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Judgment on Construction: Curt G. Joa, Inc. v Fameccanica.Data SpA

26 May 2017

On 24 May 2017, His Honour Judge Hacon handed down judgment (which may be viewed here) in patent revocation proceedings brought by Curt G. Joa, Inc., a Wisconsin-based manufacturer of machinery for making sanitary products, against its competitor Fameccanica.Data SpA.
 
The dispute began in late 2015 with the issuing of proceedings to revoke the UK designation of the Fameccanica-owned EP1355604. The patent related to a diaper including side panels constructed from stretchable trilaminate materials made breathable by using a technique called ultrasonic bonding to form combined vent and bond sites. The patent also claimed a method of making the trilaminate material.
 
During the proceedings, Fameccanica applied to amend the patent both unconditionally and conditionally, acknowledging that the patent should be revoked if that application failed. The amendments, in its contention, narrowed the claims to an extent that the skilled person would understand that a very particular form of vent was formed by the ultrasonic bonding. Crucially, it argued that the vents comprised an aperture only through the middle layer of the laminate, an otherwise impermeable elastic film, but not through the outer layers of nonwoven material. Joa argued that the patent described a bond which included a hole through all layers of the laminate.
 
The case largely turned on whether Fameccanica’s specific form of bond was described in the unamended patent and in the application as filed. HHJ Hacon held that it was not. The patent did not say expressly one way or another but the Judge’s view was that it was a more natural reading of the description of the invention that the vents involved holes through all layers of the laminate. This chimed with a short passage in the application which also stated this but was removed before grant.  It followed that the amended claims disclosed added subject matter and lacked clarity. The applications were therefore dismissed and the patent revoked.
 
On the way to this construction, and in looking to clarify whether the description was using the terms “vent site” and “bond site” interchangeably, HHJ Hacon applied Jarden Consumer Solutions (Europe) Ltd. v SEB SA [2014] EWCA Civ 1629 in addressing a point regarding the use of reference numerals in claims as an aid to construction.   Each of the “bond site” and “vent site” were labelled in the claims as feature “100”.  Jarden clarifies that reference numerals may be used to determine no more than which elements of the claims are referred to in the figures. In this case, the Judge found that as the specification gave no indication otherwise, looking to the drawings to find that the “bond site 100” and “vent site 100” were the same would be permissible according to Jarden but could also be broadly described as construction of the claims.
 
Conclusion: when drafting specifications, care should be taken to use different reference numerals for features that are to be regarded as different from one another.
 
Potter Clarkson LLP, in combination with Andrew Norris of Hogarth Chambers, represented Curt G. Joa, the successful Claimant. For further information concerning this decision, please contact Simon Curtis or Caroline Marshall.

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