FNM Corp Ltd v (1) Drammock Int Ltd (2) LEC (L'pool) Ltd, Ch Div (Arnold J), 15/06/09, [2009] EWHC 1294 (Pat)

by Christy Rogers 15/07/2009

FNM was the proprietor of a European patent concerning a cooling spray consisting of water and dimethyl ether (DME) and other minor components ("the Patent"). The cooling spray was intended for uses such as cooling the skin and body in hot weather, and cooling the inside of cars and other enclosed spaces.

There was no dispute that, if the Patent was valid, then Drammock had infringed by selling, and LEC had infringed by manufacturing, a cooling spray product to the formulations.

The defendants argued that the Patent was anticipated by a number of prior art publications and by prior use by LEC, and/or was obvious over those items of prior art and/or the common general knowledge.

Mr Justice Arnold was required to deal with a number of points of claim construction, of which the most important was to construe the word "for" in the phrase "for providing a supply of water based cooling mixture" within two product claims of the Patent.

The claimant argued that the phrase should be read as meaning "for the purpose of". This would restrict the scope of the claims to compositions which were intended for specific types of cooling spray, so that prior uses which were not directed to these purposes would not anticipate the patent. The claimant relied for support of this contention on the recent Court of Appeal decision Actavis v Merck [2008] EWCA Civ 444.

Arnold J disagreed, finding that the correct construction was the traditional and broader "suitable for", which was proposed by the defendants. The practice of allowing use claims, where the only novelty lay in the purpose of the use, had never been extended to product claims, either in the English courts or in the EPO.

It followed that the claims were anticipated by a number of prior art publications which disclosed water/DME compositions intended for various uses. On the evidence, the claims were also anticipated by the prior use of LEC.

The claims were also obvious over the common general knowledge of the aerosol development technician, and over a number of the cited prior art publications.

Addressing the defendants' counterclaim for unjustified threats, Mr Justice Arnold considered whether certain communications conveyed a threat of proceedings, and found that they did because they would have reasonably been understood as doing so. He then considered whether certain communications were protected by s.70(4)(a) as being threats in respect of manufacture, and found that, when read together with the undertakings demanded, the threats related also to supplying to customers, and so were not protected.

Mr Justice Arnold then turned to the new s.70(2A), which reads:

"If the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent -

(a) the claimant shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;

(b) even if the claimant does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect."

As to whether FNM had "reason to suspect" that the patent was invalid, the Judge considered that an objective assessment was called for, based upon what FNM knew at the time of each threat. FNM's knowledge included information which had been brought to its attention by the defendants.

FNM's knowledge at the relevant time included the fact that some of the prior art which the Judge had found to invalidate the Patent had been cited against FNM's corresponding UK patent application, which had been withdrawn when the European Patent was granted. However, it was relevant that FNM had been able to persuade patent offices in the USA and Japan to grant corresponding patents in the face of that prior art. Therefore Arnold J found that the citation alone did not give FNM reason to suspect that the Patent was invalid.

Mr Justice Arnold also found that mere assertions that the Patent was invalid, made by the defendants or their representatives in correspondence, did not give FNM reason to suspect that the Patent was invalid, because the assertions were in general terms and unsubstantiated.

The salient point for patent lawyers is that in order to avoid the s.70(2A) defence to a potential threats action, the substance of a potential counterclaim for invalidity should be communicated to the patentee at the earliest possible stage in a dispute, and any prior publications likely to invalidate the patent should be identified to the patentee. Naturally, this may have the further beneficial effect of precipitating an early settlement.