Category: Intellectual Property

Nationwide Filter Company and Berni Hambleton (Patent): IPO 15 Mar 2010

The patent proprietor sought a review of Opinion 28/08 which found the patent invalid for lack of inventive step over a prior French patent document. The patent related to a method of forming a filter unit. The proprietor only challenged the reasoning in the Opinion regarding claim 2, which related to a pleated filter (it being accepted that the prior French document disclosed the other features of that claim). The proprietor argued that it would not have been obvious to use a pleated filter in the construction disclosed in the French document, as such a filter would have been too delicate to be useable in such a construction. Applying DLP Limited [2007] EWHC 2669, the hearing officer found that the examiner’s opinion was not clearly wrong, and no error of principle was alleged, and so declined to set aside any portion of the Opinion.

Judges:

Mr J Elbro

Citations:

[2010] UKIntelP o09110

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.457898

Arm Limited (Patent): IPO 1 Feb 2010

IPO The invention relates to the simulation and testing of programmable devices and associated programs designed to run thereon. Modelling the device and associated programs in this way helps to identify potential problems early on in the development life-cycle so that they can be overcome relatively easily and inexpensively by modification of the original design. Being able to design and simulate the programs in parallel with the development of the hardware upon which they will be executed also reduces the overall development time and makes the process more efficient.
The applicant itself produces a wide range of modelling tools which enable users to produce so called ‘cycle accurate’ models for simulating microprocessors on a general purpose computer. These models can be used, not only to model the microprocessor itself, but also the program code designed to run thereon. However, problems arise when the simulated model of the microprocessor and/or the program code being subject to simulated execution contain ‘bugs’ which need to be identified and fixed. Difficulty arises in that when the simulation is being run and produces unexpected results, it is often difficult to locate whether the problem lies in the simulated model of the hardware or within the program code. The invention provides a new technique whereby the behaviour of the simulated device and the program code can be tracked simultaneously and the location of any bugs can be more readily identified. This is achieved by an arrangement in which the so called ‘host debugger’ and ‘target device debugger’ are synchronised, and a ‘debug interface’ is provided for enabling access to stored information regarding the state of resources being used by the host simulation and the state of the device being simulated.
The hearing officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to computer program for locating bugs in simulation software. The Hearing Officer could find no technical contribution and so refused the application under Section 18(3).

Citations:

[2010] UKIntelP o03610

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.457847

Asphalt Re-Lay Ltd and NuPhalt Limited (Patent): IPO 4 Feb 2010

Both sides requested that the comptroller should decline to deal with a reference under section 72 in light of parallel proceedings in the Patents Court. The Hearing Officer concluded that it was clearly undesirable to have the same or largely similar issues litigated both before the comptroller and the court. He was satisfied that the question of whether these patents should be revoked was one which would now more properly be determined by the court. He therefore declined to deal with the reference.

Citations:

[2010] UKIntelP o04210

Links:

Bailii

Statutes:

Patents Act 1972

Intellectual Property

Updated: 22 October 2022; Ref: scu.457848

Loadhog Limited v Polymer Logistics Bv (Patent): IPO 28 Jan 2010

IPO The defendant in these revocation proceedings requested an interim award of costs above the published scale to recover costs which were incurred as a consequence of what they claimed was unreasonable conduct on the part of the claimant in relation to the statement of grounds.
The Hearing Officer decided on the basis of the papers of the case that there was no reason to award costs above the published scale, but he did award scale costs against the claimant in respect of preparation for a preliminary hearing on strike-out. The case continues.

Citations:

[2010] UKIntelP o03110

Links:

Bailii

Intellectual Property

Updated: 22 October 2022; Ref: scu.457834

Orbital 2 Limited and Urs Viktor Giger (Patent): IPO 29 Jan 2010

EAT This was a request for strike-out of an entitlement reference, prior to the formal evidence rounds, on the grounds that the statement of case provided by the claimant did not clearly identify the inventive concept in dispute. The patent applications have not yet been granted, and the defendant says the claims were deliberately drafted broadly to draw the search. Without more detail from the claimant regarding what they consider the inventive contribution to be, the defendant said he could not properly defend his position.
Following the House of Lords judgment in Yeda, the Hearing Officer found that it was necessary to wait until evidence has been adduced before determining what the inventive concept is, and who contributed to it. At this stage, prior to the filing of evidence, it was not possible to say that the statement of grounds disclosed no reasonable grounds for bringing the claim, as would be required by CPR 3.4 to strike out a statement of case.
The Hearing Officer allowed the claimant to make some minor amendments to the statement of grounds to clarify the legal basis of its case. He also ordered that the evidence rounds would be sequential, and directed a timetable for the remainder of the proceedings accordingly.

