13 August 2011

Patent Litigation in Northern Ireland: Siemens AG v Seagate Technology

"Litigate patents in Northern Ireland? Yes, it can be done" was the headline of the PatLit blog for its case note on Siemens A.G. v Seagate Technology (Ireland) Ltd [2011] NICh 12 as if the author of that piece had seen and heard a talking monkey. No discussion of the case other than the result, an aside from the judge and the delayed publication of the judgment.

In a circular to Solo IP Practitioners that same day, Jeremy Phillips asked
"Does SOLO IP have any Northern Ireland readers out there who would like to share their thoughts and feelings with others -- or who can disabuse this blogger of the impression he has painted above? If so, we'll be delighted to hear from you."
That impression was of rain clouds with the caption "Northern Ireland - better known for its weather than for its IP". The circular continued:
"its small population (fewer than 2 million) and largely agrarian economy probably offer less scope for developing an intellectual property-based practice and in building concentrations of expertise. Also, because of its geographical isolation, IP practitioners must inevitably find it difficult to network with professional colleagues, attend seminars and so on."
"Agrarian?" Hasn't Jeremy heard of the shipyards, aircraft manufacturing, linen, or at least De Lorean. Belfast has a proud industrial heritage. Though many of those industries may have gone the way of Lancashire cotton and Sheffield steel the good people of Ulster are not exactly peasants. Despite decades of troubles between Harold Wilson's sending in the troops and Tony Blair's Good Friday agreement, many new businesses have been established in the province not a few of which are based on science and technology.

"Typical bloody Londoners" I thought. "Why should it not be possible to litigate in Northern Ireland if the parties so wish?" That is just the sort of prejudice that I used to encounter when I settled copyright or trade mark proceedings out of the Manchester or Leeds District Registry. "Oh there are no judges outside London" the other side used to say. Excuse me! Sir Robin Jacob presided over the Chancery District Registries of Birmingham, Bristol and Cardiff and Lord Scott and Sir Andrew Morritt were Vice-Chancellors of the County Palatine of Lancaster. Moreover, the Patents Court and the Patents County Court Guide both provide for the patents judges to sit outside London for the convenience of the parties and to save costs.

But returning to Northern Ireland, I checked the IPO's Facts and Figures for 2009 - 2010 and found on page 2 that there were only 240 patent applications from Northern Ireland compared to 550 from Wales, 1,001 from Scotland and 2,810 from South East England. Having said that, the number of patent applications from the province had gone up from 213 the previous year. That is more than can be said for the East Midlands, London, North West, North East, Scotland, South West, Wales and God's own county where the number of applications actually went down.

I checked out the resources in Northern Ireland. There is the Queen's University in Belfast "a broadly based, research-driven university with a dynamic world-class research and education portfolio and strong international connections". There is the HALO Business Angel Network on the Northern Ireland Science Park. There is a patent information unit at Belfast Central Library which is more than can be said for Manchester now that Chris Brown has gone or Liverpool while it is refurbished. According to CIPA there are 4 patent agencies in Belfast, namely Ansons, F R Kelly, Hanna IP and Murgitroyd and three of those firms have "Trade Mark Experts" listed on the ITMA website. I would add that there is also the excellent Eddie O'Gorman who runs the PatentNAV IP Search and Management Service. So there is already a lot going for Northern Ireland.

It is true that there is not much IP litigation in Northern Ireland. The last patent case from the province before Seagate of which I am aware was Henry Brothers (Magherafelt) Ltd v Ministry Of Defence and Northern Ireland Office [1998] EWCA Civ 1708 (6 Nov 1998) and that was contested in London. The Northern Irish court system seems to be very much like ours with a Court of Judicature consisting of a Court of Appeal and High Court divided into Queen's Bench, Chancery and Family Divisions. According to the Northern Ireland Courts and Tribunals Service ("NICTS") website the "Chancery Office" deals with copyright and patents.

I have struggled unsuccessfully to find a compilation of the Court of Judicature rules on the internet. The basic legislation seems to be the Rules of the Court of Judicature (Northern Ireland) 1980 SR 1980 No 346 and that seems to have been amended many times. There seems to be some influence from the Civil Procedure Rules because I found several pre-action protocols. On the other hand, in Seagate the trial judge referred to Siemens AG as "the plaintiff" rather than the "claimant".

