Curt G. Joa, Inc v Fameccanica Data SpA
Decision date: 24 May 2017
Neutral citation: [2017] EWHC 1251 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This case concerned Joa's challenge to EP(UK) No. 1 355 604 and FDS's conditional and unconditional applications to amend the patent. The court construed the amended claims to require ultrasonic bonding that creates holes in all three layers of the side panel, found the proposed amendments to introduce added matter and to be unclear, and dismissed FDS's applications to amend, leaving the patent to be revoked. The judge also held that, had the amendments been allowable, they would have been novel and inventive over the cited prior art Coslett.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
An amendment to a patent application is impermissible if it results in disclosure of matter additional to the application as filed (s.76(3)(a) applied), and claims must be construed in light of the specification as a whole; where the specification repeatedly uses terms interchangeably and describes a specific structural effect, the skilled person will adopt that construction (here, ultrasonic bonding producing holes through all three layers).
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment suggests as non-binding observations that reference numerals in figures may be used to identify but not to construe claim elements; that commercial consequences or alleged process failures do not negate a technical effect taught by the patent; and that evidential items such as photographs have limited weight without provenance or witness evidence.