BPRG - The Future

Hambi - 15 Oct'05 - 16:40 - 13295 of 13295

“…….if seo invented p2 and p3 through misuse of the original information then any use seo make of p2 and p3 represents damage to bprg. equally if bprg can argue that they would have produced p2 and p3 themselves (or equivalents thereof) if it wasn't for seo's misuse then either seo must grant bprg a free license to p2 and p3 or must pay damages for bprg being denied p2 and p3 (or having to pay for a license from seo). i don't think these points are difficult arguments for bprg to make.”

Conclusions on the Rotary Die family

94. BioProgress' claim to an interest in the Rotary Die family is based firstly on the fact that it makes use of the core inventive concept, and secondly on what occurred at the 8th September meeting.

95. In contrast to the claims and sub-claims of the First Family, the claims of the Rotary Die Family address the problem of using a rotary die to manufacture water soluble capsules. As pointed out above, the claims require that the dielectric welding occur at the rotary dies. Until Stanelco's work long after the collaboration with BioProgress, it was not thought to be possible to combine RF welding with rotary die production.

96. It is informative to note how BioProgress' case on this issue developed. The only inventor mentioned in their original claim was Mr Nowak. In his evidence in chief Mr Brown, BioProgress' Technical Director, explained how he put a three roller system on the board at the meeting on 8th September to explain the importance of registration, but does not go as far as to suggest that he had actually devised the concept of combining RF welding with a rotary die. When Mr Baldwin opened the case for BioProgress, he advanced Mr Brown as one of the inventors of this family of patents. Mr Miller objected that this represented a departure from the pleaded case and Mr Baldwin indicated that he would apply for an amendment if necessary. The amendment did not emerge until the last day of the trial. I reluctantly allowed the amendment to be made, as I felt that Mr Miller had had sufficient notice of the point. Both Mr Rencourt and Mr Draisey had acknowledged in their witness statements that rotary dies had been mentioned at the meeting.

97. I deal first with Mr Brown's alleged contribution. I reject the suggestion that anything said by him at the 8th September meeting contributed to the actual devising of the inventive concept. The context of his contribution was different, and everyone at the meeting was agreed that it had no relevance to RF welding. Indeed it remained Mr Nowak's view that rotary dies could not be combined with RF welding until he read the specification of the patent.

98. It follows that if BioProgress has any claim here they must base it on Mr Nowak's contribution of the core inventive concept. BioProgress says that, like the sub-claims of the First Family, the inventive concept here is just a refinement, not a new invention. The furthest I should go, it submits, is to say that this is a joint invention. Stanelco says that the Rotary Die inventive concept is a self standing combination invention, made long after any involvement with Mr Nowak. Mr Nowak cannot claim to be one of the devisers: he can claim to have contributed certain features (on the assumption that he was a deviser of the First Family), but he was not the person who was responsible for the inventive concept. To hold otherwise would be to award joint inventorship on the wrong basis identified by Jacob J in Henry Bros.

99. I prefer Stanelco's submissions. I do not regard this as a case of joint inventorship. Mr Nowak's idea started and finished with the core inventive concept. He had no further involvement thereafter. He cannot, on the facts as I have found them to be, claim to have been an actual deviser of the inventive concept of the Rotary Die Family.

Rotary Die Family: subsidiary claims

100. There was no evidence to suggest that the additional features of claims 2 and 3 (which concern the electrical connections to the die), claims 6 and 7 (dryness and temperature of the films), claim 8 (closeness of the dies and thinness of the film) could have come from Mr Nowak. Claim 4 claims a water soluble cellulose derivative as the film. Although this is a feature deduced by Mr Draisey from BioProgress, I do not think its contribution is sufficient to create a different inventive concept. Claim 5 concerns plasticisers. The evidence did not establish that these were anything other than inherent.

Conclusions on the Three Film Family

101. I have come to a very similar conclusion on the Three Film Family to those I reached on the Rotary Die Family. I have found that Mr Muncaster did not mention the Three Film concept as he alleged he did. The claim therefore rests on the Mr Nowak's contribution of the core inventive concept.

102. The Three Film Family is, again, a genuine combination invention, not just a refinement on the core inventive concept. Mr Nowak had no involvement beyond the disclosure of the core inventive concept. For similar reasons, I am unable to see Mr Nowak as one of the actual devisers of this invention.

Three Film Family: subsidiary claims

103. There is no basis for saying that BioProgress have any claim to the inventive concepts of the subsidiary claims of this family.