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Hewlett-Packard Development Company v. Benson Image, Top Printing and Aigostar, District Court the Hague, 25 April 2018, ECLI:NL:RBDHA:2018:4810

HP is the holder of the European patent EP 1 330 360 titled “Inkjet printhead”. The patent was granted on 11 March 2009 relying on the priority date of US 702267 (30 October 2000). Claim 1 of EP ‘360 covers an inkjet printhead responsive to enable and drive current signals for dispensing ink, comprising a plurality of groups of drop generators, each group of drop generators including a plurality of sub-groups of drop generators and each subgroup including a first and a second drop generator, each comprising an energy charging device and energy discharging device responding to the first and second enable signal and vice versa (in short: a multiple-dimensional control of drop generators in printhead cartridges).

Benson Image, Aigostar and Top Printing (“Benson c.s.”) are all commercially active in the field of computer and/or printing accessories. After having seized a variety of allegedly infringing cartridges and documents relating to sales of such cartridges, HP sued Benson c.s. in main proceedings before the Court of The Hague requesting an injunction against the defendants, accompanied by several ancillary claims. Benson c.s. counterclaimed for invalidity, arguing that EP ‘360 claims added matter and lacks novelty and inventive step and requested lifting of the seizure.

In relation to added matter the Court adopts the gold standard/disclosure test developed by the EPO which entails that amendments to the original application of a European patent are only permissible if the skilled person is not presented with information which is not directly and unambiguously derivable from the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art using his common general knowledge. Intermediate generalisation is only allowed if it is clear for the person skilled in the art that there is no structural and functional relationship between the feature taken from a specific embodiment and the other features of that embodiment.

The Court considers in line with G 2/10 that the rule for assessing whether there is an intermediate generalisation is only a tool to help assess whether amendments fulfill the requirements of Article 75(1)(c) of the Dutch Patent Act (“DPA”). After applying the gold standard the Court concludes that there have not been any claim amendments that go beyond the disclosure as originally filed. No technical information has been added.

In relation to novelty Benson c.s rely on WO ‘523. The Court concludes that several features of claim 1 are not disclosed in WO ‘523 and therefore concludes that claim 1 is novel over WO ‘523.

Regarding inventive step, Benson c.s. rely on US ‘342 as the closest prior art in combination with US ‘134 and/or US ‘519. According to Benson c.s. there is only one distinguishing feature which does not solve a relevant technical problem. The objective technical problem according to Benson c.s. is therefore to find a mere alternative. The Court disagrees and finds that there are more features that distinguish claim 1 of EP ‘360 from US ‘342. According to the Court those features have several technical effects. The objective technical problem is to improve the control of the drop generators. According to the Court both US ‘134 and US ‘519 do not address the objective technical problem and do not disclose the claimed solution. The Court concludes that claim 1 is not obvious over the cited prior art.

The Court also finds that EP ‘360 is infringed both by Benson Image and Top Printing and grants an injunction that is limited to specific types of cartridges. A general injunction is dismissed as this may result in execution problems as Benson and Top Printing do not manufacture cartridges themselves and because assessing whether a specific type of cartridges infringes EP ‘360 requires a detailed analysis. The infringement claims against Aigostar are dismissed as HP did not prove a sufficient threat of infringement in relation to this defendant.

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

Headnote: Mattie de Koning and Daisy Termeulen, Simmons & Simmons LLP