Sandoz v Bayer [2024] EWHC 796 (Pat)
Bayer owns European Patent (UK) No. 1 845 961 (the “Patent”), which concerns once daily dosing of rivaroxaban (a blockbuster blood-thinning drug). The Claimants (generics pharmaceutical companies: Sandoz, Teva, Accord, CIPLA, Amarox, Viatris and STADA) sought revocation of the Patent on the grounds of obviousness over a poster entitled “Effects of Bay 59-7939, an Oral, Direct FXa Inhibitor, on Thrombin Generation in Healthy Volunteers”, by Sebastian Harder et al (“Harder”), which was made available to the public at the 45th Annual Meeting of the American Society of Hematology in San Diego, USA, held between 6-9 December 2003 together with various abstracts cited in the Blood journal in 2003.
Hacon HJJ heard the trial between 9 and 22 February 2024. The Judge decided that the Patent is invalid as the Claimants alleged.
Adam Gamsa appeared as junior counsel for the Claimants: Sandoz, Teva, Accord, CIPLA, Amarox, Viatris and STADA, instructed by Pinsent Masons, Bristows, Penningtons Manches Cooper, HGF Law and Taylor Wessing.
[2024] EWHC 796 (Pat)
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 case was atypical in several respects, which gave rise to interesting legal challenges: it was a FRAND-first trial, the patents were asserted to be essential to GSMA standards, the claimant was the implementer, the negotiation only concerned four patent families, and Kigen was given permission to rely on technical evidence in the FRAND trial with respect to issues relating to the essentiality and validity of the patents in question. The case settled after the PTR.
This was Miruna’s first case as a junior tenant. She was involved in the preparation of expert reports, with a particular focus on the technical evidence, as well as in disclosure, several procedural applications and the drafting of the trial skeleton.
Mr Justice Edwin Johnson ruled on allegations that Merck Sharpe & Dohme LLC had breached the terms of an Order obtained following a long-running contract and trade mark action brought by Merck KgaA against MSD over the latter’s use of the sign MERCK outside the USA and Canada. The UK action was part of multi-national litigation between the parties over the use of the name MERCK.
The Judgment holds that MSD was in breach on multiple, though not all, occasions. It clarifies the scope of the injunction in the Order. Outside the specific findings, it addresses the circumstances in which declaratory relief will be ordered, whether it is appropriate to give declarations of breach instead of, or as a prelude to, contempt proceedings, and when there is targeting of the use of a sign to the United Kingdom even where no goods or services under the sign are available for sale in the United Kingdom.
Benet Brandreth KC acted for the successful claimant, Merck KgaA.
Abbott Diabetes Care Inc. & ors v Dexcom Incorporated & ors [2024] EWHC 36 (Pat)
This is a patent case relating to continuous glucose monitoring (“CGM”) technology, which now plays an important role in the management of type 1 diabetes. Abbott and Dexcom are the main players in this valuable market and are engaged in an ongoing patent dispute in which numerous patents are asserted by each side against the other in several jurisdictions. In the UK, the dispute has been case managed into a series of technical trials, of which this was the first. At trial, Abbott sought to establish that Dexcom’s G6, G7, and D1 systems infringed two of its patents: EP627, relating to aspects of the user interface; and EP223, concerning the validation of safety-critical software on devices such as smartphones. Dexcom asserted that two if its patents were infringed by Abbott’s Freestyle Libre 2 and 3 systems: EP159 and EP539, both relating to the way in which users are provided with alarms when high or low blood glucose is detected.
The trial took place over 6 days before Mellor J, and covered issues of infringement, novelty/obviousness in relation to six prior art documents, insufficiency, and amendment of various patents. All four of the patent in suit were held to be invalid.
Benet Brandreth KC and David Ivison, instructed by Bird & Bird LLP, appeared for Dexcom.
This was an appeal from the decision of the trial judge to revoke JCB’s EP(UK) Patent 2 263 965 for a control system for a telehandler. The control system is designed to stop the telehandler becoming unstable by preventing the telehandler arm from being moved into a position at which it causes the machine to tip about the front axle. The invention of the Patent is to switch the control system off when the machine is moving to prevent false indications of instability and allow the operator to move the telehandler arm at will.
At the trial there were three patents in suit. One was held valid and infringed and two (of which the Patent was one) would have been infringed but were held to be invalid. After the trial the parties settled their differences and the appeal was pursued by JCB unopposed by Manitou solely to restore the validity of the Patent.
The trial judge had held that the invention of the Patent was obvious over a prior disclosure in a Japanese patent application (Aichi) of a mobile work platform of a kind often called a cherrypicker. The control system of Aichi has two operating methods. It switches between them depending on whether the platform is stationary or moving. The trial judge had held that the control system in Aichi if applied to a telehandler would meet the requirements of the claim.
Following the procedure addressed in Halliburton’s Patent [2006] EWCA Civ 185 the Comptroller was directed by the Court to appear to assist the Court.
The Court of Appeal reviewing the evidence on the operation of the Aichi control system and held, contrary to the finding below, that because the Aichi control system remained in operation when the machine is moving it did not meet the requirement of the claim of the Patent that the system be disabled. Consequently, the Court of Appeal reversed the trial judge’s finding that the Patent was invalid.
Michael Silverleaf KC instructed by Baker & McKenzie appeared for the appellant, JCB.
Anna Edwards-Stuart KC instructed by Mills & Reeve appeared for the Comptroller.
Manitou was not represented on the appeal but was represented at the trial by Brian Nicholson KC and Kyra Nezami instructed by Marks & Clark
Philip Morris made a successful application to amend their claim to include a claim for Arrow type relief in patent proceedings. James Abrahams KC and Tom Alkin appeared for Philip Morris.
Bos applied to strike out a claim for a declaration of non-infringement on the grounds that it served no useful or proper purpose. The application turned on fundamental arguments about the Court’s power’s to control its own process. The application was successful, albeit the claim was stayed rather than struck out. Tom Alkin and Mitchell Beebe appeared for Bos.
AutoStore asserted a series of patents directed to warehousing robots against Ocado’s robotic warehousing system. The main patents were found invalid on the grounds of prior publication by AutoStore to the Russian Central Bank without obligation of confidence. They were also found not to be infringed by Ocado’s robots on the basis of their fundamentally different design features. Iain Purvis KC, Piers Acland KC and Tom Alkin appeared Ocado. Kathryn Pickard appeared for AutoStore.
Vernacare asserted a patent for a detergent resistant washbowl moulded from paper pulp containing fluorocarbon. The prior art disclosed oil and water resistant food containers moulded from paper pulp containing fluorocarbon. It was common ground that these were detergent resistant in fact. At first instance, the Judge found the patent inventive. Moulded Fibre appealed on the ground that he had wrongly treated the claim as requiring fluorocarbon to be added for the purpose of conferring detergent resistance. The Court of Appeal allowed the appeal. Tom Alkin appeared for Moulded Fibre Products.
Having heard a patent trial in which clinicians were called to give fact evidence, the Deputy Judge made observations on Practice Direction 57AC and the effect of derogations obtained without notice on weight. Iain Purvis KC and Tom Alkin appeared for Cook.
Penultimate instalment of a series of four patent actions between Philip Morris and BAT concerning ‘heat-not-burn’ technology. The patent in suit was directed to the use of inductive heating in a heat-not-burn device, and specifically use of the Curie point of the susceptor material to self-regulate temperature. The invention was found obvious over a series of posts in an online forum for amateur vape enthusiasts and not infringed by Philip Morris’s IQOS Iluma product in any event. The infringement analysis contains a useful discussion of the third Actavis question. Philip Morris’s claim for Arrow type relief was rejected on discretionary grounds. Andrew Lykiardopoulos KC and Tom Alkin appeared for Phillip Morris. Nicholas Saunders KC and Kathryn Pickard appeared for BAT.
The Court of Appeal has just handed down its much anticipated judgment in Lidl v Tesco. This was an appeal from the decisions of Mrs Justice Joanna Smith in [2023] EWHC 873 (Ch) (liability) and [2023] EWHC 1517 (Ch) (form of order), concerning the use by Tesco of the blue and yellow Clubcard sign and Lidl’s earlier rights in the Lidl logo. At first instance, Lidl succeeded in its claim for trade mark infringement, passing off and copyright infringement, however several of its Wordless Mark Registrations were invalidated on the ground of bad faith. The Judge also held that Lidl should be granted an injunction to restrain copyright infringement in any event.
The appeal was heard by Lewison, Arnold and Birss LLJ, and focused primarily on Lidl’s contention that the Clubcard signs conveyed the message of price matching with Lidl. Arnold LJ gave the main judgment, in which he dismissed Tesco’s appeal against the findings of trade mark infringement and dismissed Lidl’s appeal against the Judge’s finding of bad faith. The Court allowed Tesco’s appeal on the issue of copyright infringement. Birss LJ gave a short judgment in which he adopted a different analysis on detriment for the purposes of s.10(3), and in particular reinforced the proposition that a case of infringement for detriment to distinctive character cannot be made out solely on the basis of a “pure dilution” argument.
The judgment contains a useful summary of the applicable law in relation to all causes of action. Further, Arnold LJ engaged in a detailed consideration of the role and proper assessment of different types of evidence in trade mark and passing off cases. The judgment raised several interesting points:
- surveys carried out prior to litigation and for non-litigious purposes can be relied on without the permission of the court and even if they are not statistically significant;
- a judge is entitled to rely on evidence given by real consumers insofar as they assist the court in ascertaining the perception of the average consumer;
- the judge is entitled to rely on evidence the admissibility of which is not objected to by the other side;
- it is reasonable to infer, in the absence of an alternative explanation, that a price-matching perception was due to the similarity of the respective signs, despite this not being expressly stated by the evidence;
- Arnold LJ agreed with the proposition that innocent adoption of the sign complained of is not, in and of itself, sufficient for a finding of due cause – something more is needed;
- it was confirmed that, where objective circumstances give rise to a prima facie case of bad faith, the evidential burden shifts to the applicant to explain its intentions at the time of making the application. This is a legitimate approach regardless of the length of time passed since the application was made; and
- the case of Ladbroke v William Hill was held not to be relevant to the question of whether a derivative work is original over an antecedent work.
Lastly, Lewison LJ expressed his view that there cannot be a finding of due cause under s.10(3) where the judge finds that the defendant’s sign took unfair advantage of a registered trade mark. However, the issue thus remains to be clarified by the courts at a later date.
Finally, the Court emphasised the importance of restricting appeals to a review of first instance decisions.
Benet Brandreth KC and Edward Cronan appeared for Lidl, instructed by Bird & Bird. Iain Purvis KC and Hugo Cuddigan KC appeared for Tesco, instructed by Haseltine Lake Kempner LLP.
This was easyGroup’s appeal from decisions of Sir Anthony Mann in [2022] EWHC 3327 (Ch) . The judgment at first instance principally concerned easyGroup’s claims for trade mark infringement (which were largely unsuccessful) and counterclaims for revocation of easyGroup’s trade marks (which were successful save for one category of service). The appeal concerned two less significant aspects of the outcome at first instance namely (1) the Judge’s dismissal of easyGroup’s claim for passing off against two of the Respondents’ (“ELA”) historical signs (Signs 2 and 3) for lack of damage, and (2) the grant of a declaration of non-infringement (“DNI”) in relation to Signs 1 and 4, the <easyliveauction.com> domain name and ELA’s use of the plain words EASY LIVE AUCTION (on which there was no finding on infringement). ELA defended the decisions of the Judge and, by way of a Respondents’ Notice, asked the Court of Appeal to uphold the dismissal of the passing off claim because the Judge was wrong to have found that there was an actionable misrepresentation.
The appeal was heard by Lewison, Arnold and Falk LJJ, with Arnold LJ giving the judgment of the court. The appeal was allowed on the passing off ground and partially allowed on the DNI ground.
