Vaping a claim - Fontem v Ten Motives

In Easyair Ltd (t/a Openair) v Opal Telecom Ltd [2009] EWHC 339 (Ch) (2 March 2009),  Mr Justice Lewison, sitting in Manchester, said at paragraph [15] of his judgment
"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."
Patent cases often turn on a question of construction because the monopoly granted to a patentee is set out in a series of numbered paragraphs called "claims".

In Fontem Holdings 1BV and anther v Ten Motives Ltd and Others [2015] EWHC 2752 (Pat) (2 Oct 2015), another case from North West England, a Cheshire business which marketed and distributed e-cigarettes was sued by one of its competitors for patent infringement. The claimants alleged that two of the defendants' products fell within the claims of their patent.  The defendants applied for summary judgment under CPR Part 24 .  The action turned on the construction of claim 1 of the patent and the defendants invited the judge to construe it in their favour.

Mr Justice Norris refused to do so. Patents are addressed to "persons skilled in the art", that is to say persons with the skill and knowledge needed to make or use the invention and judges have to construe patents from the perspective of such persons. In order to do that they require expert evidence as to how a skilled addressee would read the patent. Expert witnesses can inform the judge whether any of the terms used in the patent has a special meaning, how the addressee would interpret the drawings and what technical knowledge would be expected of such persons.  Such evidence is often hotly disputed as it was in Fontem Holdings. Even though he referred to Easyair  in his judgment Mr Justice Norris did not think that he could construe claim 1 without such evidence. That is the crucial difference between the two cases.

In  How to read a patent 2 Aug 2013 IP London I explained how patents are presented and how they are to be read and understood.  For those who want more basic information I wrote "So what's a patent" on 6 Sept 2014 in IP East Midlands and What is a Patent? Why might I want one? How do I get one? on 19 March 2014 in IP South East. For those who want more detail I have discussed Fontem in Summary Judgment in Patent Cases: Fontem Holdings 1BV and Another v Ten Motives Ltd and Others 8 Oct 2015 NIPC Law.

Mr Justice Norris's decision in Fontem is important for another reason. The patent that he was asked to construe was a European patent, that is to say one issued by the European Patent Office in Munich as opposed to the UK patents which are issued by the Intellectual Property Office in Newport. European patents are usually granted simultaneously for several European countries one of which may be the UK. For the first 9 months after the grant of a European patent can be challenged in the European Patent Office by a procedure called "opposition" under art 99 of the European Patent Convention. After those 9 months have expired a European patent can only be challenged in the courts of the countries for which the European patent is granted.

If an opposition succeeds the European patent is revoked and any infringement proceedings that have been launched fail automatically. The only problem with opposition proceedings is that they can take a long time during which time the patent remains in force. Sometimes the courts will stay infringement cases until after the opposition proceedings have run their course.

There was an opposition in Fontem Holdings and the defendants applied for a stay of the infringement action in England until after the opposition proceedings in the European Patent Office had been resolved in case their summary judgment application failed.  The judge refused that application as well. In reaching his decision he weighed the interests of the parties in very much the same way as he would consider an interim injunction application and he decided that the balance of justice law in allowing the infringement action to continue. That is not to say that a stay will be refused in every case. Each case is to be decided on its own facts.

If anyone wants to discuss this case or patent law in general, he or she should call me on 0161 850 0080 or 020 7404 5252 during office hours, or send me a message through my contact form.