Datacard Corporation v Eagle Technologies Ltd

A patent claim lacks inventive step where the claimed difference from the prior art is one of several technically obvious alternatives. An absence of motive is relevant but not decisive. Added matter arises where a feature disclosed only in a particular context is claimed as an intermediate generalisation without clear and unambiguous support.

Use of another’s trade mark to describe compatible goods may be necessary, but the manner of use must accord with honest commercial practices. Use which suggests a commercial connection fails that defence. Post-sale confusion may establish a likelihood of confusion under article 5(1)(b) of the trade marks Directive.

DataCard supplied card printers and associated ribbons. Eagle sold third-party ribbons compatible with DataCard printers and marketed them through its own and managed reseller websites.

DataCard alleged infringement of two patents concerning RFID-tagged printer consumables and error-resistant ribbon loading. Eagle denied infringement and counterclaimed for revocation. DataCard also alleged that Eagle’s website descriptions, navigational signs, emails and packaging labels infringed two DATACARD word marks.

The court determined patent construction, obviousness, insufficiency, added matter, indirect infringement and the permissibility of proposed amendments. It also considered infringement under article 5(1)(a), article 5(1)(b) and article 5(2) of Directive 2008/95/EC, together with the compatibility defence under article 6(1)(c).

1. Patent claims. Claim 11 of the RFID Patent was invalid for obviousness over each of Fargo and ENCAD. Positioning a circular RFID antenna around the cylinder aperture was an obvious way to accommodate the tag. It remained obvious although other solutions were available and although the skilled team need not appreciate the alleged ribbon-saving advantage. The claim also added matter because it extracted that feature from the specific embodiment in which it alone had been disclosed.
2. The challenged claims of the Error Loading Patent, as proposed to be amended, were obvious over Fargo Pro-L, Brother and Sharp. Substituting known spindle or carrier arrangements for known hub arrangements, adding ribs to drive the cylinders and differentiating the relevant spindle or pin geometries involved technically obvious design choices. The RFID claim would have been infringed if valid. Eagle would likewise have infringed valid supply-item claims under section 60(1) of the Patents Act 1977.
3. If the Error Loading Patent’s supply-item claims were invalid, purchasers of DataCard printers were entitled to use third-party ribbons with the supplied carriers. Eagle therefore would not indirectly infringe the method and loaded-printer claims under section 60(2). Proposed new claims 11 and 13 also constituted impermissible intermediate generalisations. Although they did not extend the claim-defined protection for section 76(3)(b), the court would refuse them as a matter of discretion because they exposed third parties to new indirect-infringement risks.
4. Trade marks. Eagle’s ribbons were not identical to the goods for which the DATACARD marks were registered. The article 5(1)(a) claims therefore failed. Before 26 November 2009, however, Eagle’s uses created a likelihood that end users would believe that the ribbons originated from, or were commercially connected with, DataCard. Article 5(1)(b) infringement was established. Post-sale confusion could support that conclusion.
5. From 26 November 2009 to February 2010, only the packaging labels infringed. Changes made in February 2010 sufficiently informed consumers that the goods were merely compatible products, so the later uses did not infringe. Although use of DATACARD was necessary to communicate compatibility, the earlier confusing presentation was contrary to honest commercial practices and defeated article 6(1)(c). The remaining trade mark claims failed.

not stated in the judgment.