Carku v NOCO
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 04 August 2022 |
| Neutral Citation | [2022] EWHC 2034 (Pat) |
| Docket Number | Case No. HP-2020-000018 |
| Court | Chancery Division (Patents Court) |
[2022] EWHC 2034 (Pat)
Mr Justice Meade
Case No. HP-2020-000018
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Hugo Cuddigan QC and Edward Cronan (instructed by Powell Gilbert LLP) for the Claimant
James Abrahams QC and Adam Gamsa (instructed by Taylor Wessing LLP) for the Defendant
Hearing dates: 12–14 and 19 July 2022
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic. This Judgment was handed down remotely by email circulation to the parties' representatives and release to the National Archives. Deemed date for hand-down: 4 August 2022.
| Introduction | 3 |
| Conduct of the trial | 3 |
| The issues | 3 |
| The witnesses | 5 |
| The skilled person | 7 |
| The common general knowledge | 7 |
| Agreed CGK — Jump Starting a Car | 8 |
| Agreed CGK — Commercially available jump starters at the Priority Date | 9 |
| Competitor research and marketed products – disputed aspects | 10 |
| Redundancy and failure analysis | 12 |
| The XX/22 circuit | 12 |
| The Patent | 13 |
| Claims in issue | 17 |
| Collocation | 18 |
| “Ideas patent” | 18 |
| Claim Scope | 19 |
| Legal principles | 19 |
| “Reverse polarity sensor” | 20 |
| Features (g) and (h) timing point | 21 |
| Claim 19 manual override | 22 |
| Equivalence – relay v FET | 23 |
| Analysis | 23 |
| File wrapper | 25 |
| The Family C microcontroller connection point | 25 |
| Conclusion on the infringement questions | 26 |
| Validity | 26 |
| Obviousness – the law | 26 |
| Projecta | 26 |
| Teaching | 27 |
| Assessment | 28 |
| Claim 19 features | 28 |
| Richardson | 32 |
| Teaching | 32 |
| Claim 1 | 33 |
| Claim 19 | 34 |
| Krieger | 36 |
| Threats | 38 |
| The law of unjustified threats of patent infringement proceedings | 38 |
| Statutory provisions | 38 |
| The definition of a “threat” | 40 |
| Case law on alleged threats made via an online IP complaints portal | 43 |
| Amazon's IPR procedure | 45 |
| Submissions made by the parties | 47 |
| Analysis | 50 |
| Conclusions | 51 |
INTRODUCTION
This action concerns battery-powered car jump starters.
The Claimant (“Carku”), a company incorporated in the People's Republic of China, seeks the revocation of UK Patent GB 2 257 858 (“the Patent”), which is owned by the Defendant, an Ohio company (“NOCO”), which is a competitor of the Claimant.
The Claimant also alleges that statements made by NOCO to Amazon were actionable threats of patent infringement under s. 70 of the Patents Act 1977 (“the Act”). Those statements led to Amazon removing from sale on its site (“delisting”) various of the Claimant's products sold there by the Claimant's distributors.
NOCO denies that the Patent is invalid and has counterclaimed for infringement. It says that the communications to Amazon were not threats, and were justified if they were.
There has been parallel litigation in the USA. It is not of direct relevance, but Carku's expert Professor Ricketts gave evidence there, and that was the basis for a submission that his evidence was less reliable because he had seen an equivalent of the Patent before giving his views on its inventiveness.
CONDUCT OF THE TRIAL
The trial was conducted in Court. The oral evidence was given live. NOCO's expert, Professor Mitcheson, had COVID just before the trial. The timetable was adjusted slightly to ensure that he had had time for a full recovery.
Following discussion at the PTR the parties agreed that there was no need for cross-examination of the fact witnesses, who dealt with the threats issue.
Because of the claims and counterclaims the sequencing of the trial was a little unusual. Mr Cuddigan QC for Carku opened the case first, then Mr Abrahams QC for NOCO made a short opening and called his witness first. In closing Mr Cuddigan went first and later had a short reply. I am satisfied that this did not lead to any unfairness and both sides had a full say; neither said that they did not.
THE ISSUES
The issues are:
i) The scope of the common general knowledge (“CGK”). Most of the points were very minor.
ii) A number of points on claim scope relevant to validity over the prior art and to the infringement arguments.
iii) Whether certain of Carku's products infringe. There was no dispute of fact; infringement turns on claim scope. A large number of products were involved and these were organised into families. For the purposes of this judgment I just need to decide whether two claim features are met by equivalence, it being accepted by NOCO that the features are not present as a matter of normal interpretation. The parties agreed that they would be able, with my decision on the two points, to identify which families did and did not infringe. NOCO accepted that some products do not infringe at all, but it is worth noting that they were not the subject of the alleged threats.
iv) On one of the claim features where equivalence is invoked by NOCO, Carku relies on file wrapper estoppel.
v) Validity over three pieces of prior art:
a) US Patent Application No. 2004/0130298, “Krieger”, which is relied on for anticipation and obviousness.
