Archive | Mai 2014

UK judges set „suitable for“ straight

One of the old „chestnuts“ of patent law is the effect of the word „for“ in the preamble of a claim. The EPO has special rules for this. One of the questions is whether the EPO, when considering claim language for clarity, novelty and inventive step uses the same test as the European national courts do. 

EPO Guidelines for Examination

Part F – Chapter IV-15

4.13 „Apparatus for …“, „Method for …“, etc.
If a claim commences with such words as: „Apparatus for carrying out
the process etc…“ this must be construed as meaning merely
apparatus suitable for carrying out the process. Apparatus which
otherwise possesses all of the features specified in the claims but
which would be unsuitable for the stated purpose or would require
modification to enable it to be so used, should normally not be
considered as anticipating the claim……….

However, if the known product is in a form in which it is in fact suitable
for the stated use, though it has never been described for that use, it
would deprive the claim of novelty…….

In contrast to an apparatus or product claim, in case of a method claim
commencing with such words as: „Method for remelting galvanic
layers“ the part „for remelting …“ should not be understood as meaning
that the process is merely suitable for remelting galvanic layers, but
rather as a functional feature concerning the remelting of galvanic
layers and, hence, defining one of the method steps of the claimed
method (see T 848/93)………

A distinction does however have to be made where the claim is
directed to a method or process aiming at a certain purpose, when it
comprises physical steps which result in the production of a product
(i.e. the claim is in fact directed towards the production of a product). In
this case, the purpose (intended use) is to be understood in the sense
that the method or process has to be merely suitable for that use,
rather than comprising the use as an integral method step.

The UK case is Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 1559 (Pat) (15 May 2014) and is reported by IPKat:

http://ipkitten.blogspot.be/2014/05/another-one-bites-dust-rovi-v-virgin.html.

The interesting claim interpretation point arose when Virgin argued that the words “suitable for” in the claims encompassed cases where hardware is merely capable of being programmed to do something (but is not actually programmed to do so). That would mean that any computer which was not actually programmed to carry out the relevant function would still be „suitable for“ carrying it out and hence would be relevant to novelty. On the other hand, Rovi argued that hardware alone would not be “suitable for” carrying out a given function in the absence of appropriate software. 

The Judge cited Floyd J in Qualcomm v Nokia, who had held that “If the apparatus has to undergo physical modification before it can be used, then prima facie it is not suitable for use and does not infringe”.  The Judge in the Rovi case held that programming a computer to do something “is the equivalent of the  physical modification of Floyd J’s example”. 

However by doing so the judge inadvertently raised a further issue. If a computer program installed on a computer is „equivalent to a physical modification“, then such a program becomes a „technical“ feature – and hence is statutory patentable subject matter. 

Sometimes taking court action in Europe pays off

This is based on a report by Dennis Crouch and David Hricik of Patently-O:

http://patentlyo.com/hricik/2014/05/kelley-collecting-million.html?utm_target/=feedburner&utm_medium=email&utm_campaign=

Feed%3A+PatentlyO+%28Dennis+Crouch%27s+Patently-O%29

with respect to the case Kelley Drye & Warren, LLP v. Orbusneich Med. Co. Ltd., BVI, 2014 WL 1814204 (Conn. Super. Ct. Apr. 4, 2014).

This case relates to a law firm – Kelley Drye (KDW) – trying to get their fees paid by their client Orbus. But that is not what is interesting.

Orbus had filed suit for patent infringement and related common law claims against Boston Scientific. The case was filed in the Eastern District of Virginia, but then transferred to Massachusetts. Then, Boston Scientific moved for reexam and the suit was stayed.

Orbus then turned to a  replacement law firm whose  strategy was for Orbus to file a number of European actions, including ones in Germany, UK, Ireland, and the Netherlands.

This had the required effect – in 2013, Orbus and Boston Scientific came to a settlement resulting in a one-time payment to Orbus and a worldwide patent license for Boston Scientific.

The situation in USA following the new AIA act, is that there are a considerable number of past-grant attacks against patents. As shown in this case a post grant re-exam can delay infringement proceedings in USA.

However, due to the bifurcation system in Germany, which allows infringement cases to proceed independent of nullity actions there can be a better chance of reaching settlement.