Datacard Corporation v Eagle Technologies Ltd

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeThe Hon Mr Justice Arnold,Mr. Justice Arnold
Judgment Date14 February 2011
Neutral Citation[2011] EWHC 244 (Pat)
Date14 February 2011
Docket NumberCase No: HC09C04263, HC10C0081

[2011] EWHC 244 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

The Hon Mr Justice Arnold

Case No: HC09C04263, HC10C0081

Between:
Datacard Corporation
Claimant
and
Eagle Technologies Limited
Defendant

Henry Carr QC and Michael Hicks (instructed by Stephenson Harwood) for the Claimant

Thomas Hinchliffe and Joe Delaney (instructed by CMS Cameron McKenna LLP) for the Defendant

Hearing dates: 17–20, 24–25 January 2011

Approved Judgment

The Hon Mr Justice Arnold Mr. Justice Arnold

Contents

Topic

Paragraphs

Introduction

1

The parties

2–6

Technical Background

7–25

Printer technologies

8–18

Radio Frequency Identification ("RFID") technology

19–25

The expert witnesses

26–38

THE RFID PATENT

39–127

The Patent

40–60

The claims

61–64

The skilled team

65–75

The law

66–68

The skilled team to whom the RFID Patent is addressed

69–75

Common general knowledge

76–79

Construction

80–88

Integer [1]

82

Integer [3]

83–86

Integer [8]

87–88

Infringement

89–90

Obviousness

91–99

Obviousness over Fargo

100–118

Fargo

100–102

Obviousness of claim 11

103–118

Obviousness over ENCAD

119–120

Insufficiency

121

Added matter

122–127

The law

122–123

Claim 11

124–127

THE ERROR LOADING PATENT

128–236

The Patent

129–142

The claims as proposed to be amended

143–152

The skilled team

153

Common general knowledge

154–161

Construction

162–165

Infringement

166–185

Obviousness over Fargo Pro-L

187–216

Fargo Pro-L

186–191

Claim 1

192–203

Claims 6, 8, 10 and 11

204–205

Claims 12, 13 and 14

206–213

Claim 19

214

Claim 22

215–216

Obviousness over Brother

217–223

Brother

217–219

Obviousness

220–223

Obviousness over Sharp

224

The application to amend

225–236

Claim 1

225

Claims 11,13 and 14

226

Claim 11

227–233

Claim 13

234–235

Claim 14

236

THE TRADE MARK CLAIMS

237–374

The witnesses

238–240

The Trade Marks

241–242

The key provisions of the Directive

243–244

Infringement under Article 5 (1)(a): the law

245–272

The fourth condition

247–249

The fifth condition

250–253

The sixth condition

254–272

Infringement under Article 5 (1)(b): the law

273–289

Infringement under Article 5(2): the law

290–295

The defence under Article 6 (1)(c): the law

296–299

The average consumer in the present case

300–304

The reputation of the Trade Marks

305

The alleged infringements: prior to 26 November 2009

306–356

The signs and uses complained of

306–312

DataCard's case under Article 5(1)(a)

313–331

DataCard's case under Article 5(1)(b)

332–338

DataCard's case under Article 5(2)

339–344

Eagle's defence under Article 6(1)(c)

345–356

The alleged infringements: 26 November 2009 to February 2010

357–367

The signs and uses complained of

357–358

DataCard's case under Article 5(1)(a)

359–360

DataCard's case under Article 5(1)(b)

361–365

DataCard s case under Article 5(2)

366

Eagle's defence under Article 6(1)(c)

367

The alleged infringements: February 2010

368

The signs and uses complained of

368–373

DataCard's case under Article 5(1)(a)

369–370

DataCard's case under Article 5(1)(b)

371

DataCard's case under Article 5(2)

372

Eagle's defence under Article 6(1)(c)

373

The alleged infringements: since February 2010

374

Comparative advertising

375

CONCLUSIONS

376

Introduction

1

In these actions the Claimant ("DataCard") alleges that the Defendant ("Eagle") has infringed two patents and two registered trade marks owned by Datacard: (i) European Patent (UK) No. 1 458 572 ("the RFID Patent"), (ii) European Patent (UK) No. 1 534 530 ("the Error Loading Patent"), (iii) UK Registered Trade Mark No. 1399698 ("698") and (iv) UK Registered Trade Mark No. 1399699 ("699") (698 and 699 collectively, "the Trade Marks"). Eagle denies infringement and counterclaims for revocation of both the Patents. DataCard has applied to amend the Error Loading Patent, and it proposes to amend the RFID Patent although it has not yet formally applied to do so. There is no challenge to the validity of the Trade Marks. The issues relating to the Patents and those relating to the Trade Marks are entirely distinct.

The parties

2

DataCard is one of the biggest suppliers in the world of card printers and related products and services, including printer ribbons. Card printers are used to print on plastic cards such as credit cards, ID cards, membership cards, loyalty cards and gift cards. DataCard also supplies printers for printing passports, driving licences and other documents. DataCard's card printers include large, mid-size and desktop models. These actions principally concern the desktop models, which include the SP Plus and CP Plus ranges. In the UK DataCard markets its desktop card printers through six authorised distributors.

