L’Oréal SA and L’Oréal (UK) Ltd v RN Ventures Ltd, UK Patents Court, 5 February 2018, Carr J

This case concerned the alleged infringement of L’Oréal’s EP (UK) 1 722 699 B1 and two registered community designs. The defendant sold a range of “Magnitone” electronic facial skin care devices. The case was heard under the High Court’s “Shorter Trial” scheme, which limits the length (and therefore cost) of trials by careful management by the Court of the issues in dispute.

The central issue was the construction of the patent claims in issue, in particular claim 1. The Court applied existing UK jurisprudence on the construction of claims and concluded that, as a matter of normal interpretation, the products alleged to infringe did fall within the scope of the claims.

Interestingly, the Court decided that, had the products not infringed as a matter of normal interpretation, it would also not have found infringement under the UK’s doctrine of equivalents. In such circumstances, the skilled person would have understood the patentee to have considered the implementation adopted by the allegedly infringing products at length in the patent in suit, and would have understood the patentee to have chosen not to include that implementation in the claims. This is consistent with the position of the German Federal Court of Justice in Okklusionvorrichtung. However, the English judge expressly stated that he was not deciding in this judgment whether there should be a general principle of “deliberate selection” when considering equivalents in the UK.

The defendant’s argument that, if claim 1 was infringed, then it would be invalid was rejected. The patent was accordingly held to be valid and infringed.

The Court also held that one of the two registered community designs was infringed. Although the informed user would appreciate that there were some differences between the allegedly infringing design and the registered community design, the two designs still produced the same overall impression on the informed user. The judgment sets out a useful summary of UK case law regarding registered designs.

A copy of the judgment can be read here.

Headnote: Graham Burnett-Hall, Marks & Clerk Solicitors LLP