Kathryn Pickard

Call: 2001

Kathryn’s practice covers all areas of Intellectual Property law. She draws on her scientific background to get to grips with challenging and technically diverse technology. Kathryn has a particular interest in patent law but is equally at home with trade marks, designs, copyright and trade secrets.

Kathryn has extensive experience of High Court and Court of Appeal litigation and also represents clients in the Intellectual Property Enterprise Court, Intellectual Property Office, before the Appointed Person and at mediation. She has appeared in the Supreme Court and House of Lords.

Kathryn also has experience of intellectual property litigation in other jurisdictions. She was a practising member of the Faculty of Advocates from 2014-2019, during which time she appeared regularly in the Court of Session. She has also appeared before the Supreme Court of Gibraltar.

Kathryn was awarded the “IT/IP Junior of the Year” at the 2018 Chambers and Partners Bar Awards and was The Lawyer’s ‘Barrister of the Week’ in July 2021. She was Consulting Editor of Halsbury’s Laws Vol 97A (2021): Trade Marks and Trade Names.

View Privacy Notice

Recent & Notable Cases

Kigen v Thales

Iain Purvis KC, Kathryn Pickard, David Ivison and Miruna Bercariu were instructed by Reed Smith LLP to act for Kigen in the Kigen v Thales HP-2022-000011 FRAND dispute relating to standards-essential eSIM patents. This...

Nicoventures Trading Ltd v Philip Morris Products SA [2023] EWHC 854 (Pat)

This patent revocation and infringement action concerned two Philip Morris patents for “heat not burn” tobacco systems that used inductive heating. The Court held that the patents were valid but not infringed. Iain Purv...

Philip Morris Products, SA v Nicoventures Trading Ltd & Anr [2022] EWCA Civ 1638

This was an appeal against the decision of Marcus Smith J that four patents for “heat not burn” tobacco products were invalid for obviousness. Philip Morris, the patentee, contended that the Judge had erred in his constr...

AutoStore Technology AS v Ocado Group Plc [2021] EWHC 1614 (Pat)

The parties are engaged in patent litigation concerning AutoStore’s patents for automated warehousing technology. By this application, Ocado sought an interim injunction to restrain AutoStore from disclosing certain info...

Philip Morris Products SA & anr v RAI Strategic Holdings [2021] EWHC 537 (Pat) & anr

Decision of Meade J addressing infringement and validity of two BAT patents directed to ‘heat-not-burn’ tobacco technology. The Judge found that Philip Morris’s IQOS system would have infringed the patents if valid, but...

Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat)

This was a patent action concerning DNA sequencing technology. Illumina was the proprietor of five patents which it alleged were infringed by MGI’s systems. Three of the patents related to a reversible chain terminato...

Edwards Lifesciences Corporation & Anor v Meril GmbH & Anor [2020] EWHC 2562 (Pat)

This was the first of three technical trials in a patent action concerning transcatheter heart values, artificial heart valves that can be implanted into a patient without the need for surgery, and their delivery systems...

Akebia Therapeutics Inc v Fibrogen, Inc & Astellas [2020] EWHC 866 (Pat)

A multi-patent action concerning the use of an enzyme inhibitor to treat anaemia and related conditions. The patents in issue fell into two families – Family A & Family B – and included claims to classes of compounds...

Warner-Lambert Company LLC v Generics (UK) Ltd t/a Mylan and anr [2018] UKSC 56

The Supreme Court has given its long-awaited decision on sufficiency and infringement of second medical use claims (in Swiss-form) and the approach to post-trial amendment of patents. Following numerous decisions of t...

The Supreme Court has given its long-awaited decision on sufficiency and infringement of second medical use claims (in Swiss-form) and the approach to post-trial amendment of patents.

Following numerous decisions of the Patents Court and Court of Appeal, the position was:

Claims 1 and 3 of Warner-Lambert’s patent, which covered the use of pregabalin to treat pain and neuropathic pain respectively, were invalid for insufficiency. Subsidiary claims limited to the treatment of peripheral neuropathic pain were valid as there was just enough in the patent specification to render such claims plausible;
Even if claims 1 and 3 had been valid, Arnold J had held that Actavis would not have infringed because it did not have the requisite intention that its skinny label product would be used for the treatment of pain.
On infringement, the Court of Appeal had expressed disagreement with Arnold J’s subjective intention test, preferring instead a test of foreseeability coupled with an assessment of whether all reasonable steps had been taken to prevent use for the patented indication;
Warner-Lambert’s post-trial application to amend claim 3 so that it only covered peripheral neuropathic pain constituted an abuse of process.

On Warner-Lambert’s appeal and Mylan / Actavis’ cross-appeals, the Supreme Court held that:

1) On its correct construction, claim 3 covered both peripheral and central neuropathic pain;

2) Warner-Lambert’s post-trial amendment did constitute an abuse of process and the Judge had been right to dismiss it;

3) The teaching that pregabalin could be used to treat neuropathic pain of either kind (peripheral or central) was not plausible. Therefore, all those claims that covered the use of pregabalin to treat neuropathic pain were invalid for insufficiency;

4) Obiter if claims 1 and 3 had been valid, they would not have been infringed. There was a difference of views as to why: Lords Sumption and Reed concluded that intention was irrelevant and that the sole criterion was the presentation of the product as it emerged from the manufacturing process (“objective appearance” test). Lord Mance agreed that the objective appearance of the product was key but left open the possibility that in rare cases additional factors might come into play. Lords Hodge and Briggs favoured Arnold J’s test of subjective intention.

