases, the knowledge requirement in indirect patent infringement will be analysed in the US, the UK, Germany and Scandinavia.

Courts in Community Patent Convention (CPC) jurisdictions will probably look to each other for precedent. While knowledge of the patent appears to be required in the US, it does not seem to be required in CPC countries. The requisite degree of knowledge required in the US appears to be the specific intent of the indirect infringer, whilst in Germany and the UK it is the supplier's knowledge of the intention of the buyer that matters. In the CPC countries, it suffices that the knowledge exists at the time of offer. Presumption of intent if means provided are particularly suited for use according to patent or supplier has highlighted such use in marketing or other informational materials in the CPC countries.

Recent US and UK case law in respect of indirect patent infringement, in particular the knowledge requirement, useful for both patentees and suppliers".
This article, which appears in the Journal of Intellectual Property Law & Practice, was first published online on 2 April 2012, doi:10.1093/jiplp/jps023. The printed version will be published in due course. The article can be accessed for a charge on a limited time basis from the JIPLP website here.

Transferring actions between courts: a clarificatory ruling

If an IP action, whether a patent infringement claim or indeed anything else, is started in one court, what is the proper avenue through which it might be transferred to another?  This issue was examined in some detail in DKH Retail Ltd v Republic (Retail) Ltd [2012] EWHC 877 (Ch). In this case Judge Colin Birss QC (Patents County Court, England and Wales) gave a very useful judgment on an application to transfer an unregistered design infringement action from the (expensive) High Court to the (cheaper, less formal) Patents County Court.  The application came initially before a High Court Master -- a type of judge who is concerned primarily with procedural matters such as applications, motions and case management. The Master declined to hear the application on the ground that he did not have jurisdiction and that the application should be heard in the Patents County Court.

The application was then made to Judge Birss QC, who confirms that what, up to now, has been considered to be the correct practice, which is that it is the Master or Judge in the transferring court who must hear and decides the application, is correct. The judge also summarised the basis on which an intellectual property dispute may be referred from a non-specialist County Court to the Patents County Court.

Fortunately there was no need to reapply to the transferring court, since the parties agreed to the transfer to the Patents County Court.

PatLit thanks Brian Whitehead (Kempner & Partners LLP) for prompting this blogger into action.

Monday, 2 April 2012

Complex requests for leave to amend: blue, greeen and white machines -- and a red herring

Earlier this year, in Schenck RoTec GmbH v Universal Balancing Ltd, a Chancery Division for England and Wales decision of Mr Justice Vos (29 February 2012), a defendant in patent infringement proceedings sought to amend the grounds asserted in support of its argument of invalidity. This application was allowed in part, on the basis that the evidence on which it sought to rely as evidence of prior art raised different questions to other evidence that had already been pleaded.

Schenck RoTec's patent was for a machine for balancing prop shafts which spun a shaft, allowing measurements to be taken which in turn enabled an operator to use a welding gun in order to weld correction weights. The machine's design allowed for an increased cycle time and automation by allowing those balancing weights to be added in a single motion. Defending Schenck RoTec's infringement action, Universal Balancing asked to amend its grounds of invalidity in order to rely on two further machines as constituting evidence of prior art (the '1999 machine' and the 'white machine'), in addition to the 'blue' and 'green' machines, had already been pleaded. Universal Balancing also sought (i) disclosure if those amendments were allowed; (ii) further disclosure in relation to its visit to inspect the green machine in 2002 and associated drawings and materials, and (iii) disclosure in relation to discussions held between Schenck RoTec and a third-party company about a "costs-down" project -- all of which, Universal Balancing argued, were material relevant to a separate allegation of prior art.

With a hearing set to be heard in 10 weeks' time, the court had to decide the following questions:
(i) were the amendments to the grounds of invalidity allowable under the terms of orders made earlier by Mr Justice Arnold?
(ii) should permission to amend be granted in relation to the 1999 machine and the white machine ?
(iii) if permission to amend were granted in respect of either or both of the machines, should full relevant disclosure, with disclosure in relation to the costs-down project and any further disclosure be granted?
(iv) might a witness be allowed to give evidence by video-link?

Vos J ordered as follows:
* Universal Balancing had already been permitted to serve an amended defence and cross-claim which were to be consequential on amendments to the particulars of claim. They had argued that the 1999 machine and the white machine had only come to light as a result of the amended claims. Although the court could not confirm that no evidence as to those machines had been available to Universal Balancing before those amendments were made, or that any evidence in relation to prior art in the white machine or the 1999 machine would have been irrelevant to claims in the original claims, it was clear that claims to prior art in the two machines would have been equally relevant to claims in the unamended patent. Since the amendment was not truly consequential, the application for permission to amend had therefore to be decided on the usual principles.

* Amendments should in principle be allowed so that the real dispute between the parties could be adjudicated upon -- so long at any prejudice to the other party or parties caused by the amendment could be compensated for in costs, and the public interest in the efficient administration of justice was not significantly harmed.

* Under the Civil Procedure Rules (CPR PD 63 para.4.4), where material had allegedly been made available to the public by use, details of that alleged use must be contained in the pleadings in the grounds of invalidity. There were good reasons here for permitting Universal Balancing to make the amendment sought in relation to the 1999 machine; that machine was different from the blue and green machines which were the subject of the current pleadings, and the prior art in the 1999 machine had likely passed into the public domain before the priority date. The 1999 machine therefore raised different questions to those raised by the blue and green machines.

* Although it was possible that the machines were the same or similar, that question could not be answered without a product description for the 1999 machine. To allow the amendment in that respect would not cause undue prejudice to the future trial date and since any possible prejudice was outweighed by the demands of justice, the amendment be allowed.

* Where it was clear that a party had a large number of potential points, that party ought to only be allowed to rely on the better points.

* The problem with allowing an amendment to Universal Balancing's grounds of invalidity in relation to the white machine was that Schenck RoTec would be left not knowing what case it had to meet since, on the evidence of Universal Balancing, there was no difference between that machine and the 1999 machine. In that sense, the pleading could have been a red herring, and was no better case in support of Universal Balancing than the one it had with the 1999 machine. The sought amendment, if allowed, could also raise complex issues, including whether particular documents had actually been made public at all, the resolution of which depended on matters not before the court.

* Adjournment of the issue was not appropriate, since valuable time would be lost in preparing for trial, which would lead to an adjournment of the trial to a year ahead. The introduction of such complexities would be disproportionate and it would be unfair to Schenk RoTec if the amendment were allowed where there had been a failure to explain how the white machine would enhance Universal Balancing's case. Universal Balancing could however make a future application, showing why an amendment would be both necessary and just.

* Disclosure of the product description in relation to the 1999 machine was ordered. However, the application for further disclosure would not have been made, if it not were not for the application to amend. Standard disclosure had already occurred on both sides and, as Schenck RoTec had already disclosed relevant documents, an order for further disclosure was not necessary. Moreover, as the costs-down project was a separate allegation of prior art that had not been specifically pleaded, there were no grounds whatsoever on which disclosure on that issue could be ordered.

* The relevant witness could give evidence via video link, in light of the witness's personal circumstances and the fact that this wasn't seriously contested.
This note is based on a Lawtel note on an extempore judgment.