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This is the judgment in the copyright liability trial between the Claimants (“Shein”) and the Defendant (“Temu”).

Shein claimed that Temu infringed the copyright in its photographs of Shein-branded clothing in relation to a total of 2,559 product listings on Temu’s UK page. The photographs fell into three categories: (1) Photographs taken by photographers employed by Guangzhou Shein, a subsidiary of the First Claimant, and subsequently assigned to Shein; (2) Photographs taken by photographic agencies and subsequently assigned to Shein; and (3) photographs taken by suppliers and subsequently assigned to Shein. The Court had ordered the copyright trial to proceed by a sample of 20 works, split between the three categories. At trial, only 5 of the 20 works remained in issue, of which 4 were employee works and 1 was a supplier work.

At trial, Shein’s ownership of the relevant copyright was challenged only in respect of the remaining supplier work, the Strawberry Nightdress. Bacon J ultimately found that Shein acquired title to the copyright and equitable title to any accrued rights of action and that its claim under said equitable title was not procedurally barred in the circumstances. Title passed from the freelance photographer under an assignment post-dating the taking of the photograph and then under the ongoing Framework Agreement between Shein and the supplier.

Bacon J also rejected Temu’s defence that Shein’s case in respect of the Strawberry Nightdress constituted an abuse of process. Shein did not have a firmly grounded suspicion on specific facts that it did not own title in the photographs of the Strawberry Nightdress.

Shein’s case on infringement at trial proceeded under ss17, 20, and 23 CDPA 1988. As to Shein’s case that Temu authorised infringing acts of reproduction by web users who viewed the photographs, s28A permitted those temporary reproductions because they did not have independent economic significance. In any event, the provision of a retail platform on which infringing images may be uploaded combined with evidence of some infringements on the platform was insufficient to constitute an act of authorisation. As to Shein’s s20 case, Bacon J held that Peterson v Google had been correctly decided, and that liability under s20 for an intermediary requires a deliberate intervention in full knowledge of its consequences, in the sense of requiring an awareness that the specific works at issue are infringing works. Bacon J also dismissed Shein’s secondary infringement claim on the basis that Temu did not have sufficient knowledge that the photographs were infringing articles. In relation to the Strawberry Nightdress, Bacon J further found that the supplier had consented to Temu’s use of the photographs.

Bacon J went on to consider whether the hosting defence would have applied if Temu had been found to have infringed Shein’s copyright. It was held that Temu was an intermediary for the purposes of the hosting defence, that Temu did not have the necessary actual or constructive knowledge to disengage the hosting defence, and that Temu had removed the photographs expeditiously from the Temu UK website.

Accordingly, Shein’s claims of copyright infringement were dismissed.

Temu’s counterclaim under Shein’s cross-undertakings given to secure two preliminary injunctions succeeded. Bacon J held that Shein’s notifications under the orders were a dominant and effective cause of Temu’s losses occasioned by the removal of the listings from the Temu UK website.

Benet Brandreth KC and Mitchell Beebe appeared for the Claimants, instructed by Freshfields LLP.

[2026] EWHC 2165 (Ch)

This was the most significant account of profits in a patent infringement action to come before the higher courts in recent years.  The case concerned mains voltage power supplies in passenger airline seats.

The appeal engaged three important issues of law.

First, the Court of Appeal decided the proper approach to causation in an account of profits under s.61(1)(d) Patents Act 1977, by answering the question how does one ascertain the profits derived from the infringement?  The Court held that apportionment is normally the appropriate approach ([111]; [159]), but that a ‘differential profits’ approach may in some cases be a useful tool [160].  In either approach, the Court held, contrary to the interpretation placed upon the House of Lords’ decision in United Horse Shoe and Nail Co v Stewart by Laddie J in Celanese International v BP Chemicals, that it is permissible for the court to consider whether there were any non-infringing alternative courses of action by which the defendant could, in the counterfactual, have made some or all of the profits it actually made [101].

Second, the Court of Appeal considered the question of the award of interest on a sum payable on an account of profits, holding that simple interest was available from the date on which the profits were accrued both under the court’s equitable jurisdiction [290], and under s.35A(1) Senior Courts Act 1981 [302].

Third, the Court considered the proper interpretation of s.67 Patents Act 1977 and the rights of an exclusive licensee to recover an infringer’s profits.  The Court held that insofar as a defendant carries out acts of infringement of the rights of an exclusive licensee as such, then it is the exclusive licensee, not the patentee, who is entitled to claim the infringer’s profits derived from those infringements, and that in a case brought by a patentee under s.61(1)(d) the court must take into consideration the rights of any exclusive licensee ([257]-[258]).