Kathryn Pickard appeared on behalf of Mylan and Actavis

Michael Silverleaf QC appeared on behalf of the NHS as intervener

[2018] UKSC 56

Parainen Pearl Shipping Limited v Kristian Gerhard Jebsen Skipsrederai SA [2018] EWHC 2628 (Pat)

A patent case concerning a specialised cement carrying ship that comprised a patented cement unloading system. The ship had suffered extensive damage when it ran aground in the Oslo Fjord. The Claimant was a purchaser of...

Generics (UK) Ltd v Yeda Research and Development Co [2017] EWHC 2629 (Pat)

Generics (UK) Ltd v Yeda Research and Development Co[2017] EWHC 2629 (Pat): these patent proceedings concerned a dosage regimen for glatiramer acetate (“GA”) a treatment for Multiple Sclerosis, sold by Teva und...

Edwards Lifesciences LLC v Boston Scientific Scimed Inc, [2017] EWHC 405 (Pat); [2017] EWHC 755 (Pat)

This was a patent action about transcatheter heart valves i.e. artificial heart valves that can be implanted in patients without the need for surgery. It concerned two of Boston’s patents for “repositionable heart valves...

Teva (UK) Ltd v Gilead Sciences Inc [2017] EWHC 13 (Pat)

This was a challenge to the validity of Gilead’s SPC for an HIV-medication – Truvada – which comprised a combination of two active ingredients (Tenofovir and Emtricitabine). A number of pharmaceutical companies, includin...

Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel) [2016] EWHC 3103 (Ch)

This was a trade mark and passing off case concerning the right to use the name “Titanic”. Titanic Spa commenced proceedings against the Titanic Hotel for trade mark infringement and passing off, relying upon its “Titani...

Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2016] EWCA Civ 1006

This was the hearing of three appeals arising from the “pregabalin” litigation, which concerned validity and infringement of a second medical use patent. The three questions for the CA were: (i) had the Judge correctly a...

Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 576 (Pat) Trial C

This was the third technical trial in the mobile telecommunications patent case between Unwired Planet and Huawei & Samsung, concerning Unwired Planet’s patent portfolio. The patent in issue was entitled “Method f...

Accord Healthcare Ltd v Astellas Pharma GmbH [2015] EWHC 3676 (Ch)

This case concerned the correct interpretation of Articles 6, 8 and 10 of Directive 2001/83/EC on medicinal products for human use (the “Directive”). Accord applied for marketing authorisations in a number of Member S...

Generics (UK) Limited t/a Mylan v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat)

Warner-Lambert’s patent was a second medical use patent, which covered the use of pregabalin for the treatment of pain. Pregabalin was known as a treatment for epilepsy and generalised anxiety disorder. Mylan sought r...

Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

The Supreme Court has considered the difficult question as to when an overseas business can rely upon the goodwill in its name to restrain acts of passing off in the UK. The Appellants ran a very successful TV subscr...

Fresh Trading Limited -v- (1) Deepend Fresh Recovery Limited (2) Andrew Chappell [2015] EWHC 52 (Ch)

This case concerned the copyright in the "Dude" logo - the cartoon face with a halo which is used by Innocent Smoothies. The 'Dude' was designed by a company called Deepend pursuant to an agreement under which it would b...

Teva UK v AstraZeneca AB [2014] EWHC 2873 (Pat)

This was a second-medical use case concerning the use of a combination of budesonide and formoterol in the treatment of asthma. The combination had previously been known for maintenance treatment only but the patent disc...

Kennametal Inc v Pramet Tools SRO & Anor [2014] EWHC 565 (Pat)

This was a patent infringement and validity action concerning inserts for milling cutter tools. The Court held that there was no infringement and that, in any event, the patent was invalid in light of the prior art. T...

Samsung v Apple [2012] EWHC 1882 (Pat)

Acted for Samsung in expedited trial for a declaration that Samsung’s tablet computers did not infringe Apple’s registered design Samsung v Apple [2012] EWHC 1882 (Pat)...

Specsavers v Asda [2010] EWHC 2035 (Ch)

Acted for Asda in trade mark and passing off dispute concerning Asda optician’s advertising campaign. Specsavers v Asda [2010] EWHC 2035 (Ch)...

Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1513

Acted for aircraft manufacturer in long-running dispute with Virgin Atlantic over IPRs in aircraft seating system. Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1513...

Honda Motor Co v Neesam [2008] EWHC 338 (Ch)

Acted for parallel importer in case where established that trade mark proprietor had consented to importation. Honda Motor Co v Neesam [2008] EWHC 338 (Ch)...

Yeda Research v Rhone Poulenc Rorer [2007] UKHL 43

Appeared as junior counsel before House of Lords in case concerning the law of patent entitlement Yeda Research v Rhone Poulenc Rorer [2007] UKHL 43...