Zeno Corp (Formerly Known As Tyrell Inc) & Anor v BSM-Bionic Solutions Management GmbH & Anor

A product claim using “for” may be construed as requiring suitability for the stated purpose. The product must be capable of producing a real beneficial effect for that purpose without modification. A claim specifying temperature and time ranges is construed in context, having regard to the safety implications and the precision used elsewhere in the specification. A stated time interval has both a minimum and a maximum.

For infringement, the patentee must prove that the product is capable of the claimed beneficial treatment. Novelty requires clear and unmistakeable directions in the prior publication. An inventive step may exist where the prior art gives no reason to add a timer and doing so may create safety risks. A communication to retailers may amount to a veiled threat even if it does not expressly mention proceedings.

Riemser Arzneimittel AG claimed that Zeno, a hand-held heat-treatment device marketed for acne, infringed its UK patent for a device for the local thermal treatment of insect stings and bites. Zeno’s manufacturer and distributor challenged validity, denied infringement, and claimed that correspondence sent to retailers constituted unjustified threats.

The court considered construction of the purpose, temperature and time limitations in the claims; infringement; novelty over the Li patent application; obviousness; and the threats claim under the Patents Act 1977. The central issues were whether Zeno was suitable for the patented purpose, whether Li disclosed the claimed timer control, whether adding a timer was obvious, and whether the correspondence conveyed a threat of proceedings.

1. Construction. Applying purposive construction under Article 69 of the European Patent Convention, the word “for” was treated as meaning “suitable for”, but suitability required more than mere physical capability. A device for treatment had to be capable of producing some real beneficial effect on the symptoms or consequences of insect bites or stings. The mechanism producing the benefit did not matter. [25]–[37]
2. The temperature limits were precise. The claimed range of 50°C to 65°C was construed as accurate to two significant figures, giving effective limits of 49.5°C and 65.4°C. The claimed time interval of 2 to 12 seconds meant a period of not less than 2 seconds and not more than 12 seconds. The surrounding safety considerations, the specification’s precision and claim 6 supported that construction. [38]–[55]
3. Infringement. Zeno operated below the claimed temperature range and maintained its temperature for longer than 12 seconds. In addition, there was no evidence that it was capable of producing a beneficial effect on insect bites or stings. The burden of proving infringement was therefore not discharged. The device did not infringe. [59]–[65]
4. Validity. Li did not disclose clear and unmistakeable directions to make a device with the claimed timer control. Its disclosure did not establish that the heater was maintained at the claimed temperature for a predetermined period. It therefore did not anticipate the patent. [66]–[80]
5. The inventive concept was control by the device itself of both temperature and duration. Although adding a timer would have been technically simple, the prior art relied on the user’s “ouch reflex”, supplied no sufficient guidance on the parameters, and gave no motive to introduce a potentially dangerous timer. The obviousness attack failed. The fact that the invention might be unsafe at some claimed settings did not itself make it unpatentable. [81]–[92]
6. Threats. Under section 70 of the Patents Act 1977, the communication was to be assessed objectively from the standpoint of a reasonable recipient. Although it did not expressly mention proceedings, its purpose was not solely to obtain information about infringement. Sent to retailers rather than the manufacturer or responsible head office, it was intended to persuade them to stop selling Zeno and amounted to a veiled threat. [93]–[102]
7. The patent was valid but not infringed. Riemser, but not BSM-Bionic, was liable for unjustified threats. The court indicated that it was prepared in principle to grant a declaration of non-infringement, a certificate of contested validity and an inquiry into damages. [103]–[105]

First-instance judgment of the High Court (Patents Court). No earlier appellate decision is stated in the judgment.