In dismissing ELA’s arguments on misrepresentation, the Court held as follows:
- A plea of an intention to create a link for the purposes of trade mark infringement under s. 10(3) of the Trade Marks Act 1994 is sufficient to allow a claimant to allege and rely on an intention to deceive for the purposes of a passing off claim.
- The Judge’s finding that the Third Defendant was not dishonest was consistent with his finding that the Third Defendant had an intention to deceive.
- A finding of misrepresentation is a finding of primary fact, with which the Court of Appeal is not entitled to interfere unless it was rationally insupportable
In allowing the appeal on the issue of damage, the Court held that a claimant which has an existing or prospective endorsement or licensing business can in principle rely upon the loss of a licence fee for the purpose of the damage element of the cause of action for passing off. It can do so without any evidence at all that any fee was in fact lost as a result of the defendant’s misrepresentation. This amounts to an irrebuttable presumption that the damage element is made out in claims brought by such claimants, for whom it is only therefore necessary to establish (1) goodwill and (2) a misrepresentation, in order to succeed.
On the DNI ground, the Court emphasised the importance of DNIs being precise. Notwithstanding the fact that the decision to grant, and the form of, the DNI was a matter for the discretion of the first instance judge, the Court of Appeal modified the DNI in respect of the plain words EASY LIVE AUCTION to limit it to forms used by ELA before the date of trial.
Chris Aikens appeared as sole counsel for ELA.
NOCO owned GB 2 257 858 (the “Patent”), concerning battery-powered car jump starters. Carku revoked the Patent on grounds of obviousness. Carku also alleged that statements made by NOCO to Amazon were actionable threats of patent infringement proceedings under section 70 of the Patents Act 1977. Those statements led to Amazon removing from sale on its site (“delisting”) various of Carku’s products sold there by Carku’s distributors. Meade J had heard the trial between 12 and 19 July 2022 and decided that the Amazon statements were actionable threats of proceedings.
NOCO appealed the Judge’s decision on threats on the basis that the Amazon statements (properly construed in the context of Amazon’s intellectual property rights complaints procedure and NOCO’s relationship with Amazon) were not threats of litigation but merely requests to stop selling products. The appeal was heard and dismissed by Lewison, Arnold and Falks LLJ on 12 December 2023.
Hugo Cuddigan KC and Edward Cronan appeared for Carku, instructed by Powell Gilbert LLP. Adam Gamsa appeared as junior counsel for NOCO, instructed by Jones Day.
This was an appeal from the decision of Bacon J in [2022] EWHC 901 (Ch) dismissing easyGroup’s claim for infringement of its mark EASYOFFICE under s.10(1) and (2) of the Trade Marks Act 1994 against Nuclei’s use (since 2000) of the sign EASYOFFICES. This appeal was the culmination of an acrimonious and factually complex 23-year-old dispute between easyGroup and Nuclei over the right to use the signs EASYOFFICE / EASYOFFICES in relation to the provision and brokerage of serviced office space.
The appeal was heard by Lord Justices Arnold and Nugee and Sir Christopher Floyd on 10-11 October 2023. In upholding the trial Judge’s findings on infringement and revocation for non-use, Lord Justice Arnold’s judgment addressed several interesting points of trade mark law:
- The Court emphasised the fact that use of a sign in (website) advertising for a third party’s services could be held to be use in relation to those services. The relevant question is whether the average consumer would perceive the sign as a badge of origin in relation to those services.
- Despite not expressly departing from any of the established authorities on the matter, the Court adopted a very strict approach to the concept of identity in holding that the signs EASYOFFICE and EASYOFFICES are not identical.
- The Court reiterated the principle expressed in Muzmatch that absence of instances of actual confusion becomes more relevant the longer the parties have used their signs in parallel.
- The case also includes a careful consideration of honest concurrent use as a factor to be relied on for the purposes of likelihood of confusion, as well as a useful summary of the relevant principles of a claim for revocation for non-use.
- In upholding the trial Judge’s decision on revocation, the Court confirmed that there is no de minimis threshold for genuine use. The Court also reiterated the fact that, although advertising may undoubtedly constitute use of a trade mark, it will rarely be sufficient on its own to constitute genuine use. This is particularly so where the advertising consists solely of a website, even if it is targeted at the relevant territory.
Mark Vanhegan KC appeared for the Defendants, instructed by Mishcon de Reya LLP.
This was the trial of a claim for infringement of a patent relating to the secure processing of payments by telephone calls to a call centre. The patent was addressed to a method for reducing fraud by blocking data signals relating to the payment whilst maintaining voice communication between the user and the call centre agent. The Defendants’ card payment system was alleged to infringe either on purposive construction or under the doctrine of equivalents.
The Defendants denied infringement and raised a Gillette/Formstein defence. They counterclaimed for invalidity on the basis that the Patent was obvious over three additional prior art citations (two patents and one press release).
The judgment discusses the composition of the Skilled Team and claim construction. The court held the patent obvious over the prior art patents and not infringed. The claimants propose to seek permission to appeal from these findings.
Michael Silverleaf KC and Kyra Nezami instructed by Michelmores LLP appeared for the Claimant.
Edward Cronan instructed by Shepherd and Wedderburn LLP appeared for the Defendants.
This was a claim for trade mark infringement, passing off and invalidity of the Defendant’s trade mark brought under the Shorter Trials Scheme. The Claimant and the Defendants are both providers of pet insurance. The Claimant operates under the name VETSURE; the Defendants under the name PETSURE.
Ian Karet, sitting as a Deputy High Court Judge, dismissed each of the claims. Key to the Court’s decision was that the marks were highly descriptive and were not conceptually similar.
The Court reaffirmed the following principles of general interest:
- descriptive marks which are not invalid for lack of distinctive character nevertheless have a very narrow scope of protection;
- in a market where highly descriptive brand names are commonplace, it is difficult for any such name to gain more than a minimal degree of distinctive character or reputation;
- the descriptive words within a mark are not perceived by the average consumer as an indication of origin.
Although the Claimant put in evidence a number of alleged instances of actual confusion, the Judge dismissed almost all of them and highlighted the important distinction between actual confusion and mere administrative errors (e.g. misspellings where the right party is nevertheless contacted). The few potentially relevant instances of actual confusion were not enough to give rise to a likelihood of confusion.
Chris Aikens appeared as junior counsel for the successful Defendants.
This was a claim for infringement of pharmaceutical Patent EP(UK) 2,345,410 for a modified release (“MR”) composition containing mirabegron. Mirabegron is used in the treatment of Overactive Bladder (OAB) syndrome. The Patent seeks to reduce the “food effect” which causes conventional formulations of mirabegron to show different pharmacokinetic effects in fed and fasted patients. The Defendants’ generics were alleged to infringe the Patent under a purposive construction. The trial followed an earlier action for revocation brought by Teva and Sandoz, whereby Astellas’ patent for the use of mirabegron in the treatment of OAB was found valid and infringed ([2022] EWHC 1316 (Pat), upheld on appeal).
Sandoz did not admit infringement. Teva admitted infringement of their Original Product, and the issue remains to be determined in relation to the New Teva Product. The Defendants counterclaimed for revocation of the Patent on the grounds of obviousness over three prior art citations, added matter and insufficiency (excessive claim breadth, including lack of plausibility, and uncertainty).
Following trial before Mr Justice Mellor, the Patent was found to be valid but not had not been proved to be infringed by Sandoz. The court also held that, if the Judge was wrong on the issue of construction, the Patent would be invalid for obviousness over two prior art citations relating to oral controlled absorption systems.
The case focused on the correct construction of the phrase “a pharmaceutical composition for modified release” in claim 1 and, in particular, on whether this integer required a reduction in food effect. The judgment included interesting comments on the extent to which construction of a patent claim should be influenced by findings on sufficiency and/or by the definitions of terms within such claim which are expressly provided in the Patent. The Judge regarded the voluntary inclusion of such definitions by the patentee as relevant and proceeded to construe the claim accordingly.
The judgment also includes a careful application of the relevant principles surrounding plausibility as a standard of sufficiency. Mellor J reinforced the test of “some reason for supposing” threshold for plausibility, as well as the distinction between structural and functional claim limitations and the three-step test laid down by the CA in FibroGen v Akebia. Further, the court emphasised the fact that arbitrary limitations in claims do not lead to insufficiency, provided the Patent promise is delivered up to that limit.
Anna Edwards-Stuart acted as junior counsel for the Claimant, instructed by Hogan Lovells Int. LLP.
This patent infringement / validity action concerned a manufacturing method for sealing electrodes into the ends of high performance quartz glass arc lamps.
The key issues of general interest discussed in the case were:
– construction of an express limitation in the claim (in particular the words “not bigger than”) [48]-[81];
– application of the principle from Napp Pharmaceuticals that no cause of action lies in respect of infringement below a de minimis level [91]-[119]; and
– the degree to which arguments in respect of patent validity need to be raised in skeleton arguments ([142]-[146]).
Christopher Hall acted as sole counsel for the Defendant.
This was the trial of an action for trade mark infringement and passing off brought by the owner of the Beverly Hills Polo Club brand against yet another competing brand using a polo theme. The action included claims against the licensor, the Royal County of Berkshire Polo Club, its directors, its former licensing agent and its director and the club’s licensees in six foreign jurisdictions. The trial was heard by Mellor J in June 2022. The claim sought to prevent the use of a logo comprising the name of the club with a figurative representation of a mounted polo player. The claimants’ logo comprises the name of its (fictional) polo club with a different figurative representation of a mounted polo player.
The judge held that the market for polo-themed clothing is a crowded one in which there are a number of participants using logos depicting mounted polo players, the largest and best-known brand being Polo by Ralph Lauren. He concluded that in such a market the names of the brands must be the primary distinction between them. He also held the evidence of alleged confusion failed to establish that there had been any significant confusion or that it was caused by the logo. He determined that the evidence of rather sporadic sales advanced by the claimants failed to establish a reputation other than in Italy. Consequently, the claim to enhanced distinctiveness through use failed. Both trade mark infringement and passing off claims were dismissed.
The judge held that he would have found the individual defendants personally liable had the club been liable as principal. However, he questioned the need for inclusion of such claims in the circumstances. The action also included a claim for conspiracy to injure by unlawful means, the inclusion of which the judge said left him bemused as it added nothing to the claim for infringement.
Michael Silverleaf instructed by Maitland-Walker LLP appeared for the defendants.
Court of Appeal decision on the publication of the Defendant’s confidential information and trade secrets in a judgment. The Court held that:
- the information in question (recorded in the first instance judgment and various other documents) has relative confidentiality, even though it could be deduced by someone with access to the public machines, because possession of the documents provides a ‘short cut’; and
- where it is necessary to protect trade secrets, open justice must give way to a still greater principle, which is justice itself.
The Defendants, Manitou, were granted an enduring 31.22(2) order in respect of its confidential information (constituting technical trade secrets).
Michael Silverleaf KC acted for the Claimant, JCB.
Brian Nicholson KC and Kyra Nezami acted for the Defendants, Manitou.
Dr David Parsons, an analytical chemist, was employed by Convatec. He claims to have made, alone or jointly with others, various inventions and patents which belong to Convatec. The inventions mainly relate to the use of silver in antimicrobial plasters and/or dressings and related products. In his claim, he seeks employee compensation from Convatec pursuant to section 40 of the Patents Act. Convatec applied to strike out (or for summary judgment in respect of) certain aspects of Dr Parsons’ claim on grounds that: parts are time barred by the Limitation Act; parts are outside the prescribed period for bringing a claim under section 40, and parts stand no realistic prospect of success because there was no patent granted, the patent was not granted to Convatec and/or the patent had been held invalid by the Court or the EPO. Dr Parsons cross-applied for extension of the prescribed period.
