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The only time Kats experience added matter |
What is the new trend for attacking a patent? If you ask the AmeriKat, it would be added matter. The "shove it in" pleading point that no one (including judges) really want to deal with lest they have to understand the metaphysical case law is becoming increasingly fashionable. The latest decision on added matter comes via His Honour Judge Hacon sitting in the IPEC. Reporting on this decision for the IPKat is new Kat friend, Robyn Trigg (A&O). Take it away Robyn:
"This
KatFriend was reminded of the infamous 1980s nappy wars when reviewing HHJ
Hacon’s judgment in Curt G. Joa, Inc. v
Fameccanica Data SpA [2017] EWHC 1251 (IPEC). HHJ
Hacon sitting in the Intellectual Property Enterprise Court (IPEC) held that
the conditional and unconditional amendments proposed by a patent owner
rendered its patent concerning disposable absorbent garments invalid for added
matter and lack of clarity.
This
case concerned a European Patent (EP (UK) No. 1 355 604) (the Patent) owned by
Fameccanica Data SpA (FDS) with the title “Disposable Absorbent Garment such as
a Diaper or Training Pants and a Process of Making the Same”. Curt G Joa, Inc. (Joa) sought to have the
patent revoked on basis that the Patent lacked both novelty and inventive step
over prior art. During the course of the
revocation proceedings FDS submitted both an unconditional and a conditional
application to amend the Patent – claiming that they both meant the same thing
but the conditional amendment more clearly expressed what was claimed. Joa objected to these amendments again
claiming that they lacked novelty and inventive step, that they resulted in the
specification disclosing additional matter contrary to s 76(3)(a) Patents Act 1977 (the 1977 Act), and that they
lacked clarity contrary to s 14(5)(b) 1977 Act.
The
invention disclosed in the proposed amendments was a disposable garment with
side panels made of “breathable, stretchable layer assembly” so as to be more
comfortable than products formerly available.
The side panels were to consist of an inner and outer material layer and
a stretchable material layer in-between the inner and outer layers. The proposed amendments also claimed a method
for making such a garment by ultrasonically bonding the inner and outer
material layers through the stretchable material layer whereby an aperture larger
than the bond site would be formed through the stretchable material to provide
a breathable passage, but no apertures would be formed in the inner or outer
layers.
In the
usual course of FDS filing its proposed amendments pursuant to s 75 1977 Act, the Intellectual Property
Office (IPO) issued a report containing its views on the permissibility of the
proposed amendments. The IPO stated that
the proposed amendments would introduce two requirements, each of which would
have resulted in the specification disclosing additional matter. Joa endorsed these objections.
The law
on added matter was not disputed, having been recently reviewed by Floyd LJ
(with Longmore LJ and Lewison LJ both in agreement) in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40 (reported on by this blog here). It is clear that the prohibition on added
matter in s 76(3)(a) 1977 Act relates to an amendment
which results in the disclosure of matter additional to that disclosed in the
application for the patent as filed rather than the specification of the patent
being amended (Triumph Actuation Systems LLC v Aeroquip-Vickers Ltd [2007] EWHC 1367 (Pat) [36]-[41] (reported on by
this blog here) a Pumfrey J decision which
he referred to and endorsed in Monsanto Technology LLC v Cargill International SA [2007] EWHC 2257 (Pat) at [156] (reported on by
this blog here)).
HHJ
Hacon held that the application as filed disclosed an invention comprising side
panels formed of an inner and outer material layer and a stretchable material
layer in-between with vent sites having holes in all three layers. He said that there was no disclosure of
bond/vent sites with no holes in the inner and outer layers, as the proposed
amendments sought to claim.
The
parties’ experts disagreed about the disclosure concerning the vent sites and
whether the inner and outer layers contained holes or not. FDS sought to rely on photographs of a
product it said was made in accordance with the patent specification. FDS gave Joa notification of these
photographs, however, it did not do anything further to establish their
provenance. Joa was not present when the
photographs were taken, no evidence was given by the photographer regarding
what was done, and no specific details of the photographed product, where it
was obtained and how it was treated to create the photographs were given. HHJ Hacon said that because nothing further was
done to prove provenance, they could not be taken at face value. As a result of this, HHJ Hacon held that Joa’s
construction of the disclosed product was accurate and that the proposed
amendments would result in the disclosure of additional matter contrary to s 76 1977 Act.
The IPO
also raised objections as to the clarity of the proposed amendments to the
skilled person, which HHJ Hacon found to be meritorious. HHJ Hacon did, however, go on to say that had
the proposed amendments been lawful, the amended claims would have been novel
over the prior art and would have contained an inventive step. Ultimately though, the unlawfulness of the
proposed amendments meant that the applications to amend the Patent were
dismissed and the Patent was revoked."
2 comments:
I racall that Floyd's interpretation of added subject matter was largelg based on the EPO Houdai (spelling?) which the EPO BoA has recently rejdcted
Added matter has long been a powerful attack at the EPO, who take things strictly. Therefore any patent attorney would naturally consider an added-matter attack.
If there is a trend in added-matter attacks in national litigation, is this a result of more patent attorney involvement? e.g alternative business structures? or patent attorney litigators?
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