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    Intellectual Property: patents: infringement: claims: limitation: declarations of non-infringement

    Declarations of non-infringement of a patent were granted where the designs in question where neither a literal infringement of the patent claim nor an infringement of the claim when purposively construed.

    The claimant (R) brought an action against the defendant (T) for declarations of non-infringement of a patent. T was the proprietor of a patent, entitled “process and device for sifting, sorting, screening, filtering and sizing substances”, that was concerned with devices using ultrasonic vibration to assist in sifting and filtering substances. R sought confirmation from T that certain of R’s proposed designs did not infringe the patent. The two designs in issue were the “spiral” design and the “single bent rod” design. Claim 1 of the patent stated that “the resonator [had] rod-type resonators or at least one circular rod”. It was accepted that the words meant that where the resonator was circular, only one was necessary, although more than one could be used. Whereas, when rod-type resonators were used, there had to always be more than one. T contended that (1) the spiral design was a literal infringement of claim 1 on the basis that it contained “at least one circular rod”; (2) failing that, both the spiral design and the single bent rod design were within the claim when purposively construed.

    HELD: (1) Even though a spiral did not incorporate curves, it was not circular and could not be regarded as a circle. Not all things that were curved were circular. The spiral design was not a literal infringement of claim 1. (2) It was clear that the spiral design worked in essentially the same way as both the rod-type resonators and the circular resonator. Furthermore, it would have been obvious to a person skilled in the art that the spiral design would work in the same way. However, it would not have been apparent to a person skilled in the art that, when the claim referred to at least one circular rod, a limitation to rods which were circular could not have been intended by the patentee. From a technical point of view, the limitations in the claim appeared to be arbitrary and tied to the examples given in the specification. Therefore the spiral design did not infringe claim 1. With regards to the single bent rod design, it would not be apparent to the skilled addressee that the limitation could not have been intended by the patentee. Accordingly, it could not be concluded with reasonable confidence that the single bent rod design was one which the patentee wanted to cover. R was entitled to declarations of non-infringement in respect of both designs, Improver Corporation v Remington Consumer Products Ltd (1990) FSR 181 and Merck & Co Inc (USA) v Generics (UK) Ltd (2003) EWHC 2842 (Pat).

    Judgment for claimant.


    Ch D (Laddie J) 17/3/2004

    “Lawtel”: 17th March 2004