Hugo Cuddigan KC and Christopher Hall acted for the patentee, Lufthansa.  Iain Purvis KC and Piers Acland KC acted for the defendants, Astronics, Safran and Panasonic.

[2026] EWCA Civ 964

On 27 July 2026, the UK Supreme Court handed down judgment in this matter.  The appeal considered the first instance decision of Fancourt J ([2024] EWHC 1815 (Ch)) and the decision of the majority of the Court of Appeal ([2025] EWCA Civ 193).

The UKSC’s press release summarising its decisions is here.

The UKSC Judgment can be obtained from here.

Brian Nicholson KC, Kathryn Pickard KC and Miruna Bercariu acted for Avanci, jointly instructed by Osborne Clarke and EIP.

This case concerns interim payments for RAND licences for video streaming technology.

Warner Bros. Discovery (“WBD”) and Paramount sought a RAND licence from Nokia to the Nokia Video Portfolio. The parties agreed a mechanism by which they would enter such a licence on terms to be determined RAND by the Court. Pending trial, it was agreed that an interim payment would be made to Nokia, and the Court was asked to determine the amount of such payment.

The parties’ competing positions on valuation at trial were before the Court at the interm payment stage: WBD and Paramount advanced a pool scaling approach whereas Nokia’s position was that the RAND rate should be determined by reference to bilateral comparables. Also before the Court was a lump sum offer Nokia had made to Paramount in 2024 (“the NLSO”).

The case is of interest due to the Judge’s consideration of:

• The applicability of a mid-point approach: whilst consistently used in determining (F)RAND interim payments, such an approach was not mandatory. This was an unusual case given the lack of convergence between the parties’ positions and the difference between them in conceptual approach.
• The approach to (F)RAND interim payments: there should not be a mini-trial – the court should avoid deciding issues which are arguable either way and avoid an excessive amount of detail.
• The doubt as to whether Nokia was entitled to recover royalties all the way back to the start of WBD’s and Paramount’s use given the contentions as to how the video streaming industry had developed and Nokia’s belated monetisation of the Nokia Video Portfolio. Allowance was to be made for these doubts when setting the interim payment amount.

Kathryn Pickard KC and Kyra Nezami, instructed by Kirkland & Ellis International LLP, appeared for Paramount.

[2026] EWHC 1505 (Pat)

Aviator alleges that Spribe’s use of certain logos in its online gambling ‘crash’ game in the UK amounts to an infringement of Aviator’s UK copyright.  It also advances a claim for infringement of several overseas copyrights.

In the course of a parallel dispute between the parties in Georgia, Aviator contends that the Georgian courts decided a number of issues which are now in dispute in the claims before the English court.  As a result, Aviator says that Spribe is precluded from arguing those issues before the English court.  That plea is advanced by reference to the English doctrine of res judicata by reason of issue estoppel.

The issue on the present application was whether, when determining the overseas copyright infringement claims, the question of issue preclusion should be determined by reference to the English law of issue estoppel as the law of the forum, or by reference to the relevant overseas law of issue preclusion.

The court held that a claim for overseas copyright infringement is governed by the ‘Rome II’ Regulation (EC) No. 864/2007 (assimilated by SI 2019/834), pursuant to which the English court should apply the law of the country for which copyright protection is claimed when deciding whether any preclusive effect arises from the decisions of the Georgian courts.

Edward Cronan appeared for Aviator.

Benet Brandreth KC and Christopher Hall appeared for Spribe.

[2026] EWHC 1216 (Ch)

This judgment concerns matters of confidentiality arising out the trial of a damages inquiry between Merck KGaA (“Merck”) and Merck Sharp & Dohme LLC (“MSD”). The parties have been involved in UK litigation since 2014 over MSD’s use of the MERCK name in ways not permitted under an agreement made between the two businesses several decades ago. In 2025, Bacon J awarded Merck damages and interest of c. £6m: see [2025] EWHC 2376 (Ch).

The parties had, at an early stage in the litigation, entered into a confidentiality club agreement (“the Confidentiality Club”).  Various documents disclosed in the course of the damages inquiry were designated as “confidential” pursuant to the Confidentiality Club.  Pro tem orders pursuant to CPR 31.22(2) had also been made in respect of these documents at interim hearings and at the trial.  Merck sought an order from the Court preventing MSD from making use of 91 of these documents (“the Confidential Documents”) for collateral purposes, relying on the terms of the Confidentiality Club and CPR 31.22(2).