Zacaroli J heard the applications on 8 June 2023. The Judge decided that: (i) the existence of the prescribed period for section 40 claims means that the Limitation Act does not apply; (ii) it is unnecessary for the patents to have been granted to Convatec and (iii) the claims in relation to invalid patents would otherwise have been allowed to proceed. Dr Parsons’ cross-application to extend the prescribed period was refused.
Adam Gamsa appeared as sole counsel for Convatec, instructed by Bird & Bird LLP.
This was the first occasion on which a UK court considered the recent EPO decision in G2/21 on the law of plausibility. Bristol-Myers Squibb (BMS) appealed an order of Meade J revoking European Patent (UK) No. 1 427 415 and, with it, the UK Supplementary Protection Certificate No. SPC/GB11/042 (concerning the use of lactam-containing compounds and derivatives thereof, and, in particular, apixaban, as factor Xa inhibitors used to treat thromboembolic disorders) for the reasons given in [2022] EWHC 822 (Pat). The Judge’s decision was made following a trial in which Sandoz and Teva contended that the Patent is invalid because its specification did not make it plausible that apixaban would have any useful factor Xa inhibitory activity.
The appeal was heard by Lord Justices Arnold, Nugee and Warby on 19-20 April 2023. The Court unanimously dismissed the appeal. Lord Justice Arnold’s judgment contains a careful analysis of the most important European and domestic decisions on “plausibility” as a standard for sufficiency and inventive step. The Court applied the plausibility test in Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56 and restated the following principles on the subject: (i) the requirement for plausibility applies with equal force to claims to a single chemical compound, and there is no invention in merely identifying a new compound without disclosing its utility; (ii) the correct standard is the one laid down by the majority in Warner-Lambert; (iii) it is not sufficient for the Application to encourage the PSA to carry out simple tests even if such test would indeed show the product is likely to be efficacious – subsequent data cannot substitute sufficient disclosure, as supported by G2/21; (iv) there is no additional requirement for the judge to consider the ‘patent bargain’ as a way to circumvent the plausibility test.
The Court also upheld Meade J’s finding that neither the higher quantity of apixaban made, nor the existence of additional processing steps, nor even the two together are enough, without more, to suggest to the PSA that apixaban was an effective factor Xa inhibitor. The existence of assay test results not specifically linked to apixaban cannot lead to more than speculation.
The Court mostly found that G2/21 was consistent with the UK authority in Warner-Lambert. However, Lord Justice Arnold did express his obiter view that the different results of the majority and the minority judgments in Warner-Lambert evidence the fact that, contrary to G2/21, the “ab initio plausibility” and “ab initio implausibility” tests are, in fact, not the same, and that the Enlarged Board in G2/21 itself seemed to have substantially preferred the former.
Anna Edwards-Stuart appeared as junior counsel for BMS, instructed by Hogan Lovells International LLP and Wilmer Cutler Pickering Hale and Dorr LLP.
This was an appeal by Optis from an order of Meade J dated 10 December 2021 revoking European Patents (UK) Nos. 2093953, 2464065 and 2592779 (concerning the use of Linear Congruential Generators (LCGs) in the Physical Downlink Control Channel of a telecommunications system) for the reasons given in [2021] EWHC 3121 (Pat). The Judge’s decision was made following the third technical trial (Trial C) between Optis and Apple in their dispute over the terms of a FRAND licence of Optis’ portfolio of allegedly standard-essential patents. Apple accepted that the Patents are essential to the LTE 4G mobile telecommunications standard, and therefore infringed if valid. The Judge held that the Patents were obvious over Slides R1-081101 entitled “PDCCH Blind Decoding – Outcome of offline discussions” presented at a meeting of RAN1 (Radio Access Network Working Group 1) on 11-15 February 2008 (Ericsson). The Judge held that the reference text, Numerical Recipes in C 3rd edition (NRC3), did not create a prejudice against the use of LCGs as claimed in the Patents. Optis appealed.
The appeal was heard by Lord Justices Arnold, Nugee and Birss on 14-15 March 2023. The Court allowed the appeal by a majority (Birss LJ dissenting). The successful ground was that the Judge erred in finding that the statements in NRC3 deprecating LCGs were of low relevance to obviousness. The Court construed NRC3 to mean that the skilled person would have been deterred from making the claimed inventions.
Adam Gamsa appeared as junior counsel for Apple, instructed by Wilmer Cutler Pickering Hale and Dorr LLP.
Lidl brought trade mark infringement, passing off and copyright infringement claims against Tesco. The complaint concerned Tesco’s blue and yellow Clubcard Prices symbol, which was said to infringe Lidl’s logo. Tesco counterclaimed for revocation and invalidity of Lidl’s registrations of their logo without the word LIDL on it. On Tesco’s counterclaim, the court partially revoked the wordless marks and upheld the allegation of bad faith registration in respect of them. The court held that Lidl’s trade marks with text were infringed, and that passing off and copyright infringement were established. The case contains notable discussions of the law on unfair advantage and bad faith registration.
Benet Brandreth KC acted for Lidl and Hugo Cuddigan KC acted for Tesco.
The latest judgment in a long running patent dispute between BAT and PMI over ‘heat not burn’ technology. The patent in suit was found invalid and not infringed. PMI’s claim for an Arrow type declaration was also rejected. The judgment contains some interesting discussion of the Court’s jurisdiction to grant Arrow relief, and the impact of features which are disclosed but not claimed on Actavis question 3.
Tom Alkin (instructed by & Powell Gilbert LLP) for the Claimants and Kathryn Pickard (instructed by Kirkland & Ellis International LLP) for the Defendants
Patent infringement
This was an expedited appeal of Arnold J’s decision 2016] EWHC 1517 (Pat) () that Napp’s patent for transdermal patches containing buprenorphine for pain relief was not infringed by Dr Reddy’s and Sandoz’ generic patches.
The appeal was dismissed.
Patent validity, obviousness, insufficiency, infringement, Arrow relief
Glaxo sought to revoke five patents in the name of Vectura which related to methods for the manufacture of microparticles (composite active particles) for incorporation into pharmaceutical compositions to be used in inhalers. Although the subject matter of the claims was slightly different all involved the use of magnesium stearate. The patents were alleged to be obvious over various prior art citations and insufficient.
Arnold J held that Glaxo had not established that the patents were obvious over the prior art but that they were invalid on the ground of insufficiency. He also held that Vectura had not established that the patents were infringed by Glaxo, although Glaxo were entitled to an Arrow declaration because its process was obvious over the prior art citations.
Patents, Arrow relief
This was appeal against the judgment of HHJ Hacon striking out Glaxo’s claim for Arrow relief.
The appeal was allowed.
Passing off by use of a similar get up, passing off by equivalence
Glaxo sold its salmeterol/fluticasone combination product (under the name Seretide) in a purple inhaler. Following expiry of the relevant patent protection Sandoz launched a salmeterol/fluticasone combination inhaler. Although a different shape, Sandoz’ inhaler was also predominantly purple. Both inhalers were prescription only medicines, prescribed for the treatment of asthma and COPD. Glaxo alleged passing off based on the “get up” of its inhaler. The case was put two ways: misrepresentation as to trade origin and equivalence. Glaxo also alleged that Sandoz (and Vectura the manufacturer of the device) had deliberately intended to deceive health care professionals and patients in developing a purple inhaler. The defendants argued that purple was chosen to indicate the active ingredients in keeping with an established practice of colour coding inhalers e.g. brown inhalers for maintenance therapy and blue inhalers for rescue therapy.
The claim was dismissed in its entirety.
Patent validity, obviousness
Quinn sought to revoke two patents, one in the name of Linpac and the other in the name of Færch. The case was unusual in that the co-defendants were unrelated companies, although the subject matter of their patents was very similar justifying a single claim to revoke both patents.
Both patents relate to the secure application of film lids to plastic containers in which fresh fruit, meat and fish are stored and displayed in supermarkets.
Quinn alleged both patents were obvious over a single piece of prior art, Ono. Linpac had proposed various amendments to the claims of the Linpac patent. Quinn alleged that the amendments did not cure the invalidity and were in any event impermissible as adding matter.
The Judge revoked both patents.
Copyright, subsistence, infringement
Ashley Wilde manufactured and sold, inter alia, bedlinen for the ‘Kylie Minogue At Home’ including a range called Evangeline. BCPL manufactured and sold, inter alia, bedlinen for the ‘By Caprice Home’ brand named after Caprice Bourret, the highly successful model and reality television star. Ashley Wilde owned the copyright in an original artistic work, namely a prototype fabric for use in the Evangeline range, which was created by an employee. Ashley Wilde alleged that the Evangeline duvet cover was widely available in the UK and that BCPL or its designer had access to it and copied it to create the Amore range of bedlinen sold under the ‘By Caprice Home’ brand. BPCL averred that the Amore range was independently designed and so did not infringe. Ashley Wilde instructed an expert to support its allegation of copying.
The claim was dismissed at trial.
Patent infringement, strike out
Teva sought to revoke various patents owned by Chiesi relating to inhalers for a combination of beclomethasone and formoterol. Chiesi inferred from this that Teva was seeking to clear the way for its own generic inhalers and counterclaimed for infringement on this basis. Chiesi pressed for disclosure (alternatively a product description) in respect of Teva’s product in the usual way. Teva’s response was to apply to strike out the counterclaim on the basis there was no evidence it threatened or intended to commit an infringing act, alternatively that it was an abuse of process being advanced for a collateral objective, i.e. to have access to Teva’s commercial plans. In the alternative Teva sought to stay the infringement claim for reasons relating to competition law.
Birss J dismissed the strike out application on both grounds and dismissed the application for a stay.
Patent validity, insufficiency, plausibility, undue burden, conceptual uncertainty, obviousness, patent infringement by equivalence, patent infringement by off-label use
Fibrogen’s patents concerned the use of an enzyme inhibitor to treat various anaemias. The patents fell into two families (A & B) and included claims to classes of and single compounds. Akebia, for whom I acted, sought revocation of the patents on the grounds of insufficiency and obviousness. Astellas (the licensee) counter-sued for infringement. Arnold LJ held that the Family A patents involved inventive step but, to the extent that they covered classes of compounds, were insufficient. He held that the claims to classes of compounds would have been infringed on a literal basis, but dismissed the infringement claim based on equivalence to the single compound. The Family B patents were obvious. There was insufficient threat of infringement of the Family B patents.
The Court of Appeal reversed the findings of insufficiency ([2021] EWCA Civ 1279). The Supreme Court has granted permission to appeal.
Patentability
The UKIPO held that the Appellant’s patent application was excluded from being patentable under section 1(2) of the Patents Act 1977 as (1) a method for doing business and (2) a program for a computer, as such. Accordingly, the Appellant’s patent application was refused pursuant to section 18(3) of the 1977 Act. The patent application related to a method of avoiding ‘card clash’ when paying with contactless payment devices such as credit cards.
The appeal was allowed.
Patent validity, obviousness
This case began as a claim for patent infringement. The defendants submitted to an interim injunction and the proceedings were stayed pending determination of the validity of the patent at the EPO. The EPO upheld the patent. The defendants then sought to lift the stay of the English proceedings with the intention of invalidating the UK designation of the patent and claiming under the cross-undertaking given by the claimants in obtaining the interim injunction. The sole issue was whether the use of fluprostenol (a prostaglandin F2- analogue) was obvious as a treatment for glaucoma.
Meade J dismissed the claim to revoke the patent. That decision was upheld on appeal ([2022] EWCA Civ 845).
Patentability
The UKIPO held that the Appellant’s patent application was excluded from being patentable under section 1(2) of the Patents Act 1977 as (1) a method for doing business and (2) a program for a computer, as such. Accordingly, the Appellant’s patent application was refused pursuant to section 18(3) of the 1977 Act. The patent application related to a computer-based financial trading system. The application sought to avoid problems associated with latency by providing a plurality of servers co-located on or near the relevant financial exchanges and sending trade instructions containing smaller orders with an execution time enabling them to be received by the exchanges substantially simultaneously.
