FNM Corporation Ltd v Drammock International Ltd & Anor

A product claim using the word “for” ordinarily claims a product suitable for the stated purpose, rather than a product actually intended for that purpose. A product claim cannot obtain novelty merely from a new purpose where the product itself is old and suitable for that purpose. Claims to a non-flammable water and dimethyl ether cooling composition, and apparatus containing it, were therefore anticipated and obvious. Patent infringement threats were actionable where the communications, read as a whole, extended beyond protected threats concerning manufacture. A patentee’s state of mind under section 70(2A)(b) is assessed objectively by reference to information known at the time, but a specific reason for suspecting invalidity is required.

FNM, proprietor of a European patent concerning water-based cooling mixtures containing dimethyl ether, alleged infringement by Drammock and LEC. The defendants counterclaimed for revocation, unjustified threats and breach of contract. The patent claims covered a non-flammable water and dimethyl ether composition, a specified dimethyl ether range, and apparatus containing the composition.

The court considered claim construction, novelty, obviousness, prior use, patent threats and alleged misuse of confidential formulation information. The central issues were whether the claims were valid, whether FNM’s communications were protected under the Patents Act 1977, and whether LEC had misused FNM’s trade secrets.

1. Construction. “For providing” in the product claims meant “suitable for providing”. The claims were not limited to products actually intended or marketed for cooling. The temperature integer required a composition suitable to provide a cooling mixture between ambient temperature and 0°C when initially sprayed under appropriate conditions and using appropriate apparatus. The same construction applied to the apparatus claim. “Consists essentially of” permitted other components, including significant quantities of additional ingredients.
2. Validity. Applying the novelty principles in Synthon BV v SmithKline Beecham plc [2005] UKHL 59, the court held that Presant, Schwarzkopf II, Westfall, and LEC’s foot-cooling and sunbed-sanitiser sprays anticipated claims 1, 2 and 7. The claims were also obvious applying the structured approach in Pozzoli v BDMO SA [2007] EWCA Civ 588. DME was an obvious propellant for a water spray, and a composition containing about one-third DME was an obvious choice. The patent’s alleged safety concerns did not establish a technical prejudice because the patent did not make it plausible that those concerns could be overcome. The patent was invalid and had to be revoked.
3. Threats. Whether a communication was a threat depended on how it would be understood by the ordinary recipient, and a threat could be implicit. The email to Superdrug conveyed a threat. The letters to Drammock were protected in relation to manufacture under section 70(4)(a), but not in relation to supply because Drammock had not made the products. FNM nevertheless established the defence in section 70(2A)(b): it had no specific reason to suspect invalidity when the threats were made. An objective assessment was required, but general assertions of invalidity were insufficient.
4. Confidential information. Marketing had placed the broad ingredients and approximate proportions of Magicool in the public domain, although the precise formulation remained a trade secret. The identity of the valves and actuator was not confidential. LEC had not used the precise formulation or misused the valve information. FNM’s breach of contract claim was dismissed.