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Spot of bother - no shortcut to proper claim analysis

Date: 14 May 2018

By Hugh Dunlop

 

It is unusual these days for claims of patent and design infringement to be enforced in one court action, but this was the case when RN Ventures brought out its MagnitoneTM product in competition with L’Oréal’s Clarisonic™ range of skin cleansing brush products.  L’Oréal sued for patent infringement and registered community design infringement and won on both counts.

 

The case for design infringement is an excellent case study in how the UK Patents Court assesses the scope of protection of a registered design, and we discuss that aspect of the case in our sister newsletter Design features. Meanwhile, here in Patent issues, we select this case for review because it has several takeaway points for patent owners and practitioners.

 

L’Oréal’s skin cleansing brush patent described how acne can arise when bacteria multiply within a blocked skin pore, leading to rupture of the follicular wall and an inflammatory response.  It said that acne could be prevented by opening the skin’s pores and loosening the sebaceous plugs that block the pores. Application of differential motion locally to the pore opening would open a blocked pore. The skin area is deformed slightly and then released to a relaxed position and then deformed slightly in the opposite direction and then again released to a relaxed position, at a specified frequency. This was said to result in the plugs being loosened from their position in the skin pores. The loosened plugs could then be removed by wiping or washing, permitting normal skin secretion of lipids, and avoiding more fully developed acne.

 

The claims called for a device that reciprocally moves at least one moving contacting element (i.e. a brush bristle or tuft of bristles) bi-directionally through a neutral position relative to at least one adjacent contacting element (bristle or tuft) to produce alternating tension and compression of the skin. Thus “when positioned so that the end faces of the contacting element contact the skin, an action on the skin … is produced to remove sebum plugs from skin pores.”

 

The figures (right) showed alternating shear movement of skin around a blocked pore.

 

RN Ventures had a device that did not drive bristles relative to other adjacent bristles. Their device was, they believed, more akin to prior art devices that reciprocally drove all bristles together.

 

They presented a Gillette defence –  i.e. a squeeze argument to the effect that it did not matter whether the claims were to be interpreted broadly or narrowly, because if broad, they could not be valid and if narrow, they could not be infringed.

 

RV Ventures were very confident in their Gillette defence. The prior art had bristles that were all driven through “use of a single set of elements” and the Court held that such an arrangement fell outside the claim.

 

They were so confident that when the patent was held to be valid and infringed they asked the judge (Mr Justice Henry Carr) to review his decision as it appeared internally inconsistent. “Not so” said he. The claim refers to the effect on the skin (the bristle tips) and not the way the bristles are driven (at their roots).  The same effect can be achieved using bristles of differing flexibility, and the evidence indicated that at least one of the defendant’s products used bristles of differing flexibility and therefore fell within the scope of the claim on a classic interpretation (without having to invoke a doctrine of equivalents).

 

L’Oréal’s witness admitted that bristles of uniform length and thickness achieve the same result, but there was no evidence before the court that the prior art bristles were non-uniform. Furthermore, the embodiment described in the patent that was held to fall outside the claim was not specific on this point, so RN Ventures could not rely on that. 

 

Frustratingly for the defendants, the line between the claim and the prior art was fuzzy and they neither clarified the line based on the operation of the prior art nor that their product lay on the safe side of the line. 

 

Register your license if you want to recover costs

 

As a general rule, in the UK, the loser has to pay the winner’s legal costs. Having won the infringement action, a further hearing was necessary to adjudicate on the level of costs L’Oréal should be awarded, because one of the claimants (L’Oréal (UK) Ltd.) was an exclusive licensee under the patent and there had been delay in registering the licence on the Register of UK Patents.

 

It was proper for the exclusive licensee to be a named claimant, because that party is the one that suffers damage in the UK.   But the UK Patents Act has a provision that penalises a licensee that does not register is licence.

 

Section 68 of the Patents Act 1977 prevents the recovery of patent infringement costs by the holder of the exclusive licence and as a matter of discretion, Carr J. decided to reduce the overall amount recoverable by the claimants in order to reflect the purpose of s 68, namely to ensure the accuracy and completeness of the register by providing a costs sanction for failure to register an exclusive licence within six months of the parties entering into such a transaction.

 

People need to know who is on the register. This section is aimed at making the people who own the monopolies get on  the register. 1

 

Costs Decision

 

70% of the infringement took place before the exclusive licence between L’Oréal SA and L’Oréal UK was registered on the patent’s register and approximately 30% had occurred post-registration.

 

Half of the legal costs were attributable to the patent infringement proceedings (and the rest to the design infringement action and the patent revocation action). 

 

Carr J ruled that the costs should be allocated fifty-fifty to the two claimants.

 

So the appropriate deduction from the award of costs (the “windfall” to the defendant for the failure on the part of the licensee to register the licence) was 70% x 0.5 x 0.5 = 17.5%.

 

Comment

 

This decision presents a salutary tale for anyone seeking to rely on a Gillette defence. There is no substitute for, nor shortcut to, proper claim analysis. Unfortunately, however, post Actavis, claim analysis is doubly complicated by the need to consider the doctrine of equivalents.

 

In L’Oreal v RN Ventures, the Court had to consider whether the arrangement that was described (albeit incompletely) and that fell outside the claim meant that there was a “deliberate selection” from among the possible equivalents. “Deliberate selection” is a doctrine that has grown in German patent law to curb some of the excesses of the doctrine of equivalents. Carr J. declined to apply this principle, because he was able to find infringement on a more traditional interpretation (i.e. without resorting to a doctrine of equivalents).

 

For the present at least, it seems that the UK Patents Court would prefer to reach a finding of infringement on more settled law if at all possible.   

 

 

1.   Schütz v Werit [2013] RPC 16 para. [85], approving LG Electronics v NCR Financial Solutions Group Ltd [2003] FSR para. [24]

 

 

 

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