MSD argued that the Confidential Documents were in fact not confidential, and – in any event – the open justice principle precluded the making of the order sought by Merck.  MSD had not explained which of the Confidential Documents it was interested in or what it proposed to do with them, although its evidence did refer to the possibility of using at least some of the documents in litigation which is ongoing between the parties in other jurisdictions.

Merck argued that the advanced its application on the bases that: (1) the Confidentiality Club was a contractual agreement which prevented any collateral use of documents designated as “confidential” (and, whilst it provided that its terms could be varied by Court order, no application for such an order had been made by MSD), such that MSD was bound not to use them regardless of their confidentiality; (2) in any event, provided the Court was satisfied that the Confidential Documents were likely to contain at least some confidential information (by reference to the Trade Secrets (Enforcement, etc.) Regulations 2018 and the general law of confidence)), the onus was on MSD to apply for and justify an order permitting it to make use of identified documents (and, since no such application had been made, the Court should accede to Merck’s application).

Merck’s position was that the open justice principle was not engaged, since: (1) MSD was not entitled (having entered into the Confidentiality Club) to rely on it; and (2) the order Merck was seeking against MSD would not preclude, or prejudice the outcome of, an application by a third party under CPR 5.4C(2) and/or the Court’s inherent jurisdiction in respect of documents referred to during the trial.

Master McQuail broadly agreed with Merck’s position, finding that the terms of the Confidentiality Club precluded collateral use of the Confidential Documents and that MSD had not justified a relaxation of its terms, the burden being on it to do so.   Master McQuail indicated, however, that she was willing to permit MSD liberty to make a future application for permission to make collateral use of the Confidential Documents provided that it was justified by reference to specific documents and specified uses to which it was proposed to put those documents.

David Ivison appeared for Merck, instructed by Bird & Bird LLP.

[2026] EWHC 1113 (Ch)

AMI’s patent was to an aircraft ejection seat headrest intended to reduce head and neck injuries caused to pilots during ejection.  The dynamics of an ejection initially force the pilot’s head down towards their chest, then as they emerge from the cockpit the force of the windblast immediately slams their head back against the headrest.

Martin-Baker’s ejection seats include an inflatable structure behind the headrest which, upon ejection, deploys forward to a fixed position.  AMI said the patent covered such an arrangement, including as a matter of the doctrine of equivalents.  Martin-Baker argued the patent did not cover such an arrangement, but that if it did then the patent lacked priority, novelty and inventive step.  Martin-Baker also advanced a breadth of claim insufficiency attack.  The central issues were therefore construction and infringement, on which Mellor J sided with Martin-Baker and held the patent valid but not infringed.

As well as conventional construction, novelty and obviousness points, the judgment contains legal analysis and application of the laws of priority, breadth of claim insufficiency, and infringement by the doctrine of equivalents.

Mark Vanhegan KC and Adam Gamsa appeared for the Claimant, AMI. Iain Purvis KC and Christopher Hall appeared for the Defendant, Martin Baker.

[2026] EWHC 1027 (Pat)

The Patents Court (Meade J) determined the FRAND lump sum payable by Samsung to ZTE under a cross-licence to the parties’ respective 5G portfolios.

The case is of interest for the Judge’s treatment of the dispute between the parties as to which comparables were the most appropriate; the impact of non-FRAND factors; the rejection of a top-down cross-check; the inclusion of non-cellular SEPs and non-essential patents in the scope of the final cross-licence; and the discussion of the right to choose.

Kathryn Pickard KC appeared for Samsung.

[2026] EWHC 999 (Pat)

Titan Wealth Services Ltd and Titan Asset Management Ltd (“Titan AM”) (together, “Titan”), brought proceedings for, among other things, breach of the non-compete clause in the Share Purchase Agreement and unlawful conspiracy against Tavistock Investments Plc and Tavistock Asset Management Ltd, (together, “Tavistock”) and three directors of companies within the Tavistock group. The corporate defendants are the Respondents to this appeal.

Titan Wealth acquired the share capital of what was then Tavistock Wealth in 2021. The parties accuse each other of the repudiation of the Share Purchase Agreement. Of particular relevance to this appeal, the sale did not include the ‘Model Portfolio Service’, which Tavistock continues to operate and which constitutes a range of model portfolios for use by financial advisers. Under another agreement, the OMA, Titan AM was to manage the Tavistock Model Portfolio Service.

