Background

On 30 November 2016 the Dutch District Court in The Hague has ruled in the case of printer cartridges, Hewlett-Packard v Benson Image et al. HP sought an injunction to restrain the sale of generic cartridges by three defendants, based on EP 1 737 669 (EP 669). In response, the defendants contested the validity of EP 699 based on added matter and lack of novelty and inventive step. The Court declared the patent valid and issued an injunction against two of the three defendants.

The patented technology

EP 669 concerns a fluid ejection device (cartridge) in which ink is discharged by heating drop generators. A specific drop generator is selected by combining several signals that run across the lines of an electrical matrix. The matrix also includes two address generators to generate address signals (electrical current) which, together with other signals, determine which individual drop generator is activated and subsequently produces ink. Furthermore, so-called “select lines” in this electrical matrix at the same time provide current to the address generators as well as to one of the many drop generator groups, thereby reducing the number of electrical lines needed to distribute current to all parts of the cartridge printhead.

Added matter

The defendants argued that the claims of EP 669 contained added matter and that the patent was therefore invalid. According to article 75(1)(c) of the Dutch Patents Act 1995 and article 123(2) of the EPC, a patent is invalid if the subject of the patent is not encompassed by the contents of the filed application. Adding matter to the patent is allowable only if it can be “directly and unambiguously” derived from the original application and thus does not present the average skilled person with new information (the so-called gold standard). An example of added matter is an intermediate generalization, in which only one or a few – instead of all – features of a specific embodiment disclosed in the specification are included in a claim. In order to determine whether an average skilled person would be presented with new information in case of an intermediate generalization, it is helpful to assess whether the features that are in the claim are functionally and structurally related to the features of the specific embodiment not in the claim (if so, this selective inclusion of features is impermissible).

The added matter arguments were denied by the Court based on two different aspects of the above described gold standard, which shows that a patent holder has various arguments at its disposal. In short, the patent holder can either argue that the average skilled person already learned from the original application that (1) the included feature does work independently from the features not included or (2) that the included feature does not work without the features that were not included and would treat all the features as read in to the claim. In both cases, the average skilled person is not presented with new information, as long as the information could already be derived directly and unambiguously from the original application.

In this specific case for example, selectively including timing signals without also including control signals – which signals coincide with each other and are always mentioned together in the patent – was not considered an impermissible intermediate generalization. According to the Court, the average skilled person would understand that the control signals are not absolutely necessary and therefore do not functionally and structurally relate to the timing signals. Consequently, presenting the average skilled person with the information that the invention works without the control signals, was not a problem.

On the other hand, selectively including timing signals without also including pre-charge signals was also not considered an intermediate generalization, because the average skilled person would understand from the original application that the pre-charge signals are necessary for the operation of the product (“warming up” the drop generators with a pre-charged power signal makes the cartridges work faster). Not adding the pre-charge signals to the text of the claims would not make the average skilled person think that an embodiment without the pre-charge signals was claimed and therefore did not present him with new information, according to the Court.

The burden on defendants disputing infringement

The Court upheld a strict interpretation as to when the defendant had disputed the alleged infringement sufficiently enough to impose a subsequent burden of evidence on the patent holder.

The patent holder substantiated the infringement claim with evidence of infringement for only two of the fifteen types of cartridges. Nonetheless, the Court ruled that the statement that the patent holder investigated a part of the other types of cartridges was sufficient to assume that the other types of cartridges of the defendants also infringed the patent, even though the investigated cartridges were neither purchased in The Netherlands, nor purchased from the defendant. All in all, the Court did not consider it plausible that cartridges which have the same product type number, and which are suitable for insertion in the same printer, would differ in the way they receive electrical signals. In light of this similar fact evidence, the defendants should have provided an explanation as to why and how their cartridges work differently than the patent holder assumed. As a result, defendants in similar cases may be faced with the time and expense of collecting their own technical evidence of non-infringement, which may be especially burdensome if the allegedly infringing articles were made by third parties.

Other matters

Amongst the remedies and relief sought by patent holders if there is a finding of infringement is information from the defendants regarding the extent of the infringing activity (e.g. numbers of products sold, revenues, etc.) so that the financial compensation can be calculated. It has long been common for the patent holder to also request that the information is subsequently audited and certified by a registered accountant, in order to provide an assurance that the information is accurate / reliable. However, the need for and relevance of an audit certificate by a registered accountant is currently heavily discussed in the Netherlands because professional codes of conduct prohibit accountants from giving any assurances and/or drawing any conclusions concerning this type of information. In line with this expressed concern, the Court dismissed the claim to an audit certificate from a registered accountant. Intellectual property right holders are therefore dependent on the information provided by defendants, which could (also) give rise to execution issues in the future.

Finally, the Court confirmed that if a patent holder files an application for seizure based on a certain patent, a writ of summons based on another patent is not considered a claim in the principal action as mentioned in article 1019i of the Code of Civil Procedure, even though both patents (allegedly) affect the same type of products. This means that a seizure based on a patent that is not invoked anymore later on, is wrongfully executed and ceases to have effect after deposition of a 1019i-declaration with the Court. The patent holder was held liable for the damages suffered as a result of the seizure.