CITIBANK AND ULTRAFRAME

Here are two cases from last week that the IPKat, somewhat snowed under, hasn't been able to comment on yet.

Citibank patent application

Citibank NA v Comptroller-General of Patents, Designs and Trade Marks, a Patents Court decision of Mr Justice Mann (noted on All England Direct), was handed down last Friday, 9 June.

This case involved a patent application for a system for assuring the integrity of data used to evaluate financial risk or exposure. The application's two independent claims concerned a method for detecting abnormalities in input data to a financial transaction system both with, and without, the use of a computer. The Patent Office hearing officer refused the application on the ground that the invention was contrary to section 1(2) of the Patents Act 1977. This excludes the following from being patented:

"(a) a discovery, scientific theory or mathematical method …

(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer …

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such".

Citibank appealed, arguing that its invention was more than a claim to a particular algorithm and was more than a pure, or abstract, mathematical method.

Mann J dismissed the appeal. Looking at the overall scheme of the invention, it fell within the category of a mathematical method and was excluded under the Act: the addition of a computer did not add anything to the substance of the matter.

The IPKat notes that Mann J has relied on Macrossan's Application (IPKat here), which Lord Justice Jacob has agreed to hear on appeal (see IPKat blog here). He suspects that His Lordship is preparing to rewrite current quite strict practice on software-related inventions, making UK practice - shaped by his old friend Sir Hugh Laddie in Fujitsu Ltd’s Application [1997] RPC 608 - more patent-friendly. Merpel adds, all this could have been avoided if only the Computer-Implemented Inventions Directive had been allowed to live.


Ultraframe damages case

Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd and another [2006] EWHC 1344 (Pat), is a Patents Court ruling of Mr Justice Kitchin, also from Friday 9 June. It has been carried in full on the excellent BAILII service. It's a complex ruling on how to assess damages for patent infringement (in this case subsuming unregistered design infringement too) where some of the infringer's sales could be regarded as resulting in lost sales for the successful claimant while the rest of the sales of infringeing product would not have been made by the claimant even if the patent hadn't been infringed. The IPKat was very impressed with the patience with which the judge picked his way through some difficult factual detail, also affirming the principle that "convoyed" damages are available in addition to damages for loss immediately and directly caused by the infringing acts themselves. Merpel agrees: after all the bad news recently about expensive litigation in the UK and about the difficulties of getting summary judgment, it's comforting for people with infringed patents to know how widely the concept of loss can be construed.