08 October 2015

Summary Judgment in Patent Cases: Fontem Holdings 1BV and Another v Ten Motives Ltd and Others














In Fontem Holdings 1BV and Another v Ten Motives Ltd and Others [2015] EWHC 2752 (Pat) Mr Justice Norris set out his reasons for dismissing on 21 July 2015 the defendants' application under CPR Part 24 to dismiss the claims against them for patent infringement or, alternatively, a stay in the proceedings pending the disposal of opposition proceedings in the European Patent Office in respect of the patent under art 99 of the European Parent Convention.

The patent in suit was European Patent (UK) No. 2 022 349 B1 for an aerosol electronic cigarette.  Claim 1 of the patent was for
"An aerosol electronic cigarette comprising a battery assembly, an atomizer assembly, a liquid storage component (9) and a hollow shell (a, b) having one or more through-air-inlets (al); wherein the battery assembly connects electrically with the atomizer assembly, and both are located in the shell (a, b); the atomizer assembly includes a porous component (81) and a heating body in the form of a heating wire (83); characterised in that the atomizer assembly includes a support member (82) having a run-through hole (821); the porous component (81) is mounted on the support member (82) and is wound with the heating wire (83) in a part that is on the side in the axial direction of the run-through hole (821); and the liquid storage component fits with the porous component of the atomizer assembly and is located in one end of the shell (b) which is detachable."
The claimants complained that the defendants' Cirro and V2 Rechargeable products infringed that claim.

The defendants submitted:
"a) That neither the Cirro nor the V2 products infringed Claim 1 because they divided into a battery assembly on the one hand and an atomiser and liquid storage assembly on the other, whereas Claim 1 contemplated a different sort of "detachability" ("the detachability point");
b) That the Cirro products did not infringe Claim 1 because they did not utilise a shell with a liquid storage part within the shell ("the liquid storage point"), it being accepted for the purposes of the application that it was arguable that the wadding in the brown barrel of the V2 "cartomiser" was a method of liquid storage located in a shell."
The judge was unconvinced. In his view the claim was capable of more than one construction and the claimants indicated that they intended to adduce expert evidence as to how the specification would be read by a skilled addressee.

In considering whether there should be a stay his lordship referred to IPcom GmbH & Co Kg v HTC Europe Co Ltd and Othes [2013] EWCA Civ 1496, [2014] Bus LR 187, [2013] WLR(D) 456, [2014] RPC 12 where the Court of Appeal decided that a judge's "discretion to grant a stay must be exercised to achieve a balance of justice between the parties having regard to all the relevant circumstances of the particular case." Having regard to such factors as the delay and the likely commercial disadvantage to the claimants if a stay were allowed Mr Justice Norris decided not to grant the application.

There are two interesting points from this case. The first is that the judge approved Mr Justice Lewison's dicta in  Easyair Ltd (t/a Openair) v Opal Telecom Ltd [2009] EWHC 339 (Ch) that
"it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it."
but was mindful of Lord Justice Floyd's observation in  Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293 that patent claims have to be construed from the perspective of the skilled addressee upon which the judge may require expert evidence. The second point is that Mr Justice Norris took account of very much the same factors he would have considered in determining the balance of convenience in an interim injunction application.

Should anyone wish to discuss this case he or she should call me on 020 7404 5252 or use my contact form.

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