Tavistock sought to amend its Defence and Counterclaim to introduce claims for breach of confidence and copyright infringement based on its discovery that Titan AM had set up its own model portfolio service to compete with the Tavistock service. The amendment in essence pleaded that Titan AM substantially copied Tavistock’s investment portfolios.

At first instance, Bryan J allowed Tavistock’s amendments, finding that they were coherent and gave rise to a real prospect of success. Titan AM appealed the judge’s decision in relation to the allegation of breach of confidence on the basis that the pleading was insufficiently particularised.

The Court of Appeal agreed, allowing Titan AM’s appeal with the consequence that Tavistock’s amendment has been disallowed. The Court found that the pleaded amendment was incoherent, self-contradictory and insufficiently particularised.

In particular, Tavistock’s pleading failed to identify with sufficient particularity which information was alleged to have been communicated to Titan in confidence. The pleading proceeded on the premise that Tavistock had communicated confidential information to Titan AM under the OMA; in reality, it was Titan AM which conducted the relevant investment research and made recommendations to Tavistock, such that information flowed in the opposite direction. Tavistock’s pleading also insufficiently particularised the alleged misuse; the Court found that the plea was based on inferences drawn from similarities between the parties’ portfolio factsheets that were either readily explicable or did not in fact exist.

Iain Purvis KC appeared as lead counsel for the Appellant, instructed by Quinn Emanuel Urquhart & Sullivan UK LLP.

[2026] EWCA Civ 500

This is the very first decision of a UK court regarding the infringement of a plant breeders’ right (“PBR”) granted pursuant to the Plant Varieties Act 1997 (“PVA”). The Claimant is the owner of UK PBR No. 28016 for a variety of mandarin orange known as Nadorcott. The Claimant alleged that its PBR is infringed by the sale of harvested material (i.e. fruit) from a mandarin orange variety known as Tang Gold, which is sourced in the UK and sold to consumers by ASDA.

The case focused on two main issues:

1. Whether Tang Gold is an essentially derived variety of Nadorcott within the meaning of s.7(3) PVA; and
2. Whether the Claimant has had a reasonable opportunity to exercise its right in relation to the unauthorised use of propagating material, such that it is now entitled to enforce its PBR against unauthorised acts done in respect of harvested material, within the meaning of s.6(3) PVA.

At the trial which was heard by Mellor J over the course of two days, the Defendants successfully argued that Tang Gold is not an EDV of Nadorcott. As such, Mellor J found that the Claimant’s allegation of infringement was not made out.

The judgment represents the first UK authority on the construction of ss.6 and 7 PVA and the assessment of infringement of a plant breeders’ right. The decision includes a detailed analysis of international approaches to plant breeders’ rights stemming from the 1991 UPOV Convention, as well as a consideration of the effect of cross-jurisdictional parallel litigation on the reasonable opportunity requirement in s.6(3) PVA.

Anna Edwards-Stuart KC and Miruna Bercariu appeared on behalf of the Defendants, instructed by Appleyard Lees.

[2026] EWHC 553 (Pat)

The case concerned three patents (EP155, EP740, and EP801), each relating to microbial oils containing high levels of polyunsaturated fatty acids, such as the Omega-3 oil DHA, and their production.

At first instance, Mellor J held that:

• EP155 was valid (and was conceded to be infringed if valid);
• EP740 was invalid on several grounds; and
• EP801 was invalid for obviousness.

The Second Defendant, Mara, appealed the judge’s decision of obviousness in respect of EP155 (arguing that the Judge had overlooked relevant evidence). The Claimants, DSM, appealed on two points of construction and the judge’s finding of obviousness in respect of EP801 (arguing there was no evidence to support the Judge’s finding) .

EP155 and EP801 both concern the extraction of microbial oils from a biomass.

The Court of Appeal dismissed both appeals. Although the overall teaching of EP801 concerned a solventless extraction process, the patent (and the claim) were found not to be so limited and the Judge’s construction was upheld. The appeal on EP155 and the appeal on EP801 concerning obviousness involved evaluative decisions and the Judge was not clearly wrong. DSM’s second construction appeal concerned the degree of precision with which numerical limits in the claim (specifically pH “8 or above”) were to be understood. This related to infringement only and in light of the outcome on validity this point was not determined.

Kyra Nezami acted as junior counsel for DSM.

[2026] EWCA Civ 136

These were collective proceedings brought by the Consumers’ Association (“Which?”) under s. 47B of the Competition Act 1998 on behalf of UK purchasers of certain Apple and Samsung smartphones.

