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Hewlett-Packard Company v Digital Revolution B.V., District Court of The Hague, The Netherlands, 25 November 2015, ECLI:RBDHA:2015:13401

In these proceedings on the merits, the District Court of The Hague found claim 1 of Hewlett-Packard’s patent EP  2 170 617 (EP 617), which relates to “non-volatile memory data integrity validation”, to be invalid. HP alleged that Digital Revolution had committed direct infringement since it offered for sale, through its website, cartridges which complied with all features of claims 1 and 2 of EP 617.

HP furthermore asserted indirect infringement as Digital Revolution offered for sale and supplied an essential element of the process according to claim 7 of EP 617. Digital Revolution, by way of counterclaim, argued that claim 1 of EP 617 lacked novelty, which led the court to invalidate EP 617 partially.
The court held that claim  1 of the patent lacked novelty. Although the novel elements ‘validation field’ and ‘storage portion’ suggest the use of structural features, these elements are but functional features which did not have any (implicit) effect on the structure of the memory unit. According to the court, the ‘Paulsen-cartridge’ in the state of the art would be suitable to attain the same effects when used in accordance with the teaching of the invention.

In addition, the court found that HP’s arguments based on indirect infringement had been put forward too late in the proceedings, which conflicts with the principles of due process.

An interesting part of the decision is the consideration of the court in respect of the novelty of EP 617. According to the court, a claimed invention lacks novelty unless it includes at least one essential technical feature, meaning a relevant physical (or: structural) feature, which distinguishes it from the state of the art. Under certain circumstances, a structural difference from the state of the art could also be implied by a functional feature claim. A ‘mold for molten steel’ for instance implies a structural feature for the skilled person, namely that the material of the mold would be highly heat resistance. In respect thereof, the part of the feature claim ‘for molten steel’ could be novel compared to, for instance, a mold for tallow. The skilled person would understand that a mold for tallow does not have to be as heat resistant as a mold for molten steel. The other way around, however, the skilled person would understand that a mold for molten steel would be suitable for tallow without any structural adjustments. A claimed mold for tallow, in that case, would lack novelty in light of the mold for molten steel.

In this case, the same principle applied to the part of claim 1 that saw to the elements of ‘validation field’ and ‘storage portion’. Although these elements suggested the use of structural features, these were purely functional features which did not have any (implicit) effect on the structure of the memory unit. The features of the claim merely described a process, namely the writing and saving of data, and not the (new) structure of the memory unit as a part of the patented cartridge.
Read the entire decision (in Dutch) here.

Head note: Jaap Bremer, BarentsKrans