by Jeremy Dickerson, Burges Salmon LLP -
In the Patents Court, Mr Justice Carr has held that the L’Oréal patent and one of its community registered designs have been infringed by RN Ventures. This case is of interest because of the successful use of the ‘shorter trials procedure’ pilot scheme in a case which involved ‘significant cross-examination’ in relation to expert evidence. The case also highlights the importance of registering the grant of an exclusive licence of a patent in the context of costs recovery.
This case dealt with L’Oréal’s (the first claimant’s) claims of patent and community registered design infringement in respect of RN Ventures’ “Magnitone” electronic facial skincare device; a brush to be used to deep cleanse pores. The second claimant, another L’Oreal company, was the exclusive licensee of L’Oreal’s rights in the UK.
Mr Justice Carr decided that due to the hourglass shape of the handle and the ‘distinctive bulbous head’ of the brush, the L’Oréal design created a different overall impression from other powered skin brushes. It was held that the Magnitone brush created the same overall impression on the informed user (the ‘observant user of powered skin brushes’).
In considering the patents, it was held that the Magnitone brush, using normal rules of interpretation, fell within the scope of the patent (claim 1) and hence infringed L’Oréal’s rights. RN Ventures’ insufficiency argument was rejected and an earlier US patent application did not render the patent obvious. Therefore, the patent and one of the community registered designs were held to be infringed.
Shorter trials procedure
The shorter trials procedure was introduced to the High Court as a pilot in October 2015 and will be available until September 2018. It is intended for use in commercial and business cases that do not require extensive disclosure, witness or expert evidence. The aim is to reduce costs and to achieve shorter trials of three to four days.
The use of the shorter trials procedure is of significance here because the case considered one patent and two registered designs. This required expert evidence and, according to Mr Justice Carr, ‘significant cross-examination’ in relation to certain experiments used by the claimant to prove infringement. However, Mr Justice Carr concluded that the timetable was adhered to and the issues were fully debated. He did, however, remark that time was taken up by procedural disputes that should, in the future, be resolved in advance of any shorter trial to avoid wasted time.
Consequences of non-registration of exclusive licences
This case also provides a timely reminder of the importance of registering the grant of an exclusive licence of a patent. The patent and registered design were owned by L’Oréal and exclusively licenced to the second claimant (within the L’Oréal group company). The second claimant was late to register the exclusive licence in accordance with s.33 of the Patents Act 1977. Mr Justice Carr considered the policy behind s.68 of the Patents Act 1977 and held that this section was not concerned with potential prejudice to a defendant to infringement proceedings. Instead it was intended to encourage registration of licences so that the register is kept up to date. Therefore, L’Oréal was deprived of a proportion of costs.
Both sides sought leave to appeal to the Court of Appeal, which has been granted.
This article first appeared on the website
Many thanks for permission to reprint to Jeremy Dickerson Partner Head of International Head of Intellectual Property, Media and Sport Defamation and Reputation Management