Which? alleged that Qualcomm (a major US supplier of cellular modem chips) had abused a dominant position as supplier of cellular modem chips in order to extract higher licensing royalties for its cellular standard essential patents (“SEPs”) from Apple and Samsung than would otherwise have been paid, and that this overcharge had resulted in increased smartphone prices for UK consumers.

Qualcomm maintained that it had not applied illegitimate pressure during SEP licensing negotiations with Apple or Samsung, and that the terms of the licences it had entered into with them were fair, reasonable and non-discriminatory (“FRAND”).

David was instructed by Which? in 2023 and appeared at a 5-week trial in the Competition Appeals Tribunal which took place in late 2025.  The case settled in February 2026 before judgment was handed down, subject to the Tribunal’s approval.

Dr Parsons has brought a claim against Convatec for an award of compensation under section 40 of the Patents Act 1977. He alleges that Convatec derived an outstanding benefit from inventions made by him during his 30-year employment by Convatec, which are now protected by seven patent families. All seven patent families relate to wound dressings.

The judgment of Richards J concerns the effect of s106 of the Patents Act 1977 on the issue of costs budgeting in a s40 claim.

s106 provides that the Court, in certain patent proceedings, including those under s40, “in determining whether to award costs or expenses to any party and what costs and expenses to award, shall have regard to all the relevant circumstances, including the financial position of the parties.”

Dr Parsons argued that s106 required the Court to take into account his financial position at the costs budgeting stage, thereby requiring a substantial reduction to Convatec’s approved costs budget; he suggested that Convatec should be limited to costs recovery of no more than a) IPEC scale costs, b) Dr Parsons’ available ATE insurance cover, or b) one third of Dr Parsons’ budget. Convatec argued that s106 does not apply to the costs budgeting process.

Richards J held that s106 does not require the Court to have regard to a party’s financial position when approving the parties’ costs budgets. In any event, he would not have made any of the adjustments sought by Dr Parsons because they failed to give effect to all the relevant circumstances: In particular, Dr Parsons chose to bring a claim for a very large sum in the High Court and Convatec is likely to incur substantial costs in providing disclosure and in defending Dr Parsons’ claim that each of the patents and inventions and any combination thereof yielded an ‘outstanding benefit’. Accordingly, s106 had no effect on the Judge’s determinations on the costs budget (for which see [2026] EWHC 300 (Pat)).

Chris Aikens, instructed by Freshfields LLP, appeared for the Defendant, Convatec, led by Robert Marven KC

[2026] EWHC 325 (Pat)

In this landmark decision of the Supreme Court, the Court considered the applicability of the excluded subject matter exceptions under Article 52 EPC to the Artificial Intelligence and other future systems such as quantum computing.

The Court rejected the Appellant’s primary submission that the “program for computers…as such” exclusion do not apply to artificial intelligence systems.  The UKSC upheld the Court of Appeal’s and Comptroller’s decisions that AI did involve a program for a computer and the requirements of the exclusion had to be met.  The UKSC also indicated that the same would potentially apply in respect of “mathematical methods” and to other subject-matter, such as quantum computing.

The Court further rejected the Appellant’s next submission, that the UK should take the “Any Hardware” approach simpliciter from the EPO, followed by an unmodified form of the Pozzoli test for obviousness.  The UKSC identified that G1/19 from the Enlarged Board of Appeal did not confine its analysis to merely “Any Hardware” plus problem-solution, but rather “Any Hardware+COMVIK”, in which COMVIK involved an intermediate step of removing excluded subject matter from the ’solution’ part of the inventive step analysis.  The UKSC held that the UK should nevertheless cease to follow Aerotel, in preference for the EPO Enlarged Board’s approach in G1/19, but utilising Pozzoli instead of problem-solution.  The resultant test was new and would need to be worked out by the lower courts and tribunals, starting with the Comptroller General.

The Appellants 3rd and 4th Grounds were rendered moot (they sought to challenge the detailed application of Aerotel to the patent application in suit).  No case had been advanced by the Appellant on the basis of AH+Pozzoli with an intermediate step, so much so that the UKSC was unable to consider the application of the new test to the patent application in suit.

For these reasons, the UKSC had no choice but to remit the patent application in suit to the Comptroller General for consideration and application of the new test.

Brian Nicholson KC and Anna Edwards-Stuart KC appeared for the Comptroller-General of Patents Designs and Trade Marks.

