September 16, 2016
Mathys & Squire Successfully Defends British Gas In High Court Infringement Claim
We are pleased to confirm that we have successfully defended established client British Gas Trading Ltd (“British Gas”) in a £30 million infringement claim brought by claimants Meter-Tech and VanClare SE LLC (“The Claimants”) vis-à-vis British Gas’s past, current and proposed smart meter systems.
US-based VanClare is the registered proprietor of a UK patent for a smart utility metering system (the “patent”), whilst Meter-Tech is the exclusive licensee. The patent was apparently bought with a number of other patents for £160,000 from administrators after the former owner, Cheshire-based Secure Electrans Limited, became insolvent in 2014.
Having been threatened by the Claimants, British Gas began proceedings in the Intellectual Property Enterprise Court (IPEC) to revoke the patent, arguing that the patent was clearly invalid and it would be most cost-effective to deal with invalidity as a single issue. The Claimants responded by suing British Gas in the Patents Court for infringement. It was decided that as the revocation claim could not be heard more quickly in the IPEC than in the High Court, both claims should be tried together in the High Court.
In his 103 Page judgment handed down in the High Court today, Mr Daniel Alexander QC sitting as a Deputy Judge, ruled in favour of British Gas finding the patent invalid for obviousness over any one of 4 different starting points, notably stating that “the law requires the court to consider the person skilled in the art to be devoid of inventive ability. It does not require its notional addressee to be devoid of common sense.” (Paragraph 347) He also robustly dismissed some of the contentions made by the Claimant, noting that “an enthusiastic submission was made by Meter-Tech in closing to the effect that the “government has come round to the attractions of the Patent” and has “forced the Patent on the industry”. There was no evidence for this submission and I reject it without hesitation. It is particularly unjustified since in the alleged infringement by the future systems pursuant to the UK Government scheme the alleged benefit is not even used”. (Para 126).
Mathys & Squire senior IT and Electronics partner Ilya Kazi led the team, alongside Margaret Arnott, for British Gas and appointed Hogarth Chambers’ Richard Davis and Roger Wyand QC. The Claimants were represented by Williams Powell who appointed 11 South Square’s Hugo Cuddigan QC and Chris Hall.
Ilya Kazi commented on today’s judgment:
“We are naturally pleased with today’s judgment and it was reassuring to see that a patent which the whole team considered to be clearly obvious from the outset was ultimately found to be so after a thorough trial with extensive expert evidence. Moreover the judge’s unequivocal rejection of some of the Claimants’ assertions for lacking evidence was also appreciated. It is an important victory not just for us and our clients, but for all the millions of people who will be using smart meters, particularly those on pay as you go metering, to save on energy costs as the cost of implementing these would have increased had the Claimants won.”