Patents, Case Note: TH Goldschmidt AG and another v. EOC Belgium NV and Others
March 2001
TH Goldschmidt AG and another v. EOC Belgium NV and others [2000]
EWHC Patents 175 (25th January, 2000)
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article formerly appeared on the Old Colony House website
This was the trial of two actions: a petition for the revocation of 3 European patents (UK) that had been granted to T H Goldschmidt AG ("Goldschmidt") and an action by Goldschmidt against EOC Belgium NV ("EOC") for the infringement of those patents together with counterclaims for groundless threats and a declaration of non-infringement. The patents in suit were for improvements to the method of preparing and formulating amidobetaine cosurficants which are used in shampoos and washing up liquid. Such compounds are produced by a two-stage process:
an amine is reacted with a fatty acid to produce an amidoamine and water; and
the amidoamine is reacted with sodium chloroacetate to form the aminobetaine and hydrochloric acid.
The patents related to improvements to the quality of the second stage of the process. Mr. David Young QC found two of those patents to be invalid for obviousness but upheld the third as valid and infringed. Because that patent was infringed it followed that the threats counterclaim had to fail. The counterclaim for a declaration of non-infringement failed for procedural reasons.
Although the case was principally one of construction two interesting points of law emerged. The first is that the distinction that Peter Prescott QC drew in Auchinloss v Agricultural & Veterinary Supplies Ltd. [1997] RPC 649 between claims with numerical limitations and those with descriptive phrases holding that a monopoly expressed numerically is to be circumscribed within such numerical values is confined to inventions such as recipes where precise quantities are important. The Court of Appeal had held in Lubrizol Corporation v Esso Petroleum Co. Ltd. [1998] RPC 727, 748 that a skilled addressee would read a claim and specifications according to scientific conventions, one of which is that numerical values are expressed in significant figures. Since pH values are read to one significant figure a skilled addressee would have understood a pH range of 5 to 8 as covering values greater than 4.5 and less than 8.5 rather than 5.0 and 8.0.
The second point was that an application for a declaration of non-infringement can be entertained only if the applicant supplies the proprietor of the patent with full particulars in writing of the act in question as prescribed by s.71 (1) (a) of the Patents Act 1977. EOC's solicitors had merely described a hypothetical product and had not given anything like enough information for the patentee to respond or for the court to decide.