The Seagate case, incidentally, makes very interesting reading. The leading counsel in the case were James Mellor and Colin Birss leading local juniors. The claim was for the infringement of EP0674769 for a magneto resistive sensor the validity of which was challenged on the grounds of obviousness and insufficiency. The transcript suggests that the boys had a little bit of fun while on their holidays in the Emerald Isle. Even though his client was incorporated in the Cayman Islands, Colin seems to have called Siemens a "patent troll" for no better reason that Siemens no longer make the patented invention. That seems to have ruffled James's feathers but he gave as good as he got much to the exasperation of Mr. Justice Deeney at paragraph [20]:
"While Mr Mellor was critical of the defendant's description of his client as a "patent troll" based on these points he was not above robust references to the defendant himself. In particular there was an allegation repeated that the defendant was seeking to over simplify the scientific issues before the court, complex in all truth as they clearly are. I may say that I reject that contention. Rather it seems to me that, if anything, the plaintiff has sought to blind the court with science rather than to narrow and crystallise the issues."
One gets the impression that the judge wished they had taken their dispute to London as happened in Henry Brothers (Magherafelt) Ltd:
"The defendant also draws attention to the fact that the plaintiff chooses to seek adjudication here in the High Court of Northern Ireland with regard to the manufacturer of the wafer, to use a neutral word, produced at Springtown. In doing so it takes upon itself the burden of showing that that product infringes the Patent. It has not chosen to plead infringement of the plaintiff's Patent in the finished sensors in computers, which undoubtedly have measuring contacts and a signal when used in the hard discs manufactured by Seagate. The defendant says that there was nothing to stop the plaintiff suing in the Patent Court in London in regard to the finished product. Despite this point being repeated the plaintiff has chosen not to answer it."

In his very lengthy judgment the learned judge set out in exhaustive detail the provisions of the Patents Act 1977 and the European Patent Convention that he had to apply and directed himself to the following issues at paragraph [17]:
"Issue 1- What are the relevant attributes of the “person(s) skilled in the art” (per Article 83 of the Convention and Section 3 of the Act). This notional person or persons is to be viewed from the relevant agreed date of 21 December 1992, the priority date of the Patent.

Issue 2 - Identify the common general knowledge of this notional skilled addressee, again at 21 December 1992.

Issue 3 - Reading the Patent with the educated eye of the skilled addressee interpret the claims of the Patent where they are disputed. In this case that involves the true construction of Claim 1 of the Patent. (On June 14th Mr Mellor helpfully accepted that I need not concern myself further with Claim 19 as his client no longer contended that it had independent validity. The other claims had earlier been agreed not to require adjudication). In their closing submissions the defendant further identifies within this issue the following:
a) Does the Patent cover Tunnel Magnetic Resistance (TMR hereafter) ?
b) Is the requirement for a sensor comprising measuring contacts to detect a resistance signal satisfied by a layer stack with no measuring components (such as a current source and volt meter)?
c) How are the requirements which relate to the properties of the layers to be approached?
The plaintiff in response does not approbate that division but does not offer any alternative division to the court.

Issue 4 – Having interpreted the claim or claims decide whether the acts carried out by the defendant fall within either of the claims in question. With regard to such infringement of the Patent the defendant draws attention to three particular questions:
a) Do TMR products infringe at all?
b) Do the wafers with no measuring components infringe?
c) Do the TMR sub-units/Giant Magneto Resistance (GMR hereafter) tool kits have the required properties when being tested?

Issue 5 – Utilising the same interpretation of the claims without hindsight and in accordance with the case law decide whether the invention in the Patent was obvious to a skilled addressee in the light of the then common general knowledge. (The defendant sub-divides the issue of obviousness between problems of stray flux and the alternative Patent known as Parkin 1.) If obvious it fails the test in s.3 of the Act, although that refers to the state of the art.

Issue 6 – To decide whether the Patent fails for insufficiency. This is of potential relevance to the earlier issue as to whether the Patent covers TMR. If properly construed it does so, then it must enable a skilled addressee to make a working prototype TMR, which the defendant disputes it does."
On the evidence before him Mr Justice Deeney concluded at paragraph [121] that the patent was invalid for obviousness though not for insufficiency (paragraph [123]) but he refused to revoke the patent or declare it invalid. He also found that the defendant did not infringe the patent in suit.

Now that the courts and legal profession of Northern Ireland have tipped their toes in the water I hope that they will do more IP litigation in Belfast. There is nothing like the crucible of the court room for sharpening skills. Should anyone in Northern Ireland or elsewhere wish to discuss this case note or IP law generally in the province, he or she should call me on 0800 862 0055 or contact me through this form.

No comments: