Thorn Security had argued that Siemens should not be awarded
damages for the period before the patent was transferred to it
because it had not specifically registered the patents. But judge
Justice Mann in the High Court found that a peculiarity of Swiss
law and a quirk in the language of UK law meant that damages could
predate that transfer.
It was a merger of Swiss companies that brought the patent under
dispute into Siemens' ownership. The Patents Act says that if a
company fails to register a patent then it cannot claim damages for
a period before it does register ownership of it.
Thorn claimed, therefore, that Siemens should not be entitled to
damages for the period before February 2002. The Patents Act refers
to the assignment or assignation of patents.
Justice Mann found, though, that the legal technicality through
which the patents were transferred in the 1998 merger is not
covered by the Patents Act.
"The actual transfer took effect as a transfer by operation of
law, under the Swiss doctrine of Universal Succession," he said.
"At that point the assignment or transfer of the patent took effect
by operation of law."
"The Swiss Doctrine of Universal Succession is a process by
which, by operation of law, the assets and liabilities of one body
become the assets and liabilities of another. All rights and
obligations of the transferor company are moved into another
without the need for 'special acts of assignment'."
Mann said that the peculiarities of this transfer meant that it
was not covered by the Act's limit of damages. "The transferring
event was not in the nature of a bilateral consensual document.
Since, in my view, an 'assignment' within section 33(3)(a) is of
the nature described in the Tamglass judgment, this transfer does
not fall within the meaning of the word. I would agree that it is
not easy to discern a policy reason why the present situation
should fall outside the regimes of [Patent Act] sections 33 and 68,
but certain words have been used, with certain consequences, with
the result that there is an apparent lacuna. Accordingly Thorn's
case on this point fails."
The court found that Thorn did infringe Siemens' patent for the
coating of circuit boards. Thorn had argued that the patent itself
was invalid because it was an obvious extension of technology that
already existed, or prior art.
It said that a patent held by Toshiba covered similar
board-coating territory. While Thorn admitted that Siemens'
technology was slightly different, it said that those differences
were obvious developments of what is contained in Toshiba, and so
should not be protectable by a patent.
Mann said that he would hear further arguments from the two
sides in the dispute as to what the consequences of his ruling
should be.