The UKSC Judgment can be obtained from here:

[2026] UKSC 3

Edward acted for Huawei in this dispute on interim licence terms. The dispute is notable for being the first occasion on which two companies consensually sought determination of interim licence terms by the English Courts.

Huawei succeeded in persuading the Court that it was right to continue to adopt the mid-point approach to interim licence valuation, and that TP-Link’s offer could not be used to define the lower end of that range because that offer did not involve payment for past sales or interest. The court held that TP-Link had not articulated a sufficiently persuasive case as to why the Court in this case might depart from the principles regarding past sales and interest in Interdigital v Lenovo.

[2026] EWHC 179 (Pat)

Dr Parsons has brought a claim against Convatec for an award of compensation under section 40 of the Patents Act 1977. He alleges that Convatec derived an outstanding benefit from inventions made by him during his 30-year employment by Convatec, which are now protected by seven patent families. All seven patent families relate to wound dressings.

In his judgment from a two-day CMC, Mellor J ruled on two matters: (1) A strike-out application by Dr Parsons to strike out part of Convatec’s Defence; and (2) whether to order a split trial.

Dr Parsons sought to strike out parts of Convatec’s Defence which denied that section 40 allowed for an aggregation of the benefits of multiple patents and/or inventions which individually do not amount to an “outstanding benefit”. The point is a novel one which has not been considered in previous section 40 case law. Mellor J refused to exercise his discretion to strike out the relevant parts of the Defence, on the basis that (a) there were no major case management or cost benefits from the grant of strike out; (b) doing so would be premature on as of yet unestablished facts and the issue involves a difficult point of law in a developing area; and (c) even if the relevant parts were struck out, the Court would still have to determine whether aggregation of benefits is permissible on the particular facts of this case.

On the second issue, Mellor J refused to order a split trial on the proposal, advanced by Convatec in accordance with the earlier guidance of Meade J but resisted by Dr Parsons, to try the two earliest and most valuable patent families (which relate to silverisation of wound dressing) first. No sufficiently clean split between the issues for trial could be identified, in the main due to significant cannibalisation of the revenues of earlier product lines by later ones which also incorporate other patent families at issue.  Accordingly, a split trial along the lines previously contemplated by Meade J would not yield efficiencies of cost and time.

Brian Nicholson KC and Chris Aikens, instructed by Freshfields LLP, appeared on behalf of the Defendant, Convatec.

[2026] EWHC 98 (Pat)

This appeal concerned the validity and infringement of Claimant’s patent concerning, inter alia, electric showers.  Brian Nicholson KC and David Ivison appeared for the successful Appellant, Norcros, in overturning the earlier decision of HHJ Melisa Clarke sitting as a Judge of the High Court.  The Court of Appeal disagreed with the trial Judge, holding that the a simple mechanical patent-in-suit was invalid for uncertainty insufficiency and, in any event, would not have been infringed by any of the defendant’s products.

[2025] EWCA Civ 1670

Nokia was the owner of a portfolio of patents declared essential to video decoding standards of the International Telecommunication Union (ITU-T). Hisense and the other Claimants commenced proceedings for a declaration as to what terms would be RAND for a licence in respect of Nokia’s portfolio and sought an interim licence. Nokia contested the jurisdiction of the English court to hear the claims, arguing (amongst other things) that its offer to refer the matter to arbitration constituted a RAND offer. Mellor J dismissed Nokia’s jurisdiction challenge and granted the interim licence declarations.

The case is of interest for its consideration of the relevant legal principles governing the ITU-T RAND obligation which, unlike the ETSI FRAND obligation, is governed by Swiss law.

Kathryn Pickard KC appeared for Hisense.

[2025] EWHC 3331 (Pat)

Fujikura brought a claim for infringement of European Patent (UK) 3,796,060, which concerns optical fibre cables designed with a ribbed outer sheath.  The claimed sheath is said to improve the air-blown installation process.  Sterlite denied infringement and counterclaimed for revocation of the Patent on the grounds of classical obviousness, AgrEvo obviousness and claim uncertainty insufficiency.

Tom Mitcheson KC heard the trial between 6-15 October 2025.  He found the Patent valid and infringed.

Brian Nicholson KC and Adam Gamsa appeared for Sterlite, instructed by Allen Overy Shearman Sterling LLP.

[2025] EWHC 3181 (Pat)

Trade mark infringement/section11A defence (non-use as defence in trade mark proceedings); successful section 11A defence; construction of section 11A Trade Marks Act 1994.

Heather Lawrence was instructed by Platt & Fishwick Limited for the Defendant.

