NIPC Law

Author Rklawton   Licence   CC BY-SA 4.0   Source Wikimedia Commons   Jane Lambert Yesterday the Intellectual Property Office added a new para  125.17.8  on the Formstein defence  to its Manual of Patent Practice .  Considering that the defence is a doctrine of German law and that there has been no firm decision on whether that doctrine applies to this country, that is quite remarkable. Para 125.17.8 describes the doctrine as: "a principle developed under German patent law in relation to infringement and the doctrine of equivalents (DoE), whereby if an alleged infringer can show that an equivalent is a non-inventive variant of the claimed invention, then the patent’s scope for the purposes of determining any infringement is held to its normal construction – in other words the DoE does not apply." I have referred to the doctrine in  Patents - Technetix BV and others v Teleste Ltd . on 19 Feb 2010 and  Patents - Facebook Ireland Ltd v Vox...

  Jane Lambert Patents Court (Lord Justice Birss)  Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat) (26 May 2021) This was an action by Facebook Ireland Ltd  ("Facebook") for the revocation of  EP 2 393 259 B1  ("the patent") held by Voxer IP LLC ("Voxer") and a counterclaim by Voxer for infringement of the patent. Voxer applied for the amendment of its patent and it was common ground that the patent would have to be revoked if the application had been refused. Facebook objected to the amendments on several grounds including  added matter .   It also contended that amendment would not cure the patent's invalidity.  The action and counterclaim came on for trial before Lord Justice Birss between 12 and 15 April 2021. He delivered judgment in Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat) on 26 May 2021. The Patent The invention for which the patent was granted is called a telecommunication and multimedia management meth...

Jane Lambert Patents Court (Lord Justice Birss) Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 657 (Pat) (19 March 2021) In    Eli Lilly v Actavis UK Ltd and others     [2017] Bus LR 1731, [2017] UKSC 48, [2017] RPC 21, the Supreme Court changed the way the courts decide whether a patent claim has been infringed. I discussed that judgment in detail in    The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important   13 July 2017. Up to that judgment a patent could be infringed only if a variant fell within the language of a claim. Lord Neuberger referred to that as a "normal construction". After that judgment a patent could be infringed if the variant operated in a manner that was equivalent to the claim.  This was referred to in that case and subsequently as the "doctrine of equivalents". The issue before Lord Justice Birss in  Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 657 was ...

Sarah Stierch / CC BY (https://creativecommons.org/licenses/by/4.0) Jane Lambert Patents Court (Mr Justice Birss)    Facebook Ireland Ltd v Voxer IP LLC [2020] EWHC 1806 (Pat) (7 July 2020) Yesterday, I explained in International Patent Litigation - Nicoventures Trading Ltd v Philip Morris   16 July 2020 that defendants to German patent infringement claims often bring actions to revoke the UK designation of the same European patent because it is not possible to challenge the validity of a patent in infringement proceedings in Germany.  The thinking behind that strategy is the courts in countries that are party to the European Patent Convention take account of each other's decisions on the same patent.  That strategy works, however, only if the UK revocation action is decided before the German infringement one.   To ensure that it does, the court may have to order the expedition of the UK trial as it did in    Nicoventures...