M-Systems Flash Disk Pioneers Ltd v Trek 2000 International Ltd
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR JUSTICE KITCHIN,MR. JUSTICE KITCHIN |
| Judgment Date | 28 January 2008 |
| Neutral Citation | [2008] EWHC 102 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: CH/2006/APP/0852 |
| Date | 28 January 2008 |
[2008] EWHC 102 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
ON APPEAL FROM THE COMPTROLLER-GENERAL OF PATENTS, DESIGNS AND TRADE MARKS
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Kitchin
Case No: CH/2006/APP/0852
CH/2006/APP/0899
Peter Prescott QC and James St Ville (instructed by Redd Solicitors LLP) for the Appellants
Mark Platts-Mills QC and Jonathan Hill (instructed by Marks and Clerk Patent Attorneys) for the Respondent
Hearing dates: 27 – 29 November 2007
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
This is an appeal from a decision of Mr R J Walker, the Divisional Director acting as Hearing Officer for the Comptroller, dated 8 November 2006, to revoke patent number GB 2371653 (“the Patent”) in the name of the first appellant.
The Patent relates to “a portable data storage device” and, more specifically, a device for connecting to a computer via its Universal Serial Bus (“USB”) socket and which has a solid state memory – typically a flash memory. It is based upon international patent application number PCT/SG00/00029 (“the application”) filed on 21 February 2000. In due course it entered the national phase and proceeded to grant on 6 August 2003. M-Systems commenced the proceedings against the second appellant (the previous proprietor of the patent and the first appellant's parent company) but the proceedings in the Patent Office proceeded as if the first appellant was a party.
The respondent (“M-Systems”) commenced these proceedings for revocation on 15 December 2003, contending that the Patent lacked novelty or an inventive step, that the specification did not disclose the invention completely and clearly enough for it to be performed by a person skilled in the art and that the matter disclosed in the specification extended beyond that disclosed in the application as filed.
On 9 March 2004, the appellants (“Trek”) filed a counterstatement denying all the grounds of objection. On 24 June 2004, it filed an amended counterstatement together with an application to amend the Patent under section 75 of the Patents Act 1977 (“the 1977 Act”).
On 7 March 2005, the matter came on for hearing before the Hearing Officer. After three days it was adjourned until 25 June 200Shortly before the resumed hearing, Trek made a further application to amend the Patent by introducing two new independent method claims. The issues before the Hearing Officer were, in summary:
i) whether the Patent as granted disclosed matter extending beyond that disclosed in the application;
ii) whether the two sets of amendments were allowable, both substantively because they would not involve the disclosure of additional matter and in the exercise of the Hearing Officer's discretion;
iii) whether the Patent as granted or as proposed to be amended claimed an invention which was new and involved an inventive step; and
iv) whether the Patent was insufficient.
The Hearing Officer found in favour of M-Systems on issues ii) and iii) but against it on issues i) and iv). As a result the claim succeeded and the Hearing Officer ordered the revocation of the Patent. All these issues, save insufficiency, arise on this appeal.
Underlying the issues were two fundamental differences between the parties. The first concerned the disclosure of the application. The second concerned the proper interpretation of the claims both as granted and as proposed to be amended.
The disclosure of the application
Trek contended the application disclosed a solid state storage device that could function as an alternative to the conventional floppy disc or CD ROM and which could be plugged into the USB socket of a computer without the use of a cable. There is no doubt that by February 2000 various devices had been proposed for transferring data which involved the use of a device connected to the host computer by a cable and a number of them were cited as prior art in this case. One called “Estakhri” (WO 99/ 45460) is depicted below:
Another was called the “Fujifilm SM-R1”:
By contrast, Trek argued, the invention described in the application could be made as small as one's thumb, had no cable and so plugged directly into the USB socket. Such a device was placed on the market by Trek a few days after the filing of the application and met with rave reviews and enormous commercial success. It was called the “ThumbDrive” and is shown below:
M-Systems countered that this was an ex post facto attempt by Trek to redefine the invention. It accepted the application disclosed an invention which comprised a portable solid state storage device which could be plugged into the USB port of a host computer and function as an alternative to a magnetic disk or CD ROM but contended it was silent as to whether that connection should be made with or without a cable. The connection is described generally by the term “coupled” and, so the argument went, it could reasonably be deduced that the inventor had no interest in the form of connection and did not consider it to be part of his invention —for otherwise he would have mentioned it.
On this point the Hearing Officer preferred the submissions of M-Systems. Trek submits he fell into error in so doing and this forms one of the main planks of the appeal. In support of its position Trek now seeks to rely on a further argument, not taken before the Hearing Officer. Trek contends that on 12 December 2005, the Singapore Court of Appeal delivered its decision in certain infringement proceedings between Trek and M-Systems and, in doing so, decided the very same issue in favour of Trek. This, says Trek, creates an issue estoppel which binds M-Systems in this jurisdiction.
The scope of claim 1, the added matter squeeze and impact of the prior art
The second difference concerns the scope of the claims of the Patent as granted and as proposed to be amended. It is convenient to consider this by reference to claim 1 in its various forms:
Claim 1 of the Patent as filed reads:
“1. A portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device.”
Following pre-grant amendments dated 10 December 2002, claim 1 of the Patent as granted reads (with amendments shown):
“1. A portable data storage device comprising which can be directly plugged into a USB socket of a computer and is operative to function as an alternative to a magnetic disk or CD-ROM, and which is capable of storing software for installation to the computer or of receiving and storing user's data present in the computer and which comprises:
a coupling device which is a USB plug for coupling directly to a computer serial bus USB socket on a computer;
an interface device coupled to the coupling device USB plug;
a memory control device; and
a non-volatile solid state memory device;
the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device USB plug.”
Finally, there is claim 1 as proposed to be amended. This is set out below. Single line deletions and underlining indicate text that was removed or added pre-grant. Double line deletions and underlining indicate the proposed amendments:
“1. A portable data storage device operative to function as an alternative to a magnetic disk or CD-ROM, comprising which device is can be directly introducible into and removable from plugged into a USB socket of a computer to permit the transfer of data from one computer to another and which is operative to function as an alternative to a magnetic disk or CD-ROM, and which is capable of storing software for installation to the computer or of receiving and storing user's data present in the computer and which device comprises:
a coupling device which is a USB plug for coupling directly to a computer serial bus USB socket on a computer;
an interface device coupled to the coupling device USB plug;
a memory control device; and
a non-volatile solid state memory device;
the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device USB plug.
but subject to the foregoing disclaimer.”
The disclaimer relates to an intermediate citation (under section 2(3) of the 1977 Act) called “Yao” (EP 1 102 172 A1) which was published on 23 May 2001. It reads:
“Since the filing of this application, we have become aware of EP-A1–1102172, a European Patent Application that designates the UK, and which has a filing date earlier than that of the present application but which was not published until after filing of the present application. That application describes a dual interface memory card and an adapter module. The dual interface memory card has two interfaces, one for interfacing with a USB port of a computer via the adapter module, and a second, host, interface for connecting to an electronic product, such as a digital camera. In use, the memory card may connect directly to the electronic product, or may be received...
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