[2025] EWHC 3077 (IPEC)

Boehringer sought an interim injunction, applying the American Cyanamid principles, to prevent Dr Reddy’s from launching a generic version of the drug empagliflozin for which Boehringer holds several patents.

Empagliflozin is an inhibitor of the sodium-dependent glucose co-transporter SGLT2.  It is licensed for the treatment of type 2 diabetes, heart failure, and chronic kidney disease.  Dr Reddy’s had sought declarations of invalidity in respect of two of Boehringer’s patents, and the trial was listed for October 2026.  At the time of the hearing, Dr Reddy’s was the only generic company ready and willing to launch generic empagliflozin in the UK.

An alternative SGLT2 inhibitor, dapagliflozin, is also licensed to treat type 2 diabetes.  The patent protecting dapagliflozin was declared invalid on 28 April 2025, a decision upheld by the Court of Appeal on 16 July 2025.  On 31 July 2025 the Supreme Court refused permission to appeal.  A number of generic dapagliflozin products were immediately launched, in response to which the reimbursement price for dapagliflozin declined rapidly and the NHS issued guidance recommending that dapagliflozin be the first-line SGLT2 inhibitor for new patients and that existing empagliflozin patients be pro-actively switched to dapagliflozin.

Dr Reddy’s contended the likely consequence would be a rapid and significant decline in the empagliflozin market – around 90% within 3-9 months – and that such decline would make the empagliflozin market commercially unattractive for any third party entrant.  Therefore, said Dr Reddy’s, it was likely to be the only company supplying generic empagliflozin, there would be no price spiral, and damages would be an adequate remedy for Boehringer.

The Judge however agreed with Boehringer that the decline in the empagliflozin market would not be so rapid or significant, that there was a real risk of other generic companies entering the market before trial, and that damages would not be an adequate remedy for Boehringer (including because it would suffer non-financial loss to jobs, product pipelines, and partnership programmes).

Weighing up the balance of convenience, the Judge granted an interim injunction to preserve the status quo and because Dr Reddy’s had failed to take effective steps to clear the way.

Mark Vanhegan KC and Christopher Hall represented Dr Reddy’s.  Edward Cronan represented Boehringer.

[2025] EWHC 2834 (Pat)

Following trial in June 2025 the High Court’s judgment has now been handed down in the Getty Images v Stability Ai litigation, neutral citation [2025] EWHC 2863 (Ch). The case has been described as ‘the first major copyright trial of the generative AI industry’ – The Independent; ‘a landmark legal dispute’ – the FT; and a “landmark case for copyright law” – The Times.

Mrs Justice Joanna Smith DBE’s 200-page judgment records the development of Stability AI’s early generative AI models, tackles the nuances of training an AI image generation system, and assesses Getty Images’ claims that certain prompts will cause the models to produce infringing content.

The Judgment records the Court’s findings on Getty Images’ claims for trade mark infringement under section 10(1), section 10(2) and section 10(3) of the Trade Marks Act, passing off, and in respect of secondary infringement of copyright. The issues of copyright infringement by training and developing the models, and copyright infringement by creation of model outputs, were dropped by Getty Images after the conclusion of oral evidence.

The Court concluded that while Getty Images succeeded (in part) in the Trade Mark infringement claim, the Court’s findings on trade mark infringement were both “historic” and “extremely limited in scope“, and no finding of trade mark infringement was made at all in respect of the more recent models in dispute: Stable Diffusion XL, XL Turbo, and 1.6.

On the secondary infringement claim, the Court  decided that an intangible such as the weights of the Stable Diffusion models could be an article within the meaning of the CDPA, but concluded that it was not an act of secondary infringement to deal in any models in the UK because the models were not themselves copies of any of the copyright works asserted.

Hugo Cuddigan KC and Edward Cronan acted for Stability AI.

[2025] EWHC 2863 (Ch) with Appendix A and Appendix B

On 23 October 2025, the Court of Appeal (Peter Jackson, Arnold and Falk LJJ) handed down judgment in adidas AG v Thom Browne Inc [2025] EWCA Civ 1340. The Court of Appeal upheld the first instance decision of Mrs Justice Joanna Smith DBE ([2024] EWHC 2990 (Ch)).

While the first instance decision included matters of trade mark infringement and passing off, relating to Thom Browne’s trade in clothes bearing its ‘4-Bar’ Design, adidas appealed only in respect of the High Court’s decision to invalidate six adidas trade marks relating to the use of three stripes on various articles of clothing, including tracksuit tops, and tracksuit bottoms. The High Court decision was the first UK decision in relation to ‘position marks’ and the Court of Appeal has now provided some helpful guidance on such marks and how the requirements for registrability apply to them.

