Insect bite device maker made groundless threats to Boots, rules High Court

Zeno Corporation made a device called Zeno, a machine that applies heat for a specified time to an acne sufferer's spots. The machine was sold in many Boots shops, as well as in other chains.

German company Riemser Arzneimittel made and sold a similar timed heat applying device, but for use in the treating of insect bites.

German lawyers acting for Riemser wrote to a large number of Boots shops about their stocking of the Zeno device.

"Our client has now found out that your company offers in the United Kingdom under the trademark Zeno a medical device for the treatment of acne which is also based on the principle of the application of heat over a specific period of time," said the letters. "Up to this point we cannot see any difference to the technical solution for which our client was granted protection, all the more so since the temperature range is also within the limits of the range that is protected by the patent, and the patent discloses a lower limit in respect of the period of time."

"For this reason, we should like to request you to let us know why you are of the opinion that you need not take into consideration the patent of our client when marketing the product Zeno," said the letters.

Mr Justice Lewison said in his High Court ruling that Riesmer had not proved infringement of its patent by Zeno, and that Zeno qualified as a 'person aggrieved' by the threat, as the Patents Act demands. 

Communication cannot be a threat, the Act says, if it "makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed".

"The packaging in which the Zeno product was sold displayed the name and address of the manufacturer in Houston Texas and its UK distributor," said the ruling. "The writer of the letter knew who had manufactured the Zeno device; who had imported it and who was offering it for sale. So the purpose of the letter cannot have been to discover who was infringing the patent."

"Was the 'sole purpose' of the letter to discover whether the patent had been infringed?" asked the ruling. "If the writer of the letter were genuinely concerned to ask about some technical characteristic of the Zeno device that would point out a difference between that device and the device described in the patent the obvious person to write to would be the manufacturer. Why should the retailer know the technical details of what it sold?"

"And even if the retailer did know, surely the relevant person would be someone in head office responsible for Boots' corporate decision to stock it rather than any individual store manager. Why, then, were the letters sent to the retailers? The only answer must be to persuade them to stop selling the Zeno device. It partially succeeded in that objective. In my judgment that means that it cannot be said that 'the sole purpose' of the letter was to discover whether the patent had been infringed," said Mr Justice Lewison.

The judge said that Riemser claims that no ruling could be given in the absence of evidence that Boots shop managers were intimidated by the letters were false.

"It is not a question of how Boots understood the letter; but how a reasonable person in the position of Boots would have understood it," he said. "Read in context, through the eyes of a retailer, the letter amounted, in my judgment, to a veiled threat of infringement proceedings."

He said that he would hear an inquiry to set the level of damages.

Intellectual property law expert John MacKenzie of Pinsent Masons, the law firm behind OUT-LAW.COM, said that the ruling should send a signal to IP owners to be very sure of their ground before contacting retailers about patented products.

"This case highlights the importance of devising an enforcement strategy which takes into account the protection the Patents Act offers to retailers," he said. "If the intention is to try and scare retailers into taking the product off the shelves then you need to be absolutely clear that there has been infringement."

"It will be interesting to see the level of damages imposed in this case as that will determine whether the ruling acts as a real deterrent," said MacKenzie.