Zipher Ltd v Markem Systems Ltd, Court of Appeal - Patents Court, January 16, 2007, [2007] EWHC 154 (Pat)

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Zipher Ltd v Markem Systems Ltd, Court of Appeal - Patents Court, January 16, 2007, [2007] EWHC 154 (Pat)

Neutral Citation Number: [2007] EWHC 154 (Pat)

Case No: HC06C03919

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Date: Tuesday, 16th January 2007

Before:

MR. JUSTICE LEWISON

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Between:

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Digital Transcription of Marten Walsh Cherer Ltd.,

6th Floor, 12-14 New Fetter Lane, London EC4A 1AG.

Telephone No: 020 7936 6000. Fax No: 020 7427 0093

DX: 410 LDE

Email: info@martenwalshcherer.com

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MR. ADRIAN SPECK (instructed by Messrs. Eversheds LLP) for the Claimant

MR. RICHARD ARNOLD QC and DR. BRIAN NICHOLSON (instructed by Messrs. Herbert Smith LLP) for the Defendant

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Judgment

MR. JUSTICE LEWISON:

1. UK Patent 2 369 602 relates to an invention of a drive mechanism for printers. It was published in June 2002. Claims 1 to 7 claim a tape drive, that is to say a product, and claim 8 claims a method of controlling a tape drive. A dispute between the two parties, Zipher and Markem Systems, about entitlement to the patent has already been to the Court of Appeal and two attempts to take it further to the House of Lords have failed.

2. In the course of argument before the Court of Appeal counsel then appearing on behalf of Zipher contended that claims 1 to 4 of the patent as granted were invalid. So far as claim 4 was concerned, the assertion was dependent on a particular construction of the claim. The order made by the Court of Appeal contained the following recital:

``AND UPON RECORDING that in the course of argument Counsel for Zipher Limited accepted that claims 1 to 3 of United Kingdom Patent 2,369,602B and claim 4 thereof (if and in so far as the same on its true construction covers monitoring the length as well as the tension in the ribbon) are invalid in the light of the prior publication of United States Patent number 4909648.''

3. As foreshadowed in the Court of Appeal, in February 2006 Zipher applied to the Patent Office to amend the patent. It proposed amendments both to the claims and to the specification. Claims 1 to 8 of the proposed amended claims claim a tape drive and claims 10 to 12 claim methods of controlling tape drives. Claim 1 has been rewritten as have claims 2 and 3. In the patent as originally granted, claims 2 and 3 were dependent on claim 1; in the proposed amended patent they appear to have independent validity.

4. In October 2006 Markem opposed the application to amend. Shortly thereafter Zipher issued proceedings claiming infringement of the patent. In summary the claims were: (1) Markem was making and selling tape drives which fell within claims 1 to 8 of the patent; (2) Markem had used a process falling within claims 10 to 12; and (3) Markem makes or imports printers which use a process falling with claims 10 to 12.

5. It is clear from the numbers of the claims referred to in the Particulars of Infringement that the claims in question are the claims...

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