The appeal was dismissed.
Patent validity, insufficiency
This was an appeal of the findings of insufficiency and the obviousness of the Family B patents in the judgment of Arnold LJ ([2020] EWHC 866 (Pat)).
Birss LJ Arnold LJ had construed the claims incorrectly and applied the wrong test. Birss LJ held that the correct approach is to ask whether it is possible to make a reasonable prediction that the invention will work with substantially everything falling within the scope of the claim. In determining the scope of the claim compounds Birss LJ distinguished between two types of functional limitations: those that determine the scope of the claimed class and those that describe the technical effect to be achieved by the claimed compounds. He set out the following three-step approach:
(1) Identify what it is which falls within the scope of the claimed class;
(2) Determine what it means to say that the invention works (i.e. what is it for?);
(3) Answer the question whether it is possible to make a reasonable prediction the invention will work with substantially everything falling within the scope of the claim.
By this approach so-called step 1 functional features define the scope of the claimed compounds which are then assessed for plausibility rather than asking whether all compounds with the claimed structural features will have the claimed functional features. Accordingly Birss LJ found that the claims were not insufficient.
The appeal in respect of the finding that the Family B Patents were obvious was dismissed.
The Supreme Court have granted Akebia permission to appeal. The appeal will be heard in 2024.
Patent validity, obviousness, claim construction
Teva sought to revoke a single claim of Bayer’s patent to clear the way for its generic product. The claim was to the tosylate salt of a known compound (sorafenib). Teva argued that the tosylate salt was obvious. Bayer denied that the tosylate salt was obvious and further argued that, on its true construction, the claim required that the tosylate salt be suitable for oral administration.
Mellor J held that the claim was invalid.
Permission to appeal was granted by the Court of Appeal. The case settled shortly before the hearing of the appeal.
Patent validity, insufficiency (lack of plausibility), Agrevo obviousness
Apixaban, trade name ELIQUIS, is a successful drug for treating thromboembolic disorders. Sandoz and Teva each alleged that BMS’ patent protecting apixaban was insufficient because it did not contain any experimental data demonstrating that apixaban was an effective inhibitor of factor Xa, a key enzyme in the coagulation cascade. Sandoz and Teva also alleged that the patent was obvious over a single propr art citation.
The patent was held to be invalid by Meade J.
Permission to appeal was granted by the Court of Appeal. The appeal will be heard in April 2023.
Patent validity, obviousness
Teva and Sandoz each sought to revoke a patent of Astellas which claimed the use of mirabegron as a treatment for overactive bladder. By the time of the trial Teva and Sandoz relied on a single prior art citation, an Australian patent application referred to as 288, which Teva and Sandoz argued rendered the patent obvious, together with an insufficiency squeeze. Infringement was not disputed.
Meade J held that he patent was held to be valid and infringed.
Permission to appeal was granted by the trial judge. The appeal will be heard in July 2023.
Patent validity, obviousness
This was an appeal of the judgment of Meade J ([2021] EWHC 1026 (Pat)) in which he held that Alcon’s patent for the use of a prostaglandin F2 analogue (fluprostenol isopropyl ester) for the treatment of glaucoma and ocular hypertension was valid and infringed. The appeal related to the Judge’s findings regarding the obviousness attack and its interplay with an insufficiency squeeze.
The appeal was dismissed.
Patent validity, obviousness, lack of a technical contribution
Apixaban, trade name ELIQUIS, is a successful drug for treating thromboembolic disorders. This trial concerned various patents from the same family relating to formulations of apixaban. Sandoz/Teva argued that the Patents are obvious over various prior art citations and/or lacked a technical contribution.
Meade J held that all the patents were held to be invalid for lack of an inventive step over one of the prior art citations.
Permission to appeal has been granted by the Court of Appeal.
Patent validity, construction, obviousness, territoriality
Siemens alleged infringement of its patent relating to the location of bearings in wind turbines. GE denied infringement inter alia on the basis that its wind turbines were to be installed at Dogger Bank which was outside the territorial scope of the Patents Act 1977.
Meade J held that the patent was obvious over one of the prior art citations and not infringed. Further the acts that were to take place at Dogger Bank were said to be outside the territorial scope of the Patents Act.
Permission to appeal has been granted by the Court of Appeal.
[2022] EWHC 3034 (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 Purvis KC and Tom Alkin appeared for the patentee, Philip Morris. Kathryn Pickard appeared for Nicoventures.
Appointed Person decision in an appeal concerning AXA’s opposition to the registration of AXATE based on relative grounds.
O/1141/22 AXATE Trade Mark Application
Complex, consolidated invalidity, opposition and cross-opposition proceedings in relation to VETEMENTS trade marks. Miss Reid acted for the haute couture brand Vetements Group AG in invalidating and successfully opposing a number of trade mark applications including the name VETEMENTS by a recently incorporated company, on the grounds of bad faith (s. 3(6) Trade Marks Act 1994) and on the basis of the reputation of Vetements Group AG’s trade marks (s. 5(3) TMA). Having disposed of the other party’s earlier registered mark and earlier applications Vetements Group AG was also entirely successful in its defence of the oppositions against its trade mark applications.
VETEMENTS trade marks (O/1140/22)
Vodafone v IPCom [2023] EWCA Civ 113
IPCom was the registered proprietor of European Patent (UK) No 2 579 666 relating to the allocation of access rights within a telecommunications network. At trial, Mr Recorder Campbell held the Patent valid and infringed by Vodafone. Vodafone’s appeal was dismissed by the Court of Appeal. Vodafone had been ordered by both Mr Recorder Campbell and the Court of Appeal to pay (and Vodafone had paid) a portion of IPCom’s costs. The Patent was subsequently revoked ab initio by the Technical Board of Appeal of the European Patent Office. Vodafone applied under CPR rule 3.1(7) to set aside the earlier order of the Court of Appeal and sought repayment of IPCom’s costs and a costs award in their favour.
The application was heard by Lord Justice Lewison, Lady Justice Asplin and Lord Justice Arnold on 10 February 2023. The Court of Appeal dismissed Vodafone’s application on the basis that there was no jurisdiction to reopen a final order under 3.1(7) save in relation to continuing orders (such as final injunctions). In any event, even if jurisdiction had existed, Vodafone were the authors of their own misfortune for failing to take steps to protect themselves against the foreseeable events which transpired.
Brian Nicholson KC and Adam Gamsa appeared for IPCom, instructed by Bristows LLP.
[2023] EWCA Civ 113
This was an appeal by InterDigital against the decision of Mr Justice Mellor in technical trial B in these proceedings which found InterDigital’s patent invalid because it was anticipated over the prior art.
Kyra Nezami acted as junior counsel for Lenovo.
This was the second technical trial in the telecommunications patent case between InterDigital and Lenovo concerning InterDigital’s patent portfolio.
The trial concerned essentiality and validity of a patent directed to the multiplexing and E-TFC selection procedure in High Speed Uplink Packet Access (HSUPA). InterDigital alleged essentiality to various HSUPA standards and Lenovo counterclaimed that the patent was invalid for anticipation and obviousness.
Kyra Nezami acted for Lenovo.
Miss Reid acted for the Claimant in successfully defending against the Defendant’s application to strike out the claim for copyright infringement on the basis that the Claimant’s WaterRower was not a work of artistic craftsmanship. The Defendant conceded that the WaterRower had eye-appeal. The Court held that the Claimant had a real prospect of demonstrating at trial that the WaterRower satisfied the tests in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64, Cofemel-Sociedade de Vestuário SA v G-Star Raw CV (C-683/17; [2020] ECDR 9), SI and another v Chedech/Get2Get (C-833/18: [2020] Bus LR 1619) (Brompton) and Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216. Directions to trial were also provided.
The claim concerns allegations of worldwide copyright infringement, UK and EU trade mark infringement and passing off relying on various rights said to subsist in relation to Peppa Pig. The Defendants are a Vietnamese company and individual, a US company and a non-trading and now-dissolved UK company. The infringements are alleged to relate to the Defendants activities primarily in respect of a selection of Wolfoo videos. Miss Reid acted for the Defendants in seeking to set aside the Claim Form, served by email in the jurisdiction, on the Defendants’ solicitors.
Miss Reid acted for the Claimant in relation to a claim for infringement of literary copyright in scripts and text uploaded to YouTube. Cross-applications made at the CMC for abuse of process based on Jameel v Dow-Jones [2005] QB 946 and for summary judgment were dismissed, and part of the Defendants’ counterclaim was stayed on the basis it did not meet the cost benefit test in IPEC and was being addressed in separate County Court proceedings.
In the latest instalment in the fallout from the pregabalin litigation, Warner-Lambert had sought to amend its case on the damages inquiry to introduce an attempt to reduce the damages payable upon their cross-undertaking by arguing that Dr Reddy’s should not be entitled to recover the profits it would have made on the proportion of its lost sales of skinny-label pregabalin that would have been used by patients for the treatment of inflammatory pain. Warner-Lambert put its case on two bases:
(1) An ex-turpi causa argument that such sales would have involved an infringement by pharmacists, pursuant to sections 60(1)(b) and/or 60(2) of the 1977 Act, of those claims of the patent which related to inflammatory pain and which were not declared invalid during the liability phase.
(2) A contention that such sales, even if they would not have involved any infringement of the patent, would nevertheless have been enabled by the second medical use disclosed by Warner-Lambert in the patent such that it would be unjust and inequitable for Warner-Lambert to have to pay compensation in respect of those sales. This argument was prefaced on the proposition that the grant of a patent confers upon the patentee, in addition to the right to bring claims for infringement, a non-statutory monopoly over the inventive concept disclosed in the patent.
At first instance, the Judge had rejected the first argument inter alia on the grounds of abuse of process, and the second argument on the basis that there was no monopoly beyond the confines of the statute.
The Court of Appeal unanimously upheld the Judge’s conclusion on the first argument. In addition, Arnold and Nugee LJJ found that the claims of infringement by pharmacists had no realistic prospect of succeeding. Males LJ expressed “grave reservations” about the viability of the infringement case, but elected not to decide the appeal on that ground.
The second argument was unanimously rejected by the Court of Appeal, which confirmed that a patent confers no monopoly in respect of acts which do not infringe it.
Brian Nicholson KC and Christopher Hall represented Dr Reddy’s.
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 construction of the patents and that such error had led him to consider the wrong question on obviousness. The Court of Appeal upheld the first instance decision.
The case is of interest because of the Court of Appeal’s approach to construction where the language of the claims is reasonably capable of bearing a wide or a narrow meaning. If the narrow meaning would exclude something that the patentee has described as an embodiment of the invention, then in the absence of clear exclusionary language, the wider meaning is to be preferred.
Tom Alkin appeared for Philip Morris and Kathryn Pickard for Nicoventures
Trial of an action for infringement of three patents relating to the control systems for telehandlers (machines widely used in the building industry and agriculture for moving and lifting loads) which were designed to control the operation of the machine so that it operates efficiently within safe working limits. The trial judge, Hacon HHJ sitting as a judge of the High Court, held that two of the patents were invalid but would have been infringed if valid and that the third patent was valid and historically infringed by the defendant.
Both parties have been given permission to appeal.
Michael Silverleaf KC instructed by Baker & McKenzie represented the claimant, J C Bamford with Tim Austen
Brian Nicholson KC and Kyra Nezami instructed by Marks & Clerk Law represented the defendants
This is one of many actions brought by these claimants for infringement of their registered trade marks for the mark BEVERLY HILLS POLO CLUB with a polo player logo and passing off. At the PTR for the trial (which took place in June 2022) the claimants applied to strike out large parts of the defendants’ evidence on the ground that it was expert evidence served without permission. The court (Mellor J) refused the application holding that the evidence was trade evidence of a kind long recognised as helpful in trade mark and passing off actions. He conducted an extensive and valuable review of the applicable jurisprudence.
