No sting in the patent.
Written by Michael Coyle on 27 August 2009« Return to Reading Room
In a case in July of this year the court held that a patent for insect and spider bites was valid but was not infringed by a similar ane treatment/product. The court granted a declaration of non-infringement;a certificate of contested validity; and an order for an inquiry into damages. The court also agreed that unjustified threats had been made.
Boots used to sell a product known as Zeno which was manufactured by Tyrell a Texas company. Riemser Arzneimittel AG wrote to Boots last year drawing attention to its European patent EP (UK) No. 1 231 875 (875), claiming that Zeno had adopted the same technical solution. Zeno is used for acne.
875 is a hand-held unit for the treatment of insect stings and insect bites. Boots own leaflet says that it should not be used for insect or spider bites or stings.
Boots stopped ordering Zeno, although they later started to resell. The owner of 875 brought a claim for infringement of its patent. Tyrell say that the patent is invalid; and that they do not infringe it. They also claimed unjustified threats of infringement proceedings.
The threats point was interesting the Judge said as follows:
"Was the 'sole purpose' of the letter to discover whether the patent had been infringed? If the writer of the letter were genuinely concerned to ask about some technical characteristic of the Zeno device that would point out a difference between that device and the device described in the patent the obvious person to write to would be the manufacturer. Why should the retailer know the technical details of what it sold? And even if the retailer did know, surely the relevant person would be someone in head office responsible for Boots corporate decision to stock it rather than any individual store manager. Why, then, were the letters sent to the retailers? The only answer must be to persuade them to stop selling the Zeno device. It partially succeeded in that objective. In my judgment that means that it cannot be said that "the sole purpose" of the letter was to discover whether the patent had been infringed""
The relevant law is S70 of the Patents Act 1977 as amended but does provide a warning to those people you are wishing to threaten ie the retailers, where the initial harm is being done.
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