Swarovski-Optik KG v Leica Camera AG and Another

JurisdictionEngland & Wales
JudgeMr Justice Vos
Judgment Date10 May 2013
Neutral Citation[2013] EWHC 1227 (Pat)
Docket NumberCase No: HC11C01602
CourtChancery Division (Patents Court)
Date10 May 2013

[2013] EWHC 1227 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

Mr Justice Vos

Case No: HC11C01602

Between:
Swarovski-Optik KG
Claimant
and
Leica Camera AG
Leica Camera Limited
Defendants

Mr Andrew Lykiardopoulos (instructed by Fasken Martineau LLP) for the Claimant

Mr Michael Hicks (instructed by Redd Solicitors LLP) for the Defendants

Hearing dates: 11 th, 12 th, 15 th, 17 th, 18 th and 23 rd April 2013

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.

Mr Justice Vos

Introduction

1

The Claimant, Swarovski-Optik KG ("Swarovski"), contends that its patent number EP (UK) 746 45(the "Patent") has been infringed by the Defendants (together "Leica") by the supply of a range of three zoom sighting telescopes (or zoom riflescopes) in its "Magnus" range known as the 1–6.3x24, the 1.5–10x42, and the 2. 416x56 ("Leica's riflescopes"). In these formulations, as in other descriptions of riflescopes, the numbers before the "x" refer to the magnification range, and the number after the "x" refers to the diameter of the objective lens in millimetres. The figures before the "x" are referred to as the zoom range of the riflescope, and the second figure divided by the first gives the zoom factor or zoom ratio, such that Leica's three riflescopes have nominal zoom factors of 6.3, 6.67, and 6.67 respectively.

2

Swarovski's Patent relates to sighting telescopes or riflescopes with a zoom factor greater than 4, and is concerned with enabling a view of the surrounding area that is as large as possible across the entire range of magnification. It was suggested at some stages that the objective was to avoid a "tunnel effect" at low magnifications, though that term is not mentioned in the Patent, and I have ultimately concluded that the evidence concerned with it was of peripheral significance. The aims of the Patent are achieved by the use of an additional strong negative lens called an "optical beam deflector device" in the Patent so as to guarantee a subjective or apparent field of view of at least 22 degrees at all magnifications. In this judgment, I shall generally refer to this "optical beam deflector device" using the abbreviation "negative lens".

3

This action raises issues of validity and infringement, but the main issues arise in relation to validity. In short, Leica say that the Patent is invalid because its teaching was either obvious or not novel in the light of the common general knowledge and the prior art as at the priority date of 20 th July 2005. Though the experts' reports and some of the argument was technically complex, the ultimate issue on obviousness, which took up most time, was whether it would have been obvious in July 2005 to the skilled person to insert a strong negative lens some distance to the objective side of the second intermediate image (and within the inverting lens system) to achieve the objectives in the Patent (namely a zoom factor greater than 4 and a subjective field of view at all magnifications greater than 22 degrees).

4

The prior art relied upon by Leica was as follows:—

i) An IOR 2–12x32 riflescope designed and manufactured by IOR in Romania in about 2003–4 (the "IOR riflescope").

ii) A German textbook by Helmut Naumann with the translated title of "Optics Elements: pocketbook of technical optics" ("Naumann");

iii)Betensky's US Patent 5,500,769 of 19 th March 1996 ("Betensky");

iv) Mai's US Patent 5,671,088 of 23 rd September 1997 ("Mai"); and

v) Nikon's Japanese Patent 11326789 A of 26 th November 1999 ("Nikon").

5

There is parallel litigation in Germany, the European Patent Office ("EPO") and in Austria. The parties are agreed, however, that this case must nonetheless be determined on the evidence I have heard. The parallel proceedings are:—

i) German proceedings involving the German aspect of the European Patent as well as a utility patent model known as a "Gebrauchsmuster", providing similar protection for a more limited period and with less stringent patentability requirements.

ii) EPO pending proceedings, in which the Opposition Division recently rejected the claims as granted, but upheld an amended form of the claims (though the same amendments have not been advanced before me). The EPO's reasons were provided towards the end of the trial.

iii)An Austrian patent, from which the Patent claims priority, was held to be invalid in post-grant opposition proceedings on 27 th March 2009 in the light of the prior art in Mai and Betensky.

