|A judgment on Section 100 of the Patents Act 1977 that|
makes sense is as satisfying for the AmeriKat
as reaching those hard to reach "itch spots". Ahhh....
The claimant - Magnesium Elektron Limited - makes and supplies rare earth mixed oxide (REMO) products, namely comprised of zirconium-cerium-based mixed oxides with rare earth oxides such as yttrium oxide. These are made by the patented process as claimed in EP (UK) 1,444,036 entitled "Process for preparing zirconium-cerium-based mixed oxides". All claims in the '036 patent are process claims. Claim 1 states:
“A process for preparing zirconium-cerium-based mixed oxides which comprises reacting an alkali with an aqueous solution of a soluble zirconium salt containing 0.42-0.7 mole of sulphate anion (SO42–) per mole of zirconium cation at a temperature of not greater than 50°C, in the presence of a soluble cerium salt to form a cerium-zirconium mixed hydroxide, and then calcining the cerium-zirconium mixed hydroxide to form a mixed oxide.”Molycorp Europe - the first defendant - is a UK company which supplies REMO products. Zibo Jia Hua Advanced Material Resources Co. Ltd ("Zamr") based in Shandong, China, makes zirconium-cerium based mixed oxides in China. Molycorp and Zamr are indirect subsidiaries of Molycorp Inc, a US company who petitioned for Chapter 11 bankruptcy in June 2015. This has ruled Molycorp Inc out of the running for this application.
Magnesium Elektron argue that both of the defendants have infringed the patented process
- by making REMO products in China;
- by, with respect of Molycorp Europe, keeping, using, disposing of and offering to dispose of a product made directly by means of the patented process;
- by, with respect of one or the other defendant, importing the product in the UK; and
- by carrying the acts out pursuant to a common design and are therefore jointly liable for any acts of infringement committed by the other.
There were three questions before the court as follows:
Question 1: Is there a serious issue to be tried?
Whether or not there is a serious issue to be tried for the purpose of service out on the merits is the same test for resisting summary judgment (CPR 24) or strike out (CPR Part 3, Rule 3.4). Because the claimant's patent is for a process, section 60(1)(c) of the Patents Act 1977 which relates to the infringement of a process invention, is at issue. The questions are therefore whether Zamr has committed any relevant acts within the scope of section 60(1)(c) and whether such a product was made directly by the patented process.
In respect of the second question, the judge recognized that proving that the product was made using the patented process is difficult (see for example Nutrinova v Scanchem  FSR 42). The evidence of Mr Moles explained that the process at issue, called washcoating, could be identified by way of a chemical fingerprint. This is because the patentee's REMO product obtained a unique nanostructure from the washcoating that provided enhanced oxygen release kinetics. These features could be identified by various techniques which, when conducted in full, are quite an undertaking. The claimant therefore provided initial results which demonstrated that the sample from a trap purchase behaved almost identically to samples made by the patented process. Accordingly, the judge accepted that there was a serious issue to be tried .
Of interest, the claimant also argued a second basis - that section 100 of the Patents Act 1977 applied. Section 100 provides that
"100.— Burden of proof in certain cases.
(1) If the invention for which a patent is granted is a process for obtaining a new product, the same product produced by a person other than the proprietor of the patent or a licensee of his shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that process.
(2) In considering whether a party has discharged the burden imposed upon him by this section, the court shall not require him to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so."
|Just like Section 100, Justice Ginsberg|
is said to be "notorious". For an explanation,
see this Rolling Stone article here.
"27. If sections in the Patents Act could ever be described as notorious then this may be the one. In Generics v Lundbeck  EWCA Civ 1261 its interpretation was described as difficult (per Jacob LJ paragraph 8). In Crystal Fibres v Fianum  EWHC 2149 (Pat) it was described as difficult to construe and apparently quite narrow (per Floyd J as he then was, paragraph 24). These are the only cases the claimant’s lawyers were able to find which addressed the section. Neither of them had to address what the section actually means.
28. It is clear that s100 was passed to give effect to Art 35 of the Community Patent Convention, which uses essentially the same language. It is also reasonably clear that the section is supposed to meet the UK’s obligation to comply with Art 34(1) of TRIPS and, in that context, by complying with option (a) (see Art 34(2)).
29. The key question of interpretation of s100 is - what is a process for obtaining new product?"
|Civil Procedure Rules gateways for service -|
so much less exciting than the one in St Louis
Question 3: Is England and Wales is a proper place in which to bring the claim?
|Unless your application for service out|
is supported with evidence, your application
will be "out of service". Groan...
- Don't forget expert or factual evidence addressing the underlying merits of the claim. This evidence will help support whether there is a "serious issue to be tried" and whether the gateways are satisfied. The claimant here did not provide the evidence until prompted by the judge, so worth bearing this in mind at the offset.
- Each element of the service out test relies heavily on the evidence. Shipping forms, samples from trap purchases, certificates of analysis, conclusions from the patentee's technical director, etc were all probative in convincing the judge that the various grounds were met for service out. Applicants need to ensure that they compile as much evidence tying foreign defendants to the jurisdiction as possible and, in respect of common design, documents that evidence that the foreign defendant is tailoring and targeting their acts to the UK are key.
- For patent infringement proceedings, various gateways will apply, with the "injunction gateway" being your safest bet (depending on the facts). In light of the judge's comments, do not forget 6B 3.1.a which also seems like an easy win.
- Section 100, although notorious, may have greater applicability to process patents in light Mr Justice Birss' explanation. However, evidence demonstrating the identity or shared characteristics between the patentee's product and the defendant's product will still be necessary.