b) US Patent Application No. 2013/0154543, “Richardson”, which is also relied on for obviousness.
c) A manual for a jump starter made by a company called Projecta “Projecta”. It is only relied for obviousness.
vi) In reply written submissions Carku sought to argue that the claims were invalid for Agrevo obviousness. I deal with this below and conclude that it was too late to add the point.
vii) The only claims of the Patent independently in issue are claims 1 and 19. Carku says that because claim 19 introduces a feature that is a mere collocation having no interaction with claim 1, it can combine prior art citations to knock out claim 19 without unallowable mosaicing.
viii) Carku also had a Formstein defence but this fell away given how the case of obviousness over Richardson was defended by NOCO.
ix) Whether NOCO's communications to Amazon were actionable threats. This is primarily a question of the interpretation of the communications in context, including, NOCO says, the context of its relationship with Amazon.
As will appear from the list above, there were many points; too many. Indeed the list above does not do justice to the details of the arguments made, since almost every point had multiple sub-points. For example, in relation to threats, Carku sought to rely on Parliamentary materials for Pepper v. Hart purposes and only gave up on it in closing. I have given an example from the Carku side, but both parties took too many points.
This was a category 2/3 patent case about a relatively simple electrical device intended to take 3 1/2 days in Court (we sat an extra-long day in Court to fit in the closing arguments and even then it was a very tight fit). It would have been welcome if the parties had reviewed and reduced the issues and/or promptly dropped those that ceased to have real relevance. There is obviously no love lost between the parties but that is not a reason to lose focus on the points that matter and those that do not.
The practical upshot of this is that I have aimed in this judgment to deal with only the points that matter, and only the main sub-points on each of them. It would be unwieldy and impractical to cover every sub-point in writing, but where I have not mentioned sub-points I have nonetheless borne them in mind.
THE WITNESSES
Each side put in evidence from one witness of fact in relation to threats. For Carku it was its CEO Mr Michael Zhang. For NOCO it was its President and Chief Visionary Officer Mr Jonathan Nook. As I have already mentioned, there was no cross-examination because the parties accepted some guidance I gave at the PTR that they might consider the meaning of the allegedly threatening communications as being purely an objective one.
Each side called one expert. I will deal with them in the order in which they were called at trial.
NOCO's expert was Professor Paul Mitcheson of Imperial College London. He is a Professor of Electrical Energy Conversion.
Carku made no criticism of Prof Mitcheson's independence or manner of giving evidence, and rightly so: he was scrupulously fair and honest and willing to agree to Carku's propositions where they had force. Carku did however make the following points:
i) That he lacked direct experience in the industry, although it agreed that this was remedied to some extent by an acceptance that the skilled person would conduct research on competitors' products. In my view his lack of direct experience did show and made his evidence on the approach of the skilled person a little less cogent than that of Prof Ricketts, so I have taken that into account.
ii) That he took an overly academic approach to the prior art and addressed obviousness only from the point of the finished items in the preferred embodiments. I agree that he did rather take the attitude that a “feature complete” product such as Projecta and Richardson (Krieger is a lot less fleshed out) would not readily be changed and this artificially limited his willingness to see or consider changes which at a technical level were uninventive. I would not have called this “academic”, although it does not matter what label one applies.
iii) That his written reports lacked a Pozzoli analysis at question 4. I do not accept this. The point made was essentially that having been instructed about Pozzoli he said what was obvious over the prior art without expressly calling out why the change that would be necessary to reach the claims of the Patent was not obvious. I think this is to treat the P...
To continue reading
Request your trial
-
The Noco Company v Shenzhen Carku Technology Company Ltd
...THE HIGH COURT OF JUSTICE BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES INTELLECTUAL PROPERTY LIST (ChD) The Hon Mr Justice Meade [2022] EWHC 2034 (Pat) Royal Courts of Justice Strand, London, WC2A 2LL Andrew Lykiardopoulos KC and Adam Gamsa (instructed by Jones Day) for the Hugo Cuddig......
-
Philip Morris Products S.A. v Nicoventures Trading Ltd
...Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 1377 (Pat) at [201] and Shenzhen Carku Technology Co., Ltd v The Noco Company [2022] EWHC 2034 (Pat) at 91 As I have indicated, the specification of EP 830 discloses and even illustrates an HNB system in which the heater is in the consum......
-
Abbott Diabetes Care Inc. v Dexcom Incorporated
... [2007] EWHC 1040 (Pat) at [72]. Obviousness should be addressed at the level of the generality of the claims, see Shenzehn Carku v NOCO [2022] EWHC 2034, 577 Dexcom drew particular attention to the following points from Actavis: i) First, that it is trite that the mere fact that the skille......
-
Nokia v OPPO '023 trial
... [2019] EWHC 107 (Ch) and said that the Patent was an “ideas patent”. 173 I dealt with a similar submission in Shenzhen Carku v Noco [2022] EWHC 2034 (Pat). I maintain the view I expressed there; ideas patents are not a separate statutory category and it is necessary for a party attacking ......