Michael Silverleaf KC instructed by Maitland Walker represented the defendants
Neo had infringed the Claimants’ patent by dealing with high surface area (‘HSA’) ceric oxide products in the UK. Those products are used (in combination with a number of other ingredients) in the manufacture of exhaust catalyst systems to reduce emissions. Neo’s commercial sales in the UK to its customer, Johnson Matthey, had been compromised. However, at the inquiry, the Claimants sought damages of over €24m for loss of overseas sales consequent to Neo’s supply of development samples and sale of initial quantities of HSA ceric oxide in the UK. Bacon J had refused the claim on the basis that the patent infringement was not the proximate cause of any overseas lost sales. The Claimants appealed and Neo’s respondent’s notice sought to uphold the judgment on the basis that the losses were outside the territorial limits of the scope of protection of a UK patent, were disproportionate and a barrier to legitimate trade (according to TRIPS and the Enforcement Directive). Neo also challenged the Judge’s quantification of a reasonable royalty and sought permission to raise a new argument about Rhodia’s status as an exclusive licensee and associated disclosure.
Lord Justices Peter Jackson, Coulson and Arnold heard the appeal between 13 and 15 December 2022. The Judges dismissed the appeal but nevertheless went on to address the arguments raised in Neo’s respondent’s notice and application. They held that the duty nexus legal filter in tort generally does not apply to losses factually and legally caused by patent infringement; and that the claim would not have constituted a barrier to legitimate trade or have been disproportionate. The Court did not order the disclosure sought or permit Neo to introduce the new argument on appeal.
Hugo Cuddigan KC and Adam Gamsa appeared for Neo, instructed by Bird and Bird LLP.
Dispute over the ownership of IP created by a postgrad student at Oxford University. A postgrad, Mr Jing, was given the task of developing a compact fluorescent microscope by the University’s physics department pending and during his PhD. Under the University’s IP policy, the resulting IP belonged to the University, with any royalty income to be shared with Mr Jing and his supervising Professor. The claimant, the University’s technology transfer arm, secured patent protection for the microscope. It arranged for the incorporation and funding of the defendant to commercialise the microscope under licence and gave Mr Jing a leadership role and a significant equity stake. The defendant ceased paying royalties under the licence, arguing that the University’s IP policy amounted to an unfair term in a consumer contract. The Court (Daniel Alexander QC sitting as a Deputy Judge of the Patents Court) rejected that argument, affirmed the licence and ordered payment of royalties. The judgment contains a detailed discussion of the IP policies of universities generally.
Tom Alkin appeared for the Claimant/Third Party.
This was an appeal in an arbitration claim. The appellant and respondent were parties to an arbitration conducted under LCIA Rules, where Oovee’s principal claim was for unpaid royalties under a licence agreement relating to sales of a successful video game. In the arbitration, Oovee obtained an order that S3D give a bank guarantee or deposit with the LCIA the sum of US$10,902,576, as security for any future arbitration award issued in favour of Oovee, on the ground S3D had been dissipating assets. S3D failed to comply with that order and so Oovee sought and obtained a peremptory order from the tribunal in the same terms. Again, S3D did not comply.
Having obtained permission from the tribunal, Oovee sought an order from the Commercial Court under s. 42 of the Arbitration Act 1996 that S3D comply with the peremptory order of the tribunal. Butcher J granted that order in a judgment ([2022] EWHC 2949 (Comm)) in which he also dismissed S3D’s jurisdictional challenge under s. 67 of the 1996 Act. The Judge decided to grant the s. 42 order notwithstanding the existence of S3D’s pending challenge to the jurisdiction of the arbitral tribunal, which was based on the allegation that Oovee had committed a repudiatory breach of the arbitration agreement by disclosing certain arbitration documents and information about the arbitration to third parties.
S3D were granted permission to appeal Butcher J’s s. 42 order on the single ground that, when considering whether to make an order under s. 42, the court must investigate and be satisfied of the jurisdiction of the arbitral tribunal over the substantive dispute referred to it before making such an order. The Court of Appeal dismissed the appeal. S. 42 could not be interpreted so as to contain such a requirement. Such an interpretation was not supported by the section’s wording and was inconsistent with both the purpose of s. 42, namely to support the arbitral process, and the wider principles in s. 1 of the 1996 Act.
Chris Aikens appeared as sole counsel for the successful Respondent.
This case is the latest chapter in the series of trade mark infringement and passing off cases that easyGroup has brought in recent years against various parties who trade under names including the word “easy”. These Defendants had been operating an online auction bidding platform and providing back-office software for use in the auctioneering trade in the UK under the name Easy Live Auction since 2010.
easyGroup claimed infringement of five registered trade marks: easyJet, easyGroup, easyMoney, easyProperty and Easy Networks. It was alleged that there was a likelihood of confusion between each of those marks and the four signs used by the Defendants in relation to advertising, information, payment and platform services. The four signs were different stylisations of the name Easy Live Auction used at various dates and were each presented as white text on blue background. It was also alleged that the use of those signs took unfair advantage of and caused detriment to the distinctive character and repute of the Claimant’s trade marks. easyGroup further claimed passing off. The Defendants denied the claims and counterclaimed for revocation of four of the marks for non-use in relation to several categories of services included in the specifications of easyGroup’s marks.
Following a trial before Sir Anthony Mann, the counterclaim for revocation succeeded, save for one category of service in the specification of one of the Claimant’s marks. As a result, the scope of the infringement claim was significantly reduced. The Judge dismissed the infringement claim based on likelihood of confusion, due to a lack of similarity between the services, and dismissed the claim for passing off, for lack of damage. The infringement claim under s. 10(3) of the Act succeeded in relation to three of the Defendants’ signs, use of which had ceased by the time proceedings had been commenced, based on unfair advantage.
The case raises interesting points of law in relation to the application of the Brexit provisions of the Trade Marks Act to non-use counterclaims, the impact of the limitation period on the date of assessment of trade mark infringement claims and the conditions for relying on a ‘family of marks’ in support of a case on likelihood of confusion.
In a separate reserved judgment, the Court held that easyGroup should pay 35% of the Defendants’ costs.
Chris Aikens appeared as sole counsel for the Defendants
In the matter of UK Registration no. 3092547 in the name of The Jolly Hog Group Limited in respect of the trade mark “PORKY BLACK” and an application for a declaration of the invalidity thereof by Porky Whites Limited
Jacqueline Reid, instructed by Pennington Manches Cooper, represented Porky Whites Limited in their successful application under s. 5(2)(b) Trade Marks Act 2014 to invalidate the registration of the mark PORKY BLACK in relation to sausages. The PORKY BLACK mark had been registered for a wide range of other goods and services, but the registration was abandoned in respect of all the goods and services, except sausages, early in the proceedings. The PORKY BLACK mark was considered to be too close to the PORKY WHITES mark, used for sausages, and in the circumstances, a significant proportion of consumers would believe that “PORKY BLACK” referred to another variety of the Porky Whites Ltd.’s sausages, causing indirect confusion.
In the matter of Registration nos. 3465150 & 3434191 in classes 35, 41 & 44 and the application for cancellation thereof by the Royal College of Veterinary Surgeons
Jacqueline Reid, instructed by Pennington Manches Cooper, appeared for the RCVS, the statutory regulator of the Veterinary professions, and proprietor of a certification mark registered in class 44 for “the provision of veterinary assistance and animal nursing services”. RCVS applied to cancel trade marks registered by a company set up by a regulated veterinary nurse, in relation to services relating to the veterinary profession, which incorporated the terms “District Veterinary Nurse” and “Association Veterinary District Professionals”, and sought to monopolise the use of the terms to the exclusion of others. The intention of the proprietor was to set up an association to regulate, control, register and accredit the role of district veterinary professionals, in particular veterinary nurses, who work in the homes of animal owners, when it knew that it was not an official or authorised regulatory body, and did not have authorisation from the appropriate authority governed by statute (RCVS), that the RCVS was the statutory body responsible for the regulation of the services that it proposed to offer, it knew that the role of District Veterinary Nurse was already being promoted by the RCVS and it was not authorised to provide accredited education services. The veterinary nurse could not hide behind the company set up for this purpose and the conduct raised a prima facie case of bad faith, which the proprietor did not address in evidence nor did it provide any explanation for its conduct. As a result, the marks were invalidated on the basis of the applicant’s bad faith pursuant to s. 3(6) Trade Marks Act 2014.
In the matter of an Opposition by Pathway IP II GmbH to the Application no. 3510920 by HQHUBS Ltd to register as a trade mark “HQHUBS” in classes 35, 36, 41 and 43
Jacqueline Reid appeared for the Opponent, PATHWAY IP II GmbH, instructed by Haseltine Lake Kempner LLP. The Application sought to claim every single service listed in classes 35, 36, 41 and 43. The Opponent relied on its earlier mark “HQ” for services in classes 35, 36 and 43 in respect of a limited subgroup of those services. The Applicant was not experienced in trade mark matters and apparently taken no advice before making the application. However, even though the applicant did not intend to use the mark in relation to all the services applied for, the Hearing Officer did not accept that the application was made in bad faith, because, in filing the application, the applicant displayed a complete lack of understanding of the trade mark system and the purpose of a trade mark, rather than having a nefarious purpose (of seeking to unfairly benefit from the trade mark system). At the hearing the applicant sought to substantially reduce the scope of its application. However, the core business of the applicant was the same as that of the opponent, though on a far smaller scale, the opponent being dominant in the market. Accordingly, the Hearing Officer concluded that there was a risk of indirect confusion between HQHUBS and HQ in respect of corresponding services, under s. 5(2)(b) Trade Marks Act 2014.
In this short judgment on costs and consequentials, Adam Johnson J considered the guideline hourly rates for solicitors in specialist intellectual property proceedings, observing the need for a “clear and compelling justification” to exceed those guideline hourly rates (see Males LJ in Samsung v LG Display [2022] EWCA Civ 466).
The Judge considered the complexity of the issues which arose in the substantive applications, and held that “a departure from the Guideline Rates is justified on the basis of the long-established principle that specialist solicitors in specialist areas of activity should recover an uplift to reflect that specialism, where that is justified in the circumstances..”.
Christopher Hall represented the Defendants.
NOCO owns GB 2 257 858 (the “Patent”), which concerns battery-powered car jump starters. Carku sought revocation of the Patent on grounds of obviousness over three prior art citations: Richardson, Krieger and a manual for a jump starter made by a company called Projecta. Carku also alleged that statements made by NOCO to Amazon were actionable threats of patent infringement proceedings under section 70 of the Patents Act 1977. Those statements led to Amazon removing from sale on its site (“delisting”) various of Carku’s products sold there by distributors. NOCO counterclaimed for infringement.
Meade J heard the trial between 12 and 19 July 2022. The Judge decided that: (i) the Patent is invalid for obviousness over Richardson and Projecta but not Krieger; (ii) the Amazon statements were actionable threats of proceedings; and (iii) some of Carku’s products would have infringed by equivalence, had the Patent been valid.
Hugo Cuddigan QC and Edward Conan appeared for Carku, instructed by Powell Gilbert LLP. Adam Gamsa appeared as junior counsel for NOCO, instructed by Taylor Wessing LLP.
Apixaban, trade name ELIQUIS, is a successful drug for treating thromboembolic disorders. This trial concerned four patents relating to formulations of apixaban (the “Patents”), all from the same family having priority dates of 25 February 2010. Sandoz/Teva argued that the Patents are obvious over a review article by Carreiro and Ansell, “Apixaban, an oral direct Factor Xa inhibitor: awaiting the verdict”, published in November 2008 in Expert Opinion on Investigational Drugs, (“Carreiro”). The other prior art citations pleaded by Sandoz/Teva were not considered at trial.