Citations:

[2010] UKIntelP o03310

Links:

Bailii

Statutes:

Civil Procedure Rules 3.4

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.457837

Roche Products Ltd and Another v Kent Pharmaceuticals Ltd: CA 20 Dec 2006

The defendant appealed summary judgment in a trade mark infringement case based on parallel imports of ACCU-CHEK blood testing strips for diabetics. The defendant said that the products were ‘CE’ marked and therefore intended for sale within the EU.
Held: The function of a CE mark is not directed in any way to the question of whether the proprietor of any trademark associated with the goods or packaging on which the CE mark is attached has consented to the placing of the goods anywhere on the market in the EEA or indeed anywhere else. It is there to record the consent of the EU regulatory authorities, not that of a trademark proprietor, to the products being placed on the market in the EU. The presence of the mark could not be used in normal parlance to argue that the company had consented to the import, but the defendant argued that there was a custom and practice to treat it as such. That argument was not supported by by sufficient evidence to carry it. It was not proper to accept a Micawberish type hope that some further evidence might turn up.

Judges:

Lord Justice Neuberger, Lord Justice Moore-Bick, Lord Justice Moore-Bick

Citations:

[2006] EWCA Civ 1775

Links:

Bailii

Statutes:

Trademarks Act 1994, EU Directive 89/104/EEC of 21 December 1988

Jurisdiction:

England and Wales

Citing:

Cited – Zino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
Cited – Yangtze Insurance Association v Indemnity Mutual Marine Assurance Co CA 1908
The court considered the significance of a trade custom in interpreting a contract: ‘The general rule of construction is that words used in documents must receive their primary signification, unless the context of the instrument read as a whole, or . .
Cited – Glaxo Group Limited v Dowelhurst Limited, Richard Taylor CA 15-Mar-2004
It was arguable that an EMEA licence number on the packaging of the products in question operated as a sufficient consent under Article 7 to the placing of those products on the market in the EU. The ‘heart’ of the defences he was there considering . .
Cited – Smith Hogg Co v Louis Bamberger and Sons 1929
Where it has been demonstrated by satisfactory evidence that an expression is understood to have a special meaning by virtue of a ‘custom of the trade’, then effect will be given to the custom of the trade, unless it is inconsistent with the express . .

Cited by:

Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 22 October 2022; Ref: scu.247487

Personal Management Solutions Ltd and Another v Brakes Bros Ltd and Others: QBD 24 Oct 2014

Action by two associated claimant companies for damages and for other relief. The claims have been consolidated as each is concerned with the alleged misuse of Personal Group’s confidential information by the second and third defendant companies, through the agency of the first and fourth defendants, by receiving, disseminating and making use of a list of customers of the claimants who were employees of the first Defendant company.

Judges:

Curran QC HHJ

Citations:

[2014] EWHC 3495 (QB)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.538710

Jack Wills Ltd v House of Fraser (Stores) Ltd: ChD 31 Jan 2014

The court was asked as to the extent to which a trade mark holder could limit the use of similar logos by a competitor embroidering a near replica on items of clothing.
Held: In this case they did infringe.

Judges:

Arnold J

Citations:

[2014] EWHC 110 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 22 October 2022; Ref: scu.520870

Lumos Skincare Ltd v Sweet Squared Ltd and Others: PCC 10 May 2012

The claimant alleged passing off by the defendant in the use of the trading mark LUMOS for nail care products.

Judges:

Douglas Campbell Rec

Citations:

[2012] EWPCC 22

Links:

Bailii

Citing:

Cited – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .

