Zeno, dead cats, veiled threats ...

Dead cats had an airing in the Patents Court today, in Zeno Corp (Formerly Known As Tyrell Inc) & Another v BSM-Bionic Solutions Management GmbH & Another [2009] EWHC 1829 (Pat), a patent infringement ruling by Mr Justice Lewison.

The invention in this case was a hand-held unit for the treatment of insect stings and insect bites. Zeno didn't use it for that purpose, but for the treatment of acne, accompanied by an instruction leaflet that says it should not be used for insect or spider bites or stings. Following receipt of a letter from the patent owner's attorneys the Boots chain of chemist stores stopped ordering Zeno, although they were later persuaded to reorder. This action, predictably, had a counterclaim for invalidity and a claim relating to unwarranted threats to bring infringement proceedings.

Finding the patent valid but not infringed, and agreeing that the letter to Boots was an unjustified threat, the learned judge had this to say:

"... if the manufacturer of a product does not design or intend it to be used for the specified purpose, how does one judge whether it is "suitable" for use for that purpose? Is it simply a question of whether something is capable of being used for a specified purpose? After all, Terrell [a leading UK practitioners' work on patent law] is capable of being used as a doorstop or a paperweight; and a popular cartoon book of a few years ago was entitled "101 Uses for a Dead Cat". Was it "suitable" for all those uses? Closer to home, some of the feedback relating to Riemser's own product extolled the efficacy of a hot mug of tea or a lit cigarette end in applying heat to the site of insect bites. But are these "suitable" things to use?".

The IPKat's long-standing friend and national treasure Trevor Cook (Bird & Bird) wrote to draw the Kat's attention to this decision and to offer the kind hope that he would not be offended by reference to dead felines. The Kat was able to reassure him that it was not uses for dead cats that concerned him; rather it was people who had no uses for live cats ...

Merpel adds, the bit about "threats" is quite interesting since the letter was a funny sort of threat really. As the judge says:

"i) The letter did not mention proceedings or explicitly threaten them;

ii) The letter asserted that "up to this point" the writer could see no difference in the technical solution; but contained a request for the reason why the recipient thought that it need not "take into consideration" the patent;

iii) The writer of the letter was not an English lawyer to whom the conduct of proceedings about patent infringement in England would usually be entrusted.

iv) On the other hand, the letter was not addressed to the manufacturer of Zeno, nor even to Boots head office. It was sent to the stores that were actually stocking the product".

The letter was however written to retailers rather than to Boots' head office. The judge concluded:

"It is not a question of how Boots understood the letter; but how a reasonable person in the position of Boots would have understood it. Read in context, through the eyes of a retailer, the letter amounted, in my judgment, to a veiled threat of infringement proceedings".

101 Uses for a Dead Cat here