Zipher Ltd v Markem Systems Ltd and Another
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 25 June 2008 |
| Neutral Citation | [2008] EWHC 1379 (Pat),[2008] EWHC 2078 (Pat) |
| Docket Number | Claim Nos: HC06 C03919 HC07 C02890 |
| Court | Chancery Division (Patents Court) |
| Date | 25 June 2008 |
[2008] EWHC 1379 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Hon Mr Justice Floyd
Claim Nos: HC06 C03919
HC07 C01551
HC07 C02890
Mr Simon Thorley QC, Mr Adrian Speck and Mr Jonathan Hill (instructed by Eversheds LLP) for the Claimant
Mr Richard Arnold QC and Mr Brian Nicholson (instructed by Herbert Smith) for the Defendants
Hearing dates: 17–18, 21–25 April, 6–9 May 2008
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 Floyd :
This is the latest battle in the sequence of disputes between the Claimant in this action (“Zipher”) on the one hand and companies in the Markem group, which includes both the Defendants (“Markem”), on the other. Earlier proceedings concerned the parties' entitlement to inventions disclosed in a number of patents and patent applications applied for by Zipher, including some which are now in issue in this action. The earlier decisions are chronicled in the law reports. Those of HHJ Fysh QC sitting as a deputy High Court Judge are Markem Corp v Zipher Ltd (No 1) [2004] RPC 10, Markem Corp v Zipher Ltd (No 2) [2004] RPC 11 and Markem Corp v Zipher Ltd (No 3) [2005] RPC 3.
HHJ Fysh QC held that Markem Corporation and the Second Defendant were entitled to a number of the wider claims of those patents and applications, but that narrower claims belonged to Zipher. In the course of the proceedings at first instance, Zipher's counsel offered an undertaking to the court as to what it would do with the wider claims if it was successful in establishing its claim to be entitled to them, which at first instance it was not. The Court of Appeal allowed Zipher's appeal: Markem Corp v Zipher Ltd [2005] EWCA Civ 267, [2005] RPC 31. The Court of Appeal took the approach that in the absence of any allegation of breach by Zipher of a private law right, Markem's claim to entitlement could not succeed. The order of the Court of Appeal recited a concession made by Zipher's counsel that some of the wider claims as they stood then were invalid, or (in the case of one claim) invalid if construed in a particular way, but did not recite the undertaking offered to HHJ Fysh QC.
Having secured its claim to ownership of the inventions, Zipher now sues Markem for infringement, claiming that two versions of Markem's SmartDate 5 printer (the EV and LV) and its Series 18 printer infringe:
i) UK Patent No. 2 369 602 (“602”);
ii) European Patent (UK) No. 1 317 345 (“345”); and
iii) European Patent (UK) No. 1 767 375 (“375”).
Markem deny infringement and counterclaim for revocation of each of the three patents sued on, and also for revocation of UK Patent No. 2 400 582 (“582”) which is not alleged to be infringed.
Zipher has applied to amend 602. Markem contend that the court should not entertain the application to amend as it is not in conformity with the undertaking given to HHJ Fysh QC. The amendments are opposed by Markem on statutory grounds and because they say the court should not exercise its discretion to allow the amendments even if they are otherwise allowable. This latter point raises the question of whether the court retains (following the entry into force of the Patents Act 2004 on 13 th December 2007) any discretion to refuse to allow amendments which would not offend against the grounds of objection under the statute, and, if so, on what principles that discretion is to be exercised.
In all, these disputes give rise to a very large number of issues and sub-issues, which I summarise as follows:
i) Is Zipher's attempt to amend in breach of any undertaking it has given to the court?
ii) Do Zipher's amendments to 602 add matter?
iii) Are Zipher's amendments to 602 allowable in the exercise of any discretion retained by the court?
iv) Are any claims in the four patents in suit invalid for lack of novelty over US Patent Specification No. 4 909 648 (“Datamax”)?
v) Was the information in a Markem document called “the Adkin Memorandum” made available to the public before the priority date of 602?
vi) If so, do any claims lack novelty over the Adkin Memorandum?
vii) Are any claims invalid for lack of inventive step over:
a) Datamax;
b) The information in the Adkin Memorandum;
c) US Patent Specification No. 5 490 638 (“IBM”);
d) US Patent Specification No.4 093 149 (“Shroff”);
e) Japanese Patent Application No. S60–211653 (“Ikenaga”);
f) US Patent Specification No. 5 649 672 (“Wolff”);
g) UK Patent Application No. 2 302 523 (“Markem”)?
viii) Are any claims invalid for insufficiency? There are pleaded insufficiencies of three different types: classical insufficiency, Biogen insufficiency and insufficiency through ambiguity.
ix) Are any claims infringed by any of the three accused models of Markem printer?
