Waterfront was instructed by Ningbo Wentai Sports Equipment Co Ltd (“Ningbo”). Ningbo is a Chinese entity involved in the manufacture of “One-Click” golf trolleys sold in the United Kingdom and elsewhere.
Jonathan Wang had obtained patents in China and the UK which covered Ningbo’s “One-Click” products. However, Ningbo contended that it was the original inventor of the “One-Click” products and had disclosed these products to the public prior to the priority date of the patents.
Ningbo had already succeeded in a prior use claim in the Chinese courts and now claimed that the UK patent was invalid. Waterfront contacted Mr Wang in December 2011 setting out Ningbo’s claim of invalidity. Having received no substantive response to that claim, Waterfront issued proceedings against Mr Wang in early 2012 claiming revocation of the patent and a declaration of invalidity.
When his Defence was finally filed Mr Wang would not admit that the “One-Click” products had the features of the patent. He also argued that Ningbo’s disclosures did not count as novelty destroying because they were in breach of an obligation of confidence.
Waterfront immediately issued an application for summary judgment and argued that the breach of confidence argument was bad as matter of law in light of the EPO Enlarged Board of Appeal decision in UNIVERSITY PATENTS ( E.P.O.R. 33).
In April this year Mr Wang’s lawyers accepted that their client had no defence to the invalidity claim and agreed to submit to summary judgment. An order revoking the patent and granting a declaration of non-infringement was made by HHJ Birss of the Patents County Court on 30 April 2012.
Matthew Harris led the Waterfront team on this matter, assisted by Francesca Badowsk
After three decades of collaboration with the Federation Internationale de Football Association (“Fifa”), Electronic Arts Inc. (“EA”), the company that owns EA Sports, has told fans that it will no longer produce its world-famous football video game under the name “FIFA”. It now plans to release a game…
“Muzmatch” is a dating and marriage app that provides Muslims with the means to find a marriage partner online in a way that is compatible with Islamic values. Match Group recently brought proceedings against Muzmatch for trade mark infringement and passing off. It relied on a number of…
This case review from our trade mark expert, Maria-Elena Cacace, highlights the pitfall of failing to do a thorough trade mark clearance search and then being clobbered several years down the line by a major brand owner. On 16 February 2022, Hacon HHJ handed down judgment for a…