District Court, The Hague. 25 November 2015, C/09/483615 / HA ZA 15-245 (HP v Digital Revolution)
There is a sizeable market for printer ink cartridges. HP brought the patent proceedings against Digital Revolution, one of the largest suppliers of original and generic cartridges in the Netherlands and the owner of the website www.123inkt.nl. HP alleged Digital Revolution infringed the Dutch part of its European patent 2 170 617 relating to a printer cartridge provided with a memory unit ("EP 617") by offering and trading in generic cartridges compatible with HP printers. Digital Revolution denied infringement and counterclaimed for invalidity.
Digital Revolution argued EP 617 lacked novelty over an earlier patent granted to HP for virtually the same invention. HP did not contest that a number, but not all, of the claimed elements of EP 617 could be found in the earlier patent. The parties differed, however, as to the question whether the remaining elements could be "imagined away", on the basis that they concerned functional, rather than structural features.
Although the District Court agreed with HP that all technical claim elements must be considered, it did not mean automatically that the contested technical elements conferred novelty. The District Court gave the example of a mould for molten steel. A mould for tallow (a rendered form of beef or mutton fat) is not novel over a mould for molten steel, as the average skilled person would understand that a mould for molten steel will also be suitable for tallow without requiring any structural adaptations. According to the District Court, the question that should be dealt with is whether or not the claim elements require a structural difference over the prior art. In other words, whether the prior art was suitable for achieving what was later claimed in EP 617.
The District Court ruled that the contested claim elements of EP 617 did not require any physical/structural change over the earlier patent granted to HP, as EP 617 did not disclose that the validation fields and the other storage portions were structurally different to the prior art of the earlier HP patent. Therefore, such elements could not confer novelty over the prior art. The District Court therefore held that EP 617 was not novel over a cartridge according to HP's earlier patent.
The Dutch part of EP 617 was held invalid and HP was ordered to pay over €93,000 in litigation costs to Digital Revolution. It is expected that HP has already appealed against this ruling.
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