Meade J heard the trial in person between 28 April and 13 June 2022. The Judge decided that that the Patents are invalid for obviousness over Carreiro in light of the common general knowledge of the skilled person.
Adam Gamsa appeared as junior counsel for Sandoz, instructed by Bristows LLP. Piers Acland QC and Anna Edwards-Stuart appeared for BMS/Pfizer, instructed by Hogan Lovells LLP.
This interim decision was concerned with the appropriate terms of a ‘confidentiality ring’ for the purposes of disclosure of documents containing confidential information in the course of litigation. The particular question was whether external lawyers (namely, UK solicitors and counsel instructed in the action) should have to provide signed undertakings as a condition for entry into the confidentiality ring.
Mr Justice Zacaroli held that the appropriate terms of such a confidentiality ring were to be determined in accordance with the principles articulated by the Court of Appeal in OnePlus Technology (Shenzen) Co Ltd v Mitsubishi Electric Corporation [2020] EWCA Civ 1562, and that it is for the party seeking to impose confidentiality restrictions to justify them (see [6], [20] and [28]).
The Court held that where the confidentiality restrictions sought to be imposed did not place external lawyers under any more onerous obligations than those imposed already in their equitable and professional duties and obligations, it was unnecessary to require those external lawyers to provide signed undertakings (see [21] and [37(2)]).
In addition, the Court held that there was no justification for requiring external lawyers to provide an undertaking not to be involved in future work to which the confidential information might be relevant, in particular because external lawyers are well-versed in the need to partition confidential information obtained in different cases and to restrict their use of such confidential information to the case in which it is disclosed (see [29] and [37(3)]).
Christopher Hall represented Dr Reddy’s
This was an application for expedition of a hearing which would address an application for expedition of a STS trial in the Patents Court.
The Defendant’s patent, EP(UK) 3,266,631 (the “Patent”), concerns sun blinds for vehicles. Each of the parties are incorporated in Germany, manufacture their respective products in Germany and supply them to German car manufacturers.
The Defendant commenced proceedings against the Claimant for infringement in Germany in August 2021. At that time, the Defendant had allowed the Patent to lapse in the UK by non-payment of the renewal fee. In November 2021, the Claimant paid the renewal fee on the Patent and, shortly after, commended these proceedings for a declaration of non-infringement.
In June 2022, the Claimant applied for expedition of the trial and an expedited hearing of that application to be heard alongside two pre-existing applications by the Defendant which been listed for October 2022. The Claimant applied for the combined hearing to be heard before the end of July 2022.
Mellor J refused the Claimant’s application. The Claimant’s ultimate aim was to obtain an expedited trial and decision in the UK before the German infringement trial in December 2022. The ‘spin off’ value of a UK judgment was not enough on its own to justify expedition where validity was in issue. That factor was even less powerful here where validity was not in issue and there was no injunction gap in Germany. Mellor J held that the Claimant had not shown any reason, let alone a good reason, to justify expedition of the trial. It followed that there was no reason to expedite the hearing of that application.
Mitchell Beebe appeared for the Defendant, instructed by Powell Gilbert
The principal issue concerned the applicability to a claim for trade mark infringement of the prohibition in paragraph 2.1 of Practice Direction 7A against issuing low-value claims in the High Court: “Proceedings (whether for damages or for a specified sum) may not be started in the High Court unless the value of the claim is more than £100,000.”
The claim for trade mark infringement sought in the alternative remedies of an inquiry as to damages or an account of profits. The Claim Form was issued in the main Intellectual Property List of the High Court, but neither the Claim Form nor the Particulars of Claim stated that the value of the claim was in excess of £100,000. The Defendants contended that the Claim Form was issued contrary to paragraph 2.1 of Practice Direction 7A.
The Court held that paragraph 2.1 of Practice Direction 7A applies only to money claims. Since a claim for an inquiry or an account in the alternative is not a money claim (see Lifestyle Equities v SportsDirect.com [2016] EWHC 2092 (Ch)), the prohibition did not apply, and the Claim Form was properly issued in the High Court [paragraphs 26-47].
Christopher Hall represented the Defendants.
In these proceedings the Claimants allege infringement by Mylan of European Patent (UK) No. 3 103 443 (“EP443”). EP443 is a second medical use patent which (as unconditionally proposed to be amended) claims the use of a prolonged release formulation of melatonin in a 2 mg dose for improving the restorative quality of sleep in a patient aged 55 years or older suffering from primary insomnia characterised by non-restorative sleep (“NRS”).
In previous proceedings brought by the Claimants against Mylan for infringement of EP702, Marcus Smith J dismissed a number of challenges to the validity of EP702 advanced by Mylan for the reasons given in his judgment dated 4 December 2020, [2020] EWHC 3270 (Pat). Shortly afterwards, however, EP702 was revoked as a result of Neurim’s withdrawal of an appeal against an order for revocation by the Opposition Division of the European Patent Office at the conclusion of a hearing before the Board of Appeal. EP443 is a divisional of European Patent (UK) No. 1 441 702. Marcus Smith J rejected Mylan’s challenge to the validity of EP443 for the reasons given in the December Judgment as supplemented in a judgment dated 8 March 2022, [2022] EWHC 519 (Pat).
Mylan appealed Marcus Smith J’s decision that EP443 plausibly disclosed the claimed effect notwithstanding Mylan’s “lay patient argument”, namely that the data disclosed in EP443, being patients’ responses to two questions taken from the Leeds Sleep Evaluation Questionnaire, would not be considered by the skilled person to be specific to NRS.
The appeal was heard by Newey, Arnold and Birss LLJ on 19 May 2022 and was dismissed.
Piers Acland QC, Adam Gamsa and Mitchell Beebe appeared for Mylan, instructed by Taylor Wessing LLP
This was an appeal of a case management decision to allow certain amendments to a statement of case in a trade mark infringement claim. Both sides use the mark STEALTH in relation to headphones for computer gaming. The Court of Appeal allowed the appeal and refused the Respondents’ application to amend the Defence and add a counterclaim.
Each of the amendments sought by the Respondents relied on their acquisition of a trade mark for STEALTH that pre-dated the Claimant’s trade mark registrations. Relying on that mark, they sought to add a defence under s. 11(1B) of the Trade Marks Act 1994 and a counterclaim for infringement of the earlier mark. The Claimant objected to the amendments on discretionary grounds, namely that the amendments could and should have been made earlier. The Court of Appeal held that Miles J was wrong to permit the amendments and allowed the appeal. In doing so, the Court of Appeal held that the Respondents had attempted to take advantage of the process of civil justice itself and that to permit the application to amend, both the defence and add the counterclaim, would have been to sanction an act of deliberate concealment by the party seeking to be permitted to amend.
Chris Aikens appeared for the Appellant and Benet Brandreth QC appeared for the Respondents.
Novartis is the owner of a patent application covering the use of the pharmaceutical ‘fingolimod’ (which Novartis sells under the brand name ‘Gilenya’) for the treatment of relapsing multiple sclerosis. With the end of data exclusivity imminent, Novartis sought to prevent generic launch via an interim injunction on the basis of its pending patent.
The facts were unusual, because fingolimod is supplied only in secondary care such that its price is not determined by the NHS drug tariff. Instead, in the expectation of generic launch, the NHS had invited interested suppliers to partake in a central tender process. On those facts, the Court considered that generic launch was unlikely to cause an irrecoverable downward price spiral [44]-[54], and rejected Novartis’ contentions of other non-quantifiable financial and reputational damage [55]-[71]. Thus damages would be an adequate remedy for Novartis if the patent were ultimately held to be valid and infringed, and interim relief was refused.
A novel twist was that Novartis’ patent was still pending grant at the EPO, in part because it was a second divisional from a much older parent application. The Court held that this did not present a bar to interim relief [16]-[39], but considered obiter that the practice of making repeated divisional filings and amendments so as to prevent generics from effectively seeking to clear the way is a factor that weighs against the granting of interim relief [77]-[79].
Christopher Hall acted for Dr Reddy’s. Adam Gamsa acted as junior counsel for Teva.
This patent infringement / invalidity action concerns bar code scanning and imaging technology. The claimants are part of the Honeywell group of companies; the defendants part of the Zebra group. The claimants sued Zebra’s UK subsidiary and its US parent, but did not apply for permission to serve out of the jurisdiction. Instead, they sought to proceed with the claim against the UK subsidiary leaving the position vis-à-vis the US defendant uncertain. The US defendant then issued a notice pursuant to CPR 7.7 demanding service of the Claim Form outside the jurisdiction, but in response the claimants purported to serve the US defendant within the jurisdiction at the UK subsidiary’s address on the basis that, pursuant to CPR 6.9 section 7, the address was a “place within the jurisdiction where the corporation carries on its activities; or any place of business of the company within the jurisdiction”.
Nugee LJ (sitting at first instance) applied the Court of Appeal’s decision in Adams v Cape Industries and held on the facts that the US defendant did not carry on activities at the UK defendant’s address, nor did it have a place of business there. Thus the purported service pursuant to CPR 6.9 section 7 was not good.
The Court also held that the overseas defendant did not have to use the procedure in CPR 11 to challenge whether there had been good service, and that the issuing of its CPR 7.7 notice did not amount to a submission to the jurisdiction.
Brian Nicholson QC and Christopher Hall act for Zebra
This was a patent infringement action relating to digital antenna systems (“DAS”). The patent was for a digital DAS, in which the internal handling of the analogue RF signals is digitised. The judge, Mellor J, criticised the claimant’s expert witness, who he characterised as having had significant experience of the US patent litigation system, and as a result significant difficulty adjusting to the rules applying to the giving of expert evidence in the UK. He went on to hold claim 1 of the patent to be anticipated, and the other allegedly independent claim to be obvious.
Hugo Cuddigan QC and Edward Cronan acted for the successful defendant, SOLiD Technologies.
An inquiry into damages was ordered following the finding of infringement by Neo of Rhodia’s patent for high surface area (“HSA”) cerium oxide, a product used in the manufacture of catalyst systems for vehicle exhausts. The issue was the extent to which Rhodia can recover damages for Neo’s supply of its C100N product to a customer, Johnson Matthey (“JM”), outside the UK displacing sales of Rhodia’s HSA product HSA20. The losses claimed by Rhodia (from sales outside the territorial scope of the patent) were said to have been caused by (i) Neo’s supply of infringing ‘development samples’ to JM in the UK between 2011‑2013, and (ii) by commercial supplies of Neo’s C100N product within the UK. Rhodia contended that the overseas sales were caused by Neo’s infringing supplies within the UK. Those sales were vastly greater than the UK sales, and Rhodia claimed damages (lost profits, alternatively a reasonable royalty) amounting to over €24m.
Neo argued that it ought not to have to pay any damages at all (having already paid damages for UK sales): (i) the overseas sales fell outside the territorial scope of duty of the patent; alternatively (ii) they were not caused, sufficiently proximately, by the infringing UK supplies; alternatively (iii) that Neo could have supplied a non-infringing alternative to JM in the UK. Neo also argued that JM had not proven that it had sufficient capacity to supply Neo’s volumes during the relevant period. Neo argued that reasonable royalties for C100N sales were precluded by the settlement of Head 1, and that JM’s claim for global royalties under a UK-only licence was unsustainable.
Bacon J heard the trial in person between 28 January and 11 February 2022. The Judge decided that Neo’s infringement was not the “common sense” cause of the overseas sales and Rhodia’s claim therefore failed.
Hugo Cuddigan QC and Adam Gamsa appeared for Neo, instructed by Bird & Bird LLP.