In very broad terms the patents in suit are concerned with tape drives for use in printers, tape recorders and similar equipment. Although the claims are wider, the specific embodiments in the patents and the products which the parties make and sell are thermal transfer printers. Thermal transfer printing uses a ribbon with solid thermoplastic ink covering one side. The ink can be melted in specific regions if subjected from the other side to heat from the printing elements in a print head. Once heated, the ink transfers from the tape to the substrate onto which it is desired to print. A major application of this type of printing is in production lines, where it is necessary to add coded information onto a product, such as a “sell by” or “best before” date. For these reasons the machines are sometimes called “date coders” or just “coders”.
The witnesses
Zipher called two expert witnesses. The first was Dr Richard McMahon who is a Senior Lecturer in Electrical Engineering in the Department of Engineering at Cambridge University. His professional experience is broad. He has taught and researched the design and application of electrical machines (i.e. motors and generators) and the means of driving and controlling them. He has acknowledged that in the field of computer software he has relied on assistance from elsewhere within the Department.
I thought Dr McMahon was a careful but perhaps sometimes rather reluctant witness. He occasionally, perhaps unnecessarily, preferred to express answers in his own words rather than giving “yes” or “no” replies to propositions put to him. Nevertheless, overall, I found his evidence helpful. Mr Arnold QC, who appeared for Markem with Mr Brian Nicholson, said that Dr McMahon strayed in the course of his evidence into the realm of the advocate. I do not think that was a fair criticism. It is understandable in a dispute of this kind that a witness should wish to express himself in his own words rather than accept unreservedly lengthy propositions put to him. I do not think Dr McMahon was doing more than that.
Zipher's second expert was Mr Michael Nelson who is a Mechanical Design Engineer, with over 40 years experience working on a wide spectrum of engineering projects. For most of the last 30 years, he worked for Cambridge Consultants Limited. He is currently a freelance design engineer. As he explains in his report, when he started his career, mechanical engineers did not necessarily go to university, but often worked an apprenticeship instead. His own apprenticeship was 5 years with Cambridge Scientific Instruments Co. This included one day and one evening a week at the local technical college (which is now Anglia Ruskin University) learning the theoretical and mathematical side of the job. At the end of his apprenticeship he became a skilled Scientific Instrument Maker. Mr Nelson started his involvement with thermal transfer printers in 1995 and continued until 1999. He designed the SmartDate 2c, one of Markem's machines.
Mr Arnold said that Mr Nelson's evidence was only of marginal relevance, for reasons associated with his submissions about the skilled addressee, which I deal with elsewhere. He also faintly suggested that Mr Nelson's connection with Markem and its predecessor meant that he was not truly independent. This second point would only be of substance if I felt that Mr Nelson was influenced in any way by his past association. I formed the view that he was not, and that he was giving his evidence fairly and impartially. He was the only witness with practical experience of designing tape drives.
Markem called Richard Taylor as their only expert. He is an electrical engineer. He worked for EMI Electronics from 1967 to 1975 and then for Quantel, a company involved in the development of digital image processing techniques for the broadcast television industry, from 1975 to 2006. He has no experience of thermal transfer printers, although he has experience of a variety of printing and scanning devices and is familiar with tape drive systems through use.
Mr Taylor fairly recognised that he was not a mechanical engineer. His position as expert for Markem was justified by Mr Arnold on the basis that a specialist mechanical engineer was not a necessary part of the skilled team. Mr Taylor had, in any event, come up in the past with mechanical engineering solutions to problems which were encountered at Quantel (to do with flare in cathode ray tubes). To the extent that specialist mechanical engineering understanding is important, particularly of tape drive design, I think that Mr Nelson was better placed to assist me than Mr Taylor.
Mr Thorley QC, who appeared for Zipher with Mr Adrian Speck and Mr Jonathan Hill, had a further specific criticism of Mr...
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