3

DataCard markets its desktop card printers and ribbons under a number of trade marks. Its house mark is DATACARD. This is correctly presented as "DataCard", but is often written as "Datacard" (or sometimes "Data card") by third parties. DataCard uses a variety of product marks in conjunction with this house mark, often with sub-brands as well. Thus one product referred to at trial was the DataCard ImageCard II Plus.

4

Eagle is a relatively small company that sells card printers manufactured by a range of different manufacturers, including those of DataCard. In addition, Eagle sells printer ribbons and other related products. As well as selling printer ribbons made by the various printer manufacturers, again including Datacard, it also sells compatible printer ribbons i.e. ribbons that work in a particular manufacturer's printer, but are made by someone else. The compatible ribbons sold by Eagle are made in China by a company called Kanon. Previously Eagle obtained compatible ribbons made in the USA by Sony Chemicals.

5

Eagle markets the printers, ribbons and other products primarily through a large number of resellers. It is also sells directly to end users, however, in particular via its website located at www.eagletechnologies.co.uk. As well as maintaining its own website, Eagle also provides some of its resellers with a "managed website service". By this, it provides its resellers with a version of its website that the reseller can customise and make its own. The core parts of a reseller's website provided under the "managed website service" are the same as Eagle's website.

6

Eagle markets all its compatible ribbons (i.e. regardless of the manufacturer of the printer) under the trade mark PLUS-RIBBON. This is correctly presented as "plus-ribbon", but is often written as "Plus-Ribbon". Although it uses the trade mark EAGLE on its website and in its marketing materials, it does not use this as a house mark for its compatible ribbons.

Technical background

7

This case involves two main areas of technology. Printer technologies

8

There are a number of different types of printer technology. This case principally involves thermal transfer printing. In a monochrome thermal transfer printer, resin from a ribbon is melted onto the surface to be printed by a heated print head. In a colour thermal transfer printer, the dye from a ribbon is diffused into the surface to be printed by the print head. Thermal transfer printing is used in barcode label printers, card printers and photograph printers. It was also used for a time in fax machines before laser printing became affordable.

9

Thermal transfer ribbons comprise a thin polyester backing coated with dye. In colour printing different areas of the ribbon are coated with panels of different colours: yellow (Y), magenta (M), cyan (C) and black (K). In card printing the ribbon may also be coated with clear protective topcoat (T). Ribbons are quite expensive and so wastage is undesirable.

10

Thermal printing ribbon needs to be matched to the settings of the thermal print head. This is because differences in chemistry can affect the optimum temperature settings of the print head. Colour ribbons from one manufacturer can produce different colours to ribbons from another manufacturer. This can be compensated for by adjustments in the print driver software which change the temperature settings of the print head.

11

Card printers typically use a number of different types of ribbon for different purposes. The printer needs to know what type of ribbon has been installed. When printing in colour, it also needs to know where the start of a sequence of panels is on the ribbon.

12

Another type of printer technology is ink jet printing. In an ink jet printer liquid ink is stored in a cartridge and is sprayed through fine nozzles onto the surface to be printed.

13

The use of inked ribbons wound on cylinders has been well known in various kinds of printing, including thermal transfer printing, for many years. Typically there are two cylinders (also called rolls and cores). One (called the supply cylinder) carries the unused ribbon. The other (called the take-up cylinder) takes up the ribbon after it has been used for printing. One cylinder may be driven to advance the ribbon (usually the take-up cylinder) or both cylinders may be. A common way to drive the cylinder is by means of ribs on the inside of the cylinder which engage with splines on the outside of spindles or hubs on the printer.

14

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2 firm's commentaries
  • IP Bulletin - March 2011 Edition - Cases From February 2011
    • United Kingdom
    • Mondaq United Kingdom
    • 19 April 2011
    ...by completing a form on the EPO's website. TRADE MARKS High Court - post-sale confusion Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), Arnold J, 14 February 2011 In the High Court, Arnold J has held that ECJ case law supports the proposition that post-sale confusion ca......
  • IP Snapshot - March 2011
    • United Kingdom
    • Mondaq United Kingdom
    • 17 March 2011
    ...of the product (YUMMY DOUGH). For the full text of the decision, click here. PATENTS Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), 14 February 2011 In a double-patent, double-trade mark case before the High Court, Mr Justice Arnold has handed down a judgment revoking ......
2 books & journal articles
  • THE SENSE AND SENSIBILITY IN THE ANTI-DILUTION RIGHT
    • Singapore
    • Singapore Academy of Law Journal Nbr. 2012, December 2012
    • 1 December 2012
    ...and commercial matters”. 48General Motors Corp v Yplon SA[1999] ETMR 122 at [21]. 49DataCard Corporation v Eagle Technologies Ltd[2011] RPC 17 at [291]. 50 This reason was referred to by the Supreme Court in Moseley v V Secret Catalogue Inc537 US 418 at 431 (2003). 51 Note that prior to 199......
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review Nbr. 2012, December 2012
    • 1 December 2012
    ...this point. In Och-Ziff Management Europe Ltd v OCH Capital LLP[2011] FSR 11 (‘Och-Ziff’) and DataCard Corp v Eagle Technologies Ltd[2011] RPC 17 (‘DataCard’), the English High Court found a likelihood of confusion on the facts of the case and the claim for infringement succeeded. When the ......

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