This was a dispute between two restaurant businesses. The Claimants’ group has operated the “China Tang” Cantonese restaurant at the Dorchester Hotel in London since 2005. The Defendants had operated a Chinese takeaway in Barrow-in-Furness, also under the name “China Tang”, since 2009. The Claimants asserted infringement of a registered trade mark (comprising the words CHINA TANG with figurative elements) contrary to sections 10(2) and (3) of the Trade Marks Act 1994 (“the Act”), and passing off. The Defendants counterclaimed for partial revocation of the Claimants’ trade mark on grounds of non-use, and asserted a defence of honest concurrent use on the basis that the name “China Tang” had been selected without knowledge of the Claimants’ business and had been used by them for several years.
The Court found that the Claimants’ trade mark had been infringed contrary to section 10(2) of the Act, but dismissed the claims for infringement contrary to section 10(3) of the Act and passing off. The Defendants’ counterclaim was dismissed save in respect of one sub-category of services. Finding that the Defendants were not entitled to a defence of honest concurrent use, the Court focussed on the fact that when Defendants started to use the name “China Tang”, they had not carried out any trade mark or internet searches which would have revealed the existence of the Claimants’ trade mark and restaurant.
David Ivison appeared for the Claimants.
The appeal concerned Lufthansa’s patent for an aircraft passenger in-seat power supply system. The three defendants Astronics, Panasonic and Safran, were responsible for manufacturing such systems, supplying them, and installing them into seats.
At trial, Morgan J had held the patent valid and infringed by all defendants ([2020] EWHC 1968 (Pat)). As well as conventional validity issues, the judgment applied the Rotocrop v Genbourne principle by which a supplier of a kit of parts for assembly may be held jointly liable for infringement with the assembling consignee.
The issues on appeal ([2022] EWCA Civ 20) concerned validity, and in particular the use of reference numerals in claim construction. The judgment provides an illustration of the principle that such use is permissible where it is for the purposes of orientation, or to “help you get the map the right way up”.
In an earlier interim decision regarding withdrawal of admissions ([2020] EWHC 83 (Pat)), the Court discussed the relevant prejudice that should be taken into account.
Hugo Cuddigan QC and Christopher Hall acted for Lufthansa. Piers Acland QC acted for Astronics, Safran and Panasonic.
In these proceedings, Neurim alleges that Mylan infringe European Patent (UK) 3,103,443 (the Divisional). In previous proceedings, started in 2020 (the 2020 Action), Neurim sued Mylan for infringement of European Patent (UK) 1,441,702 (the Parent of the Divisional). The Patents concern melatonin for use in treating a primary insomnia characterised by non-restorative sleep (NRS). In his judgment in the 2020 Action (the Judgment), Marcus Smith J held that the Parent was valid and Infringed. On 18 December 2020, Neurim withdrew its appeal to the Technical Board of Appeal (TBA of the EPO) from the Opposition Division’s decision that the Parent was invalid. So, the Parent was revoked ab initio. However, Neurim had the Divisional in prosecution, and obtained its grant on 30 June 2021, whereupon it began these proceedings. Neurim applied to amend the claims of the Divisional into a form identical for practical purposes to the claims of the Parent. Neurim alleged that issue estoppel arising from the Judgment prevented Mylan from challenging the validity of the Divisional. Mylan said that Neurim’s conduct in amending the Divisional was an abuse of process, and it said that Neurim’s conduct in seeking to shut out its challenge to the validity of the Divisional was an abuse of a dominant position under s. 18 of the Competition Act 1998.
The preliminary issues were therefore:
- i) Whether Mylan was issue estopped from challenging the validity of the Divisional in the light of the 2020 action.
- ii) Whether Neurim’s conduct in amending the Divisional was an abuse.
iii) Whether Neurim’s conduct amounts to an abuse of a dominant position (on the assumption of dominance and market definition).
Meade J heard the trial in person between 15-17 December 2021 and 19 January 2022. The Judge agreed with Mylan that there was no issue estoppel and directed that submissions be made to Marcus Smith J in relation to the validity of the Divisional Patent. He held that there was no abuse and the competition issue did not need to be determined, given his decision on issue estoppel.
Piers Acland QC and Adam Gamsa appeared for Mylan, instructed by Taylor Wessing LLP
This dispute concerned a patent for mechanical ventilation. Professor Tehrani was the registered proprietor of EP UK Patent No. 2,424,721 (“the Patent”), titled “Method and apparatus for controlling a ventilator”. A mechanical ventilator, also known as a respirator, is a machine which assists a patient with breathing by delivering oxygen and removing carbon dioxide.
The Defendants (collectively “Hamilton”) make and sell ventilators. A number of Hamilton’s ventilators incorporate what is called the “Intellivent-ASV System”. Professor Tehrani alleged that the Intellivent-ASV System infringed the Patent.
Hamilton denied infringement and counterclaimed for invalidity on the basis of lack of novelty and obviousness, relying upon four documentary prior art citations – (1) Anderson J.R. and East T.D, A closed-loop controller for mechanical ventilation of patients with ARDS, Biomedical Sciences Instrumentation 2002, vol. 38m 289-294 (“Anderson”); Waisel et al., PEFIOS: An Expert Closed-Loop Oxygenation Algorithm, Medinfo ’95: Proceedings of the Eighth World Congress on Medical Informatics, Vancouver Trade & Convention Centre, Vancouver, British Columbia, 23-27 July 1995 (“Waisel”); (3) US Patent No. 4 986 268 (“US 268”); and (4) Tehrani F, Dual Control System for Ventilatory Treatment of Premature Infants, Proceedings of the 5th International Conference on Information Systems, Analytics and Synthesis, Vol. 8, Concepts and Applications of Systemics, Cybernetics and Informatics, 31 July – 4 August 1999 (“the Tehrani Paper”). Hamilton also ran insufficiency arguments as squeezes.
Hacon HHJ heard the trial remotely between 6-7 July 2021. The Judge held the Patent was invalid because the claim 1 was anticipated by Waisel and claim 45 was obvious over Waisel. The Patent would have been infringed by the Intellivent-ASV System had it been valid.
Mitchell Beebe appeared as sole counsel for Professor Tehrani, instructed by Briffa Legal Ltd
This was the damages inquiry in an unregistered design case involving two fashion brands: House of CB (the Claimants) and Oh Polly (the Defendants). A liability trial was heard towards the end of 2020: see [2021] EWHC 294 (Ch).
Oh Polly had sold 15,393 garments which infringed House of CB’s unregistered UK and/or Community design rights. House of CB claimed “standard damages” on two bases: (i) lost profits where Oh Polly’s sales had substituted for sales which would have been made by House of CB; and (ii) “user principle” damages where sales substitution had not taken place. Oh Polly accepted that it was liable to pay “user principle” damages, but not damages for lost profit. House of CB sought c. £275,000 in standard damages, while Oh Polly maintained that only c. £15,000 was due.
The liability trial had determined that House of CB was entitled to additional damages pursuant to §229(2) of the Copyright, Designs and Patents Act 1988. House of CB sought a “top up” award of additional damages to take the total to c. £500,000. Oh Polly’s position was that additional damages should be calculated as an “uplift” on standard damages of 20% (on Oh Polly’s case coming to c. £3,000).
The Court held that House of CB was entitled to standard damages under both heads claimed. It determinexd that 20% of Oh Polly’s infringing sales would have been made by House of CB had the infringing garments not been available, and awarded damages for lost profit accordingly; on the remainder of sales a reasonable royalty was awarded of 10% of Oh Polly’s net sales with a guaranteed minimum royalty of £4,000 per design. Standard damages totalled c. £150,000.
In relation to additional damages, the Court determined that an award of £300,000 was appropriate, having regard to the scale of the infringement and its flagrancy, and the need to punish and deter the Defendants from further infringements. This represents the largest reported UK award of additional damages in a design right (or copyright) case.
Thus total damages of c. £450,000 were awarded to House of CB.
Anna Edwards-Stuart and David Ivison appeared for House of CB. Chris Aikens appeared as sole counsel for Oh Polly.
This was an interim hearing in a trade mark infringement claim. Both sides use the mark STEALTH in relation to headphones for computer gaming. The Claimant, ABP Technology, claims infringement of two UK trade marks for STEALTH and STEALTH VR. The only defence pleaded in the original Defence was that of honest concurrent use. The Claimant applied for summary judgment on the unamended Defence and the Defendants applied to amend the Defence and add a counterclaim.
Miles J dismissed the summary judgment application and partially allowed the amendment application. On the former, while there had only been a maximum of two years side-by-side use before the Claimant’s earliest infringement claim fell to be assessed, none of the cases on honest concurrent use define or stipulate a minimum period of use and it was arguable that length of use is only one factor to take into account when determining whether it applies.
The amendments sought by the Defendants each relied on their acquisition of a trade mark for STEALTH that pre-dated the Claimant’s registrations. Relying on that mark, they sought to add a defence under s. 11(1B) of the Trade Marks Act 1994, a counterclaim for a declaration that the Claimant’s registrations were invalid and a counterclaim for infringement of the earlier mark. The Claimant objected to the amendments on discretionary grounds, namely that the amendments could and should have been made earlier, and on the grounds that they had no real prospect of success. Miles J refused the amendment to introduce the counterclaim for a declaration that the Claimant’s marks were invalid on the ground that it had no real prospect of success, but allowed the other amendments. On the discretionary grounds, the Judge held that this was not a case of a late amendment and that the Defendants were entitled to wait until the First Defendant became the legal proprietor of the earlier STEALTH mark before seeking to amend their case.
Chris Aikens appeared for the Claimant and Benet Brandreth QC appeared for the Defendants.
Trial C concerned the validity of three patents from the same family, originally applied for by LG Electronics Inc and later acquired by Optis: EP (UK) 2 093 953 B1, EP (UK) 2 464 065 B1 and EP (UK) 2 592 779 B1. The Patents concerned the use of a mathematical technique (a linear congruential generator) as part of a formula (also using the modulo function) to determine the start of a search space for control information in the Physical Downlink Control Channel (PDCCH) of the LTE telecommunications standards.
Apple counterclaimed for revocation of the Patents (on grounds of obviousness over (i) T-Doc slides R1‑11801 entitled “PDCCH Blind Decoding – Outcome of offline discussions” presented at a RAN1 meeting of 11-15 February 2008 (“Ericsson”); and (ii) the Art of Computer Programming, Vol. 2 Seminumerical Algorithms, Chapter 3 “Random Numbers”, pages 1-40 (“Knuth”)). Apple also advanced two insufficiency arguments as “squeezes”.
Meade J heard the trial in person between 5-14 October 2021. The Judge agreed with Apple that the Patents were invalid because they were obvious over Ericsson.
Adam Gamsa appeared as junior counsel for Apple, instructed by Wilmer Cutler Pickering Hale and Dorr LLP
Jacqueline Reid represented the Respondent in this Appeal to the Appointed Person in relation to the allegation of non-use of the mark RASTA PASTA owned by Keith Graham, more popularly known as Levi Roots. All of the Appellant’s many grounds of appeal were dismissed. Jacqueline also represented Levi Roots before the Hearing Officer.
Christopher Hall represented the defendant in this trade mark and passing off dispute between two spiritual and holistic therapists, both of whom were using the name ‘Archangel Alchemy’ in respect of training and coaching courses. The claimant had registered the name as a trade mark in 2019 and subsequently sued for infringement. In response, the defendant sought a declaration of invalidity, principally on the grounds that she had been using the name since around 2010 and was the owner of an earlier right under the law of passing off. On the same basis, she also counterclaimed for passing off.
The central issue was whether the defendant’s activities had been sufficient to generate goodwill under the name. The court found in the defendant’s favour on that issue, dismissing the claim and allowing the counterclaim.
Kyra Nezami represented Lenovo in the first technical trial in the telecommunications patent case between InterDigital and Lenovo concerning InterDigital’s patent portfolio.
