The Court of Appeal for England and Wales gave its ruling today on the controversial and vigorously-litigated dispute of European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192, with Lord Justice Jacob delivering judgment on his own behalf and for his colleagues (Lord Justice Lloyd and Sir John Chadwick). You can read the text in full here on BAILII. This was an appeal against the decision of Mr Justice Kitchin here (noted by the IPKat here). In short, Kitchin J found that DSS's banknote anti-forgery technology patent had been amended so much in the course of its early life that, by the time it was granted, it was quite different from the invention for which patent protection was originally sought.Right: the IPKat applauds the Court for its use of illustrations. If he can't follow the words, he can at least enjoy the pictures ...
In a fairly short decision by modern English standards (just 52 paragraphs) the Court of Appeal firmly dismissed DSS's appeal. The vast bulk of this judgment consisted of a helpful review of the technological background and a painstakingly careful review of the evidence. Having done all this, the Court of Appeal had no doubt that the trial judge's reasons for his holding were absolutely sound.
The IPKat feels that disputes of this nature, involving allegations of infringement and claims fo revocation in a range of closely connected jurisictions with the same substantive laws, though different evidential and procedural rules, are a good argument in favour of mediation [says Merpel -- if you're man enough to handle it] or centralised patent litigation in Europe.
Other ECB/DSS disputes have been noted by the IPKat here (Dutch patent held valid), here (French patent revoked) and here (German patent valid).
DSS's patent deceased -- in the UK, at any rate
Reviewed by Jeremy
on
Wednesday, March 19, 2008
Rating:
Reviewed by Jeremy
on
Wednesday, March 19, 2008
Rating:
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I can't believe you made no comment about the Angora cat analogy at paragraph 5:
ReplyDelete"Professor Mario Franzosi likens a patentee to an Angora cat. When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze."
On a more serious note, the judgment does make an important point about the level of implicit disclosure required to avoid added subject matter. At paragraph 16:
"If the document is a puzzle, then that may well be all it is – not a clear teaching, express or implied. One should not strain to make sense of a document which is actually lacking in clarity. If one does one is in danger of adding matter oneself."
The question I have now is why the German and Dutch courts found otherwise.
David, I should have thought the answer well clear: the English court reads the doc in its own language, the language also of its author, so is full of self-confidence what it means. Mainland Europe, including the EPO, reads it as a foreign language. Take a doc in French instead. Try arguing with a Frenchman what is directly and unambiguously derived to the hypothetical skilled reader of that document. Do you think you will agree? No wonder German judges see no point in trying to distinguish what a doc discloses from what it makes obvious (with hindsight). It folows inevitably from their separate track handling of infringement and validity, which Robin Jacob has a go at. I liked the Angora cat too, but I also liked the remark that the new matter is in claim 1 because the Technical Board of Appeal suggested its inclusion. What a joy this case is.
ReplyDeleteI had heard the Angora cat analogy before, but as the "wet cat" analogy: to get the patent granted, you wash the cat, so that its fur sticks to the meager body. After the grant (+ 9 months) you blow-dry the cat.
ReplyDeleteI'm certain that the IPKat, as well as anyone concerned about the welfare of felines, prefers the Angora cat analogy, though.
The thing about the Northern European wet cat is that it's the cat owner who decides when to make the cat big or small. As one does. The point about the more southerly emotional Angora is that it's all a bit uncertain how big or small the cat is going to decide to be, at any particular moment.
ReplyDeletehttp://seekingalpha.com/article/67076-document-security-systems-no-long-term-value-plenty-of-red-flags#European
ReplyDeleteThis article goes over the lawsuit starting about halfway through the page. Anyone have any thoughts on the analysis?