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NL – Hewlett-Packard v. Benson Image

13 Dec 2016

Hewlett-Packard Development Company, L.P. (“HP”) v. Benson Image B.V., Top Printing B.V. and Agiostar B.V. (“Benson”), District Court of The Hague, the Netherlands, 30 November 2016, Case number 504637 / HA ZA 16-125

HP is the owner of European Patent EP 01 737 669 for a ‘fluid ejection device’, applied for on 6 April 2005 with a priority date of 19 April 2004 and granted on 15 January 2014 (“EP ‘669”). The technology at issue relates to thermal inkjet printing systems; in such systems, an electronic controller for the printhead cartridge activates an electrical current from a power supply external to the printhead in order to eject a drop of ink. The electrical current is passed through a selected firing resistor to heat the ink in a corresponding selected vaporization chamber and eject the ink through a corresponding nozzle by means of a drop generator. In short, EP ‘669 describes a control system in which the number of input pads in the printhead cartridge is reduced.

In the present proceedings, HP claims that Benson infringes the Dutch part of EP ‘669 by offering/selling certain inkjet cartridges that meet the characteristics of claims 1 through 4 of EP ‘669. HP moreover takes the position that Benson indirectly infringes claim 12 (a method claim). Benson lodges a counterclaim and argues that the Dutch part of EP ‘669 is to be revoked due to added matter, a lack of novelty and a lack of inventive step.

The District Court first deals with Benson’s arguments in relation to added matter and applies the ‘disclosure’ and ‘intermediate generalisation’  tests. Summarizing, the District Court in relation to the added matter arguments put forward by Benson rules that (i) certain signals are not functionally and technically linked to the other characteristics of the embodiment, so that the intermediate generalisation is allowed, (ii) the skilled person would believe ‘indirect couplings’ to be encompassed by the words “electrically coupled” and (iii) the other arguments were put forward too late by Benson, and are also not convincing. According to the District Court, there is thus no case of added matter.

With regard to novelty, the District Court notes first of all that the change of direction of Benson’s argumentation during the oral pleadings is considered contrary to due process of law. The District Court nevertheless rules that Benson’s arguments fail; the prior art document invoked by Benson in any event does not disclose several elements of the attacked claims of EP ‘669. Benson bases its arguments in relation to lack of inventive step on the same prior art document, but the District Court rejects Benson’s formulation of the technical problem in the problem/solution-approach, as well as Benson’s arguments based on combinations of prior art documents.

The District Court comes to the conclusion that there is a case of infringement on the part of Benson, also in relation to certain other types of cartridges that were not investigated by HP, as HP made it plausible such cartridges also infringe, whereas Benson did not sufficiently refute this. The District Court grants an injunction only on the basis of the product claim, as it does not see a separate interest of HP in an injunction on the basis of the method claim, or any other dependent claim. Finally, the District Court on Benson’s request lifts HP’s provisional measures vis-a-vis Benson (seizure and sampling of certain cartridges), as HP did not timely file a claim on the merits in relation to the patents it had used to obtain the provisional measures (the measures were not based on infringement of EP ‘644, but two other patents held by HP); this is deemed unlawful and HP is ordered to pay Benson’s damages in this regard.


A copy of the judgment (in Dutch) can be found here.

Headnote: Tim Iserief, NautaDutilh