In the most recent UK patent case relating to the burgeoning LED lighting market, luminaire designers have been warned to check for competitor patents before selling new products.
In Collingwood Lighting v Aurora reported on 10th February 2014 Aurora’s I-9 fire-rated LED down light was found to infringe GB2475649 which protected Collingwood’s FireLED product.
The essence of the invention at the heart of the patent was considered to be the mounting of LED elements of luminaire in thermal contact with the inside of a fire resistant housing but with a heat sink outside the housing.
Referring to Synthon v Smithkline and Merrell Dow v H N Norton Justice Roth found the patent valid because a key US prior art citation, if performed, would not necessarily lead to the making of the subject matter of the patent.
With reference to inventiveness Justice Roth dismissed an argument based on common general knowledge (CGK) stressing that in line with Ratiopharm v Napp Pharmaceuticals the importance that any party that seeks to allege obviousness over CGK should provide particulars of what constituted CGK. The Judge also considered the skilled person would not have perceived there to be a problem with the existing fire-rated LED down lighters which placed a heat sink inside the heat resistant housing and accordingly found the patent non-obvious.
With respect to infringement, reference was made to Kirin-Amgen v Hoecht Marion Rousel and Virgin Atlantic Airways v Premium Aircraft Interiors and the repercussive effect of a dependant claim was used to support a finding of infringement.
Notably Justice Roth found there to be no "innocent infringer" defence for Aurora. As defendant in the action Aurora bore the burden of proving that they neither knew nor had reasonable grounds for supposing that the patent existed.
On balance Aurora were considered to be aware of at least one advertisement/advertorial promoting the FireLED product. Furthermore whilst no feature or advertisement specifically identified or referred to a patent or patent application, Aurora were considered to operate in "a field where manufacturers do seek patents for luminaires involving innovative features". Since the FireLED product was regarded as highly innovative in the market place this was deemed sufficient to put Aurora on notice that relevant patent protection might exist.
By not looking for relevant patent rights Aurora was not able to show it had no reasonable grounds for supposing that a relevant patent existed.
Practical Considerations
As a result of the Collingwood v Aurora decision designers and manufacturers of LED luminaires must beware that they are risking significant damage awards if they do not make reasonable efforts to identify relevant competitor patents and patent applications and consider infringement and validity issues.
Further information and advice in respect of this decision can be obtained by contacting Jason Boakes.