Cited by:

See Also – Lumos Skincare Ltd v Sweet Squared Ltd and Others PCC 13-Jun-2012
. .
Cited – Lumos Skincare Ltd v Sweet Squared Ltd and Others CA 6-Jun-2013
The claimant appealed against rejection of its claim in passing off.
Held: The appeal succeeded. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 21 October 2022; Ref: scu.457608

Leonard Stockley v Husqvarna UK Ltd (Patent): IPO 30 Dec 2009

IPO The patent concerns an electric lawnmower, with a spool holder for storing the electric cable integrally formed on an outside surface of the grass-box. The validity of some of the claims was challenged on the basis of a prototype lawnmower kept in Mr Stockley’s garage, that he showed to his neighbour approximately two months before the priority date of the patent.
The hearing officer found that the circumstances of the disclosure by Mr Stockley to his neighbour constituted making it available to the public, so it formed part of the state of the art. Other individuals who saw the invention were found to be under an obligation of confidentiality – express or implied.
The purpose of Mr Stockley’s prototype was to develop a retractable lawnmower cable that feeds and rewinds as necessary to keep the cable off the ground when in use (to reduce the possibility of cutting through the cable). Although this was not quite the same as the purpose of Husqvarna’s invention, which was to provide a means of storing the cable on a lawnmower when not in use, the hearing officer concluded that the inventive concept in the claim was not so limited, and he decided (using Windsurfing and Pozzoli) that the differences between the prior art (Mr Stockley’s prototype) and the inventive concept in claims 1 and 3 would have been obvious to the skilled person. He allowed the patentee a period of time to amend under Section 75, failing which the patent would be revoked. A decisions on costs was deferred.

Citations:

[2009] UKIntelP o40209

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457553

Carl Anderson Griffith (Patent): IPO 18 Dec 2009

IPO The application was initially filed by a Patent Attorney representing the applicant. However, soon after the application was filed, the applicant and the attorney parted company and Mr. Griffith continued prosecuting the application on his own. The application received a preliminary examination report which notified Mr. Griffith that an abstract needed to be filed by the 28th April 2008. No abstract was received in time so consequently the Office issued a letter to Mr. Griffith notifying him that the application had been terminated. Mr. Griffith requested reinstatement of the application and after examination of evidence filed by Mr. Griffith, the Office wrote to him explaining that the case for reinstatement had not been made out because he took the decision not to file the abstract in the clear knowledge that he had to do so, but because he felt the costs were getting excessive, he chose not to file it. This was a conscious decision and therefore not ‘unintentional’ as required by s. 20(A) of the Act. Mr. Griffith subsequently requested a hearing.
Mr Griffith’s argument was that it was never his intention to let his patent lapse. He had used professionals to file the application and had subsequently tried his best in difficult circumstances to prosecute the case himself. After discovering that the abstract had not been filed, he took professional advice from another agent, but he felt here that he had received poor advice and that the costs quoted were so high that it left him with no option but not to be able to file the abstract on time.
The HO found that although Mr. Griffith knew that an abstract had to be filed by a certain time, he felt he was unable to do so and was unaware of the specific date to file it. He also found that by the time Mr. Griffith sought the advice of the second agent on how to file the abstract, the date for doing so had already passed. As such he found that the decision not to file the abstract had been made outside the relevant period in which his intentions as required by the law had to be judged. In looking at Mr. Griffith’s intent within the relevant period, the HO found that Mr. Griffith clearly did not prosecute the application as carefully as he might have because of a range of external factors in his life. However the evidence showed that the failure to comply in filing his abstract on time came and went without any awareness of those events on Mr. Griffith’s part. He found that not to be a conscious decision and as such found the failure to be unintentional and allowed the application for reinstatement.

Citations:

[2009] UKIntelP o39409

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457557

Adobe Systems Inc v Netcom Distributors and Ors: ChD 24 Feb 2012

Aplication within these trade mark proceedings in which application the claimant seeks a determination that the defendant is not entitled to counterclaim for the revocation of Community trade marks for non-use because, it is said, that counterclaim does not go to the defence in this case but is, so far as relief goes, freestanding.

Judges:

Mann J

Citations:

[2012] EWHC 1087 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457568

Clive Neil Galley (Patent): IPO 21 Dec 2009

The Hearing Officer refused the application on the grounds that the application was not clear enough or complete enough to enable a person skilled in the art to perform the invention. The Hearing Officer also considered the claims to be unclear.

Citations:

[2009] UKIntelP o39309

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457544