Isabel Jamal recently appeared before His Honour Judge Birss QC in the Patents County Court in Lizzanno Partitions (UK) Limited v Interiors Manufacturing Limited [2013] EWPCC 12. She acted for the patentee who succeeded in defending an action for a declaration of non-infringement (in relation to which it brought a counterclaim for infringement) and a claim that the patent was invalid for lack of novelty over a patent application, obviousness over the common general knowledge, added matter and insufficiency. The patent concerned a gasket used as a seal between glass sheets in interior glass partitions.
In relation to the added matter attack (that the application as filed did not disclose the shape of the gasket “when not in use”) he accepted Ms Jamal’s submission that the specification described the shape of the gasket per se, albeit that the figures portrayed the gasket when in use. He rejected the novelty attack and, in rejecting the obviousness attack, held that that the question of “why was it not done before” did not have a good answer in this case. Finally he rejected all of the insufficiency arguments, some on the basis of rejecting the Claimant’s construction of the claims (recognising that the patent must be read by a mind willing to understand not a mind desirous of misunderstanding) and others on the basis that the patent satisfied the test in Kirin Amgen.
The judge held that claims 1, 6 and 7 of the patent were infringed by partitions made using the Claimant’s gasket, and that the gasket itself constituted a means essential under s.60(2) of the Patents Act.