6

Before identifying and dealing with the issues that I have to decide and the evidence adduced, I shall set out a brief chronology of relevant events.

Chronology

7

On 12–15 th February 2004, the IOR riflescope was exhibited at the 2004 SHOT show in Las Vegas.

8

In February 2005, a quantity of IOR riflescopes (model 2–12x32/MP8/IL) were sold by IOR to Realex in Finland, and then re-sold by Realex to a Mr Juha Espo.

9

On 19 th May 2005, a magazine called "Guns & Ammo" published an article describing various riflescopes with zoom factors of 3x or 4x, but only the IOR riflescope with a higher zoom factor. The IOR riflescope was described as "quite an achievement".

10

20 th July 2005 is the priority date under the Patent.

11

On 8 th April 2006, the application for the Patent as filed included in Claim 4 of the "Patent Claims" that "[t]he long-distance optical device according to any one of claims 1 to 3, characterized in that the inverting system (1) has at least two optical elements (3a, 3b), preferably lens arrangements, which can be moved relative to one another".

12

On 13 th May 2011, the Claim Form in these proceedings was issued.

13

On 6 th July 2012, Mr Christof Heintz of Carl Zeiss performed tests on another IOR riflescope model number 3–18x42.

14

In mid-March 2013, oral opposition proceedings took place before the Opposition Division of the EPO. The Patent was upheld in amended form, as I have already indicated. Leica intends to appeal.

15

On the second day of the trial before me, 12 th April 2013, Leica applied to re-amend its grounds of invalidity so as to rely upon a further IOR riflescope, model l9–36x56, not previously mentioned in these proceedings, by way of priorart. This IOR scope had also allegedly been exhibited at the SHOT show in Las Vegas in 2004 and had gone into commercial production later that year. The model l9–36x56 was not of the same family as the IOR riflescope (2–12x32), which had been previously relied upon. Having indicated a preliminary willingness to allow the amendment provided Swarovski could be given an opportunity to inspect an example of this new riflescope or the data concerning it, I ultimately decided to refuse it on the primary ground that such inspection swere not possible in the time available without an adjournment of the trial, which Leica neither sought nor wanted. Consistently, I refused to allow Leica to rely on the larger part of Ms Dana Granciu's 2 nd witness statement concerning the IOR 9–36x56 riflescope.

Technical terms

16

The glossaries provided by the parties' experts are not significantly divergent. The Patent concerns a "telescope or sighting telescope" including an "inverting system". The main use of these telescopes is as riflescopes. They all include (i) an objective lens system facing the target (generally drawn in the diagrams to the left), (ii) an erecting lens system or relay system or inverting system to reverse the upside down first intermediate image produced by the objective lens system, and (iii) an eyepiece lens system to view the second intermediate image created by the erecting lens system.

17

Leica's expert, Professor Philip Rogers ("Professor Rogers"), produced the following diagram describing a typical arrangement. He described the two intermediate images as "inverted" and "erect". I prefer the terms "first intermediate image" and "second intermediate image", which I intend to use in this judgment.

18

In broad terms, the erecting lens system creates the zoom magnification. A smooth zoom requires two (or sometimes more) lenses in that system to move, but not always in the same direction. The movements are complex and are not the subject of this dispute, but broadly one lens moves regularly whilst the other moves closer to the first and then away from it. At higher magnifications the zoom lenses are closer to the objective lens system, and at lower magnifications the zoom lenses are generally closer to the eyepiece lens system.

19

A sighting telescope or riflescope contains cross-hairs or a reticle which enable the user to focus on the target. The reticle must be on or close to one of the intermediate images if it is to be in focus at the same time as the target itself. There are examples of riflescopes which have the reticle at each of the first and second intermediate image.

20

It was common ground that riflescopes required eye relief of between 80–90 millimetres. That means that this is the distance from the eyepiece to the user's eye. It is required to avoid the gun recoiling and causing injury to the user. Pistol scopes require much larger eye relief. Longer eye relief generally reduces the field of view.

21

Subjective or apparent field of view is the field of view seen by the user through the instrument. Outside world field of view is the extent of that image in the outside world. The subjective field of view is approximately the outside world field of view multiplied by the magnification of the telescope. Field of view is measured in degrees or as the notional length of an object viewed through a telescope at a particular distance.

22

Professor Rogers produced the following drawing to explain...

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