Philip Morris Products SA & Anor v Nicoventures Trading Limited & Anor
[2023] EWHC 2616 (Pat)
Heraeus Noblelight Limited v First Light Lamps Limited
31 July 2023
[2023] EWHC 1950 (Pat)
High Court
Imagine building with LEGO. Hereaus has a patent on a specific LEGO construction. First Light built something very similar, with only a tiny, unimportant difference. The judge said the difference was too small, and that First Light copied the main idea, making them guilty of infringement.
Key Facts
- •Hereaus Noblelight Limited (Hereaus) sued First Light Lamps Limited (First Light) for patent infringement of EP (UK) 1 598 845 (the "Patent"), a method for sealing quartz glass tubes in arc lamps.
- •The Patent describes a direct sealing method between the quartz tube and a tungsten rod, avoiding an intermediate layer used in the prior art "GS10 Dome Method".
- •First Light's method is essentially the same as the Patent's, except it uses a bead larger than the glass tube's outer diameter.
- •First Light counterclaimed for a declaration of invalidity based on obviousness over prior art (Mathijssen and Churchley patents).
Legal Principles
Purposive construction of patents: The court must determine what the person skilled in the art would have understood the patentee to mean.
Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, §5
Doctrine of equivalents: Three questions to determine infringement by equivalents (Actavis test).
Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, §66
Obviousness: An invention is obvious if it is not obvious to a person skilled in the art, having regard to the state of the art.
Patents Act 1977, ss. 1(b), 3; Pozzoli SpA v BDMO SA [2007] EWCA Civ 558, §23
De minimis principle: Infringement requires more than a de minimis number of infringing acts.
Napp Pharmaceutical Holdings v Dr Reddy’s Laboratories (UK) [2017] EWHC 1517 (Pat), §148
Outcomes
First Light's Annex C and D methods infringe the Patent on a purposive construction.
The court found that "not bigger than" the outer diameter of the tube in the Patent meant "not materially bigger," encompassing variations within common general knowledge (CGK) tolerances. The oversized beads used by First Light did not impair the seal's strength or utility.
The Patent is valid; it was not obvious over the prior art.
The court considered the Mathijssen and Churchley patents and found that the key features of Heraeus’ patent (direct sealing and specific bead size requirements) were not obvious to a person skilled in the art. Key differences existed concerning the geometry of the seal and the handling of thermal stress.
First Light's methods do not infringe the Patent on a literal construction.
While a single instance of a non-infringing lamp was presented, Heraeus failed to demonstrate that this occurred on more than a de minimis basis. Evidence from the inspection was deemed unreliable due to the circumstances.