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Thursday, 21 December 2006

Intermediate generalisation" strikes again; Latest ECC


"Intermediate generalisation" strikes again

The decision in LG Philips LCD Co Ltd v Tatung (UK) Ltd, Viewsonic Europe Ltd and Number One Services Ltd [2006] EWCA Civ 1774, a Court of Appeal decision of Lord Phillips LCJ and Lords Justices Neuberger and Leveson LJ, was posted on BAILII this morning. It's one of those cases that makes the IPKat wonder "where was I when the trial decision was handed down?", since he has no recollection of it happening at all.

This was LG's appeal against the decision of the IPKat's great friend Judge Michael Fysh QC in the Patents County Court that not only did Tatung and the other defendants not infringe its patent but that, even if they had done, the patent was invalid anyway.

LG's patent, entitled "Portable computer", was for a way of mounting flat panel liquid crystal display devices into housings, the combination being subsequently incorporated into portable computers and display monitors. According to LG, Tatung's closed circuit television monitor infringed this patent. Tatung counterclaimed for revocation on the grounds of anticipation, obviousness and insufficiency. At this point LG sought unsuccessfully to amend its patent, it being considered that both proposed amendments constituted forbidden added matter and that the second was in any event too unclear.

At trial, LG conceded that it was a loser if the patent couldn't be amended. Judge Fysh QC found the patent was invalid for lack of inventive step and added that, even if the amendments were allowed, Tatung still wasn't infringing it. LG appealed on the basis that the patent was not void for want of inventive step and that the court was wrong to refuse the amendments.

The Court of Appeal dismissed the appeal. In its view

* The fact that a word, phrase or other part of a patent claim was not wholly clear would not automatically mean that the claim was objectionable, since that would set a far too high and unrealistic standard for any sort of drafting (especially for patents).

* A claim should be as clear as the subject matter reasonably allowed it to be and, in this case, the second amendment was clear enough.

* In the Patents Act 1977 s.76(1) "additional matter" was defined as "matter extending beyond that disclosed" by the patent in its original form. To pick out an apparently insignificant feature of one of the preferred embodiments of the invention and stick it into a claim, while ignoring the other features of that embodiment, would not be allowed - and that was what the second proposed amendment sought to do.

* Since the first proposed amendment added a new feature that was not mentioned anywhere in the specification of the patent, attaching a new practical and inventive importance to the feature it described, Judge Fysh QC was right to disallow it.

* There was no infringement even if the patent were amended, and the patent was definitely obvious.
The IPKat notes that the Court was assisted by Pumfrey J's analysis in re Palmaz's European Patents (UK) [1999] RPC 47, where he describes the process of taking a feature of a preferred embodiment which lacks inventive content and then inserting it into a claim as "intermediate generalisation". The Kat thinks that's a cool term and he really looks forward to using it at the next Winterval office party he attends. Merpel says, LCD patents can easily cause grief: there loads of them, each representing a different strand of incremental change in a mature technology, and they presumably have to go for narrow claims in order to get accepted in the first place.


Latest ECC

Sweet & Maxwell's European Commercial Cases for 2006 is now before the IPKat. There are only two cases in this issue [actually three - I counted them again ...] but one of them is a cracker - the fairly detailed analysis by Sir Andrew Morritt (the Chancellor) of the IP/competition merits of the remarkable first stages of Adidas' litigation against the tennis authorities in respect of their arguably anticompetitive and definitely naughty attempt to force the three-stripers to limit the area on items of tennis clothing that their famous motif might legitimately occupy.

The other case in this issue was promisingly enough about the powers of a CAT, but this CAT was not the feline variety - it was the acronym of the Competition Appeal Tribunal. [The third case, from Germany, dealt with the protection of a database of music hits].

1 comment:

David said...

The term "intermediate generalisation" is often used in European practice when the applicant needs to narrow the main claim to avoid some prior art, but doesn't want to go all the way to including all the features of one particular embodiment. Taking only one feature from an embodiment described consistently having more than just that feature is usually objected to by the examiner as an intermediate generalisation, this being a short cut term for added matter under Article 123 EPC. It's nice to see that the English courts are using the same terms, as the more aligned UK law and practice is with Europe the better. That seems to be the view of Jacob LJ too (see his judgment in Aerotel/Macrossan).

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