The trial concerned essentiality and validity of a patent directed to the configuration of a non-contention based control channel in LTE. InterDigital alleged of essentiality to various LTE (4G) standards and Lenovo counterclaimed that the patent was invalid for anticipation, obviousness, added matter and insufficiency.
An application for expedition of proceedings to revoke a patent and for a declaration of non-infringement. The proceedings were commenced in the Shorter Trials Scheme (STS).
The proceedings concern cochlear implants for the profoundly deaf. The parties are two of the three major competitors in the market. The claimants had opposed the defendant’s patent at the EPO. The Opposition Division having rejected the opposition, the defendant sued the claimants for infringement in Mannheim. Trial there is set for January 2022. The claimants commenced these proceedings to obtain a finding of invalidity in the UK before that trial with a view to using the finding to influence the German court to stay its proceedings. It became clear following the evidence that the court could not accommodate a sufficiently early trial in the UK. The claimants accordingly sought an early trial to minimise the period between the possible grant of an injunction in Germany and a finding of invalidity or non-infringement in the UK to protect their market in the UK and elsewhere.
The court decided that a trial in February 2022 was appropriate and ordered that the trial be fixed then. It further ordered that there be a CMC following pleadings to consider further directions including whether it is appropriate for the proceedings to continue in the STS.
Michael Silverleaf QC represented the Defendant, MED-EL.
This was an application for expedition of patent revocation proceedings to address concerns about the German ‘injunction gap’.
Abbott and Dexcom supply glucose monitoring devices, and each party claimed patent infringement in respect of the other’s products. Litigation was already underway in Germany, where Abbott’s European distribution hub is located, and an injunction there may have impacted upon Abbott’s ability to distribute in the UK. Abbott thus commenced patent revocation proceedings against Dexcom in the UK and sought expedition with the aim of securing a validity decision to use in Germany.
The Judge (Mellor J) encouraged the parties to try to agree bilateral undertakings in respect of the German litigation. They were unable to do so, but Dexcom offered unilaterally not to enforce any German injunction in respect of the distribution of products from Germany to the UK. The Court then refused expedition, because Abbott had not shown a sufficiently good reason.
Iain Purvis QC and Christopher Hall acted for the Respondent, Dexcom.
In these proceedings the claimant (Promptu) alleged infringement of EP(UK) 1,290,889 (“the Patent”) by the defendants (“Sky”). The Patent is concerned with the voice control of television set-top boxes, and Promptu alleged Sky’s dealings in the “Sky Q” set-top television box and operation of the associated backend system to constitute infringement. Sky denied this, asserting the patent to be addressed solely to the operation of traditional cable television systems and thus to exclude the Sky Q system, which obtains content and communicates with Sky’s servers over the public Internet. Sky counterclaimed for a declaration of invalidity on the basis that the Patent lacked novelty and/or inventive step and/or was bad for added matter.
Following a four-day trial in June 2021, Meade J held the patent in suit to have been invalid for lack of inventive step, but not added matter. Had it been valid, it would have been infringed.
Hugo Cuddigan QC and David Ivison acted for Promptu.
This is the inquiry into damages arising out of the pregabalin litigation. In what is the largest such inquiry in the history of the Patents Court, several generic pharmaceutical manufacturers, and the NHS, each seek compensation for damages caused by Warner Lambert’s various interim injunctions, agreements, and groundless threats occurring prior to the Supreme Court’s decision on liability.
In this preliminary issue trial, the Court held that the inquiry will, in principle, proceed on the basis of a single hypothetical ‘counterfactual’ in which it is assumed that none of the interim injunctions, agreements or threats were ever made, but that the patent was not known to be invalid. It is, however, open to Warner Lambert to agree alternative specific facts with any individual inquiry claimant, but any such agreement will not be binding upon other inquiry claimants.
Brian Nicholson QC and Christopher Hall represent Dr Reddy’s.
Benet Brandreth QC represents Ranbaxy.
Chris acts for Sky in a variety of disputes in the High Court, in IPEC, and in the Registry. In this High Court action for trade mark infringement and passing off dispute, Sky Insurance attacked the validity of Sky Limited’s trade marks on several grounds, including for purported lack of bad faith and lack of genuine use.
At this interim application, Sky Limited sought to strike out part of that counterclaim.
The case subsequently settled before trial.
In these High Court proceedings Chris appeared as sole counsel on behalf of Poundland resisting an application for an interim injunction brought in respect of the Claimant’s rights surrounding its ‘crystul skull vodka’ product.
easyGroup is the owner of the easyJet trade mark and a large number of other trade mark registrations containing the word ‘easy’. It regularly brings trade mark infringement and passing off claims against parties who trade under names including the word ‘easy’, in some cases having done so for many years without any complaint. This case was a paradigm example: the Defendants had been operating a catalogue and online retail business in the UK since 2000 under the name ‘easylife’, and from 2004 the online business had been operated from the domain easylifegroup.com.
easyGroup claimed infringement of four registered trade marks: easyJet, easyGroup, easyLand and easy4men. It was alleged that there was a likelihood of confusion between each of those marks and the signs ‘easylife group’, ‘easylifegroup.com’ and three other signs used by the Defendants in relation to cleaning products. It was also alleged that the use of those signs took unfair advantage of and caused detriment to the distinctive character and repute of the easyJet and easyGroup marks. easyGroup further claimed passing off. The Defendants denied infringement and passing off, and relied on the defences of honest concurrent use and use of the First Defendant’s own name. They counterclaimed for revocation of all of easyGroup’s marks for non-use.
Chief ICC Judge Briggs found for the Defendants on all issues. The court partially revoked the easyJet and easyGroup marks (the latter having been conceded by easyGroup in closing submissions), and revoked the easyLand and easy4men marks in relation to all of the goods and services relied on. The infringement and passing off claims were all dismissed. Crucial to the court’s reasoning was that the word “easy” is a descriptive word and is therefore not distinctive.
The case was also notable for the fact that the Defendants called five consumer witnesses who gave evidence that they had not been confused in spite of having referred to the Defendants in an email or customer review as ‘easygroup’ or ‘easy group’.
Chris Aikens appeared as sole counsel for the successful Defendants.
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 information to the US International Trade Commission.
HHJ Hacon, sitting as a Judge of the High Court, refused to grant the interim relief sought.
The case is of particular interest because the Judge applied the threshold test applicable in anti-suit injunction cases, namely that of “high probability of success”. The Judge held that test was appropriate because the effect of any injunction would be to prevent the US ITC Judge from ruling on the admissibility of evidence in proceedings before it.
Kathryn Pickard appeared for AutoStore.
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 terminator in sequencing by synthesis; one to the use of ascorbic acid in a fluorescent imaging buffer and the other to a conjugate molecule constating of a nucleotide, cleavable linker and fluorescent dye compound.
The Judge held that all but one of the patents were valid and that the patents were also infringed.
The case is notable for the discussions of insufficiency, following Regeneron v Kymab [2020] UKSC 27, and the novel (but unsuccessful) collocation attack against the conjugated molecule.
Iain Purvis QC, Piers Acland QC and Kathryn Pickard appeared for Illumina.
The dispute concerns a pool of telecoms patents (the ‘MCP Pool’) administered by Sisvel. Sisvel is the registered proprietor of EP 2,254,259 and EP 1,903,689 (the ‘Patents’), which had been declared essential to LTE. The Patents are entitled ‘Method and device for transferring signals representative of a pilot symbol pattern’ and have priority dates of 22 September 2006. They concern the use of pilot signals to request uplink resources in a telecommunications network.
The Defendants denied essentiality (and hence infringement) and counterclaimed for revocation of the Patent (on grounds of obviousness and added matter).
Mellor J heard the trial remotely using MS Teams on 19 to 30 March 2021. The Judge held that the Patent was essential to LTE (on a normal construction) and valid over the prior art, a 3GPP Working Group 1 TDoc entitled ‘Uplink scheduling procedure’ submitted by Samsung to RAN WG1 meeting 43 held in Seoul in November 2005.
Adam Gamsa appeared for OnePlus, Oppo and Xiaomi, instructed by Taylor Wessing LLP and Kirkland & Ellis International LLP
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 revoked these for added matter and lack of inventive step. The judgment contains an interesting discussion of added matter, especially impermissible intermediate generalisation.
Iain Purvis QC, Tom Alkin and Edward Cronan acted for Philip Morris Products. Kathryn Pickard acted for RAI Strategic Holdings.
In Facebook’s first visit to the UK Patents Court, it sought revocation of a telecommunications messaging patent owned by Voxer. The counterclaim raised infringement by the doctrine of equivalents, in response to which Facebook advanced a novel Formstein defence. The case was tried under the Shorter Trials Scheme, with Judgment handed down 364 days after issue of the Claim Form. The Court held that Facebook did not infringe, and that the patent as amended was invalid.
In respect of the doctrine of equivalents, Lord Justice Birss (sitting at 1st instance) held that a Formstein defence is available to a defendant in the UK (see paragraph 216), and had earlier held at the pre-trial review that a patentee seeking to rely on the doctrine of equivalents must plead it (see Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 657 (Pat), paragraph 7).
Mark Vanhegan QC acted for Facebook. Brian Nicholson QC and Christopher Hall acted for Voxer.
The dispute concerns a pool of telecoms patents (the ‘MCP Pool’) administered by Sisvel. Sisvel is the registered proprietor of EP 1,925,142 (the ‘Patent’), which had been declared essential to LTE (TS36.222 v10.0.0). The Patent is entitled ‘Radio Link Control Unacknowledged Mode Header Optimization’ and has a priority date of 23 August 2005. It claims a method for indicating packing in an RLC Protocol Data Unit (‘PDU’) using a length indicator.
The Defendants denied essentiality (and hence infringement), counterclaimed for revocation of the Patent (on grounds of anticipation and obviousness) and objected to unconditional claim amendments (on grounds of extension of scope, lack of support, lack of clarity, added matter and invalidity).
Mellor J heard the trial remotely using MS Teams on 9 to 17 March 2021. The Judge held that the Patent was not essential to LTE (either on a normal construction or pursuant to the doctrine of equivalence) and refused the unconditional amendments. Had the Patent been essential (i.e. on the Claimants’ construction), it would have been anticipated by the Samsung prior art (TDoc R2-051311 entitled ‘Segmentation and Concatenation for VoIMS’ presented to Meeting #47 of 3GPP TSG-RAN2 held in Athens during May 2005) and the common general knowledge.
Adam Gamsa appeared for OnePlus and Oppo, instructed by Taylor Wessing LLP
This was a claim for infringement of two patents relating to agricultural machinery. The patents were directed to apparatus for performing one-pass “strip tillage”, in which one row of leading tines produces strips of disturbed soil in otherwise uncultivated ground, and an aligned second row of tines is used to place rows of seed into the disturbed strips of soil. The Defendants’ range of “Pro-Til” seed drills was alleged to infringe both patents.
The Defendants denied infringement and counterclaimed for invalidity on the basis of lack of novelty and obviousness, relying upon a prior use and two documentary prior art citations.
An interesting aspect of the Defendants’ invalidity case involved the prior use by the Claimant of prototype equipment in a field adjoining public roads and a footpath. It was undisputed that the prior use had taken place, and that the equipment had the features required by the relevant claims of the patent. However, the Claimant contended that nobody had in fact observed the apparatus in use, and had anybody attempted to do so steps would have been taken to conceal the operation of the apparatus from them. Thus, the Claimant maintained, no enabling disclosure of the relevant features of the prototype equipment had been made available to the public.
Following a three day trial, the Court found both patents to be invalid. One of the patents would have been infringed had it been valid, but the other would not. In relation to the prior use, the Court held that it was irrelevant that nobody did in fact observe the apparatus being used and that, on the facts, any effort to conceal the relevant features of the apparatus from a hypothetical observer would not have been successful.
Brian Nicholson QC and David Ivison acted for the Defendants, instructed by Shakespeare Martineau LLP.