The Court of Appeal ultimately dismissed the appeal, upholding the High Court decision that the marks were invalid for failing to satisfy the requirements for registrability. The Court of Appeal rejected adidas’ argument that the registrations each related to a single sign with a permissible degree of variation. The Court of Appeal preferred Thom Browne’s argument, adopted by the Judge at first instance, that the registrations each related to an impermissible multitude of signs.

The interplay between the written description and the pictorial representation was also a key part of the Court of Appeal’s reasoning on these marks. The description in each case encompassed variations that were not pictured, including variations in length and placement of the stripes, and this uncertain interplay between picture and description meant that the Judge had been justified in concluding that the registrations fell below the requisite standard of clarity and precision.

Edward Cronan acted for Thom Browne.

[2025] EWCA Civ 1340

This was a joint trial of two claims, one brought by IDDQD and a second by Royal Mail Group, against the same defendants, in relation to online address search and verification services. This is software well-known to any customer using an e-commerce website. At check-out, a customer starts to type in an address or a postcode and the software application on the website searches the address against a database of postal addresses and auto-completes or auto-populates the address fields for the customer.

IDDQD is a licensee of Royal Mail’s ‘Postcode Address File’ (PAF), which contains a list of all postcodes and addresses in the UK. IDDQD provides its online address services under the name Ideal Postcodes. Ideal Postcodes functions using a database of postal addresses called the GBR Database using the licensed PAF as the spine and includes further developments and enhancements.

The defendants operated a competing service under the name GetAddress. It comprised two elements – a piece of software and a database of UK addresses. Mr Smith, the second defendant, was a director and shareholder of the first defendant, Codeberry. For a period of time, Mr Smith was a licensee of IDDQD and, contrary to the terms of the licence, downloaded large amounts of postal address data from the GBR Database for use in the GetAddress Database.

IDDQD’s claim was for infringement of database right in the GBR Database and breach of contract. Royal Mail’s claim was for   infringement of database right and copyright in the PAF which had been taken by the defendants including through downloading of data from the GBR Database (which contained PAF data) and from other various public sources which themselves included PAF data licensed by Royal Mail.

At trial, the Judge held that database right subsisted in the GBR Database and was owned by IDDQD and Royal Mail owned the database right and copyright which subsisted in the PAF. The defendants had infringed each of these rights.  IDDQD also succeeded in its breach of contract claim.

Mr Smith was held primarily liable for the acts of infringement, and also jointly liable for the infringing acts of Codeberry. In addition, this was a rare case where it was held that the nature of Mr Smith’s acts reflected either involving knowing infringement or a reckless or ‘couldn’t care less’ attitude and warranted an award of additional damages.

Chris Aikens and Mitchell Beebe appeared for IDDQD

[2025] EWHC 2561 (Ch)

Judgment on infringement and validity of two patents directed to the formulation of a fusion protein used to treat wet age-related macular degeneration (AMD).

The claim in issue was limited to a single formulation of the protein. The alleged infringing formulations differed in one or more respects. Regeneron asserted infringement under the doctrine of equivalence. They argued that their narrow claim should be afforded a broad scope of protection because the technical contribution of the patent was broad but this contribution could not be captured in a broad claim that was also sufficient. The Court rejected this argument, finding that the equivalence case failed on all three Actavis questions.

The prior art disclosed the fusion protein and its use for the treatment of wet AMD but no formulation information. The Court held that the narrow formulation of the claim was not obvious over that starting point. It held that one of the patents was nonetheless invalid for added matter.

Tom Alkin appeared for the Claimant instructed by Powell Gilbert LLP

[2025] EWHC 2527 (Pat)

Sandoz sought to amend its Points of Claim to allege that certain factual allegations (denied by Bayer) relating to how Bayer had obtained its patent, and the resulting knowledge with which it had obtained interim injunctions, were relevant to how the Court would assess Sandoz’s loss in its claim for compensatory damages under Bayer’s cross-undertakings.

Bayer opposed that amendment and applied to strike out and/or for summary judgment on the equivalent allegations in the Points of Reply.

Michael Tappin KC sitting as a Deputy Judge of the High Court refused Sandoz’s application for permission to amend and granted Bayer’s application.  He held that there is no authority which supports the proposition that if Sandoz were to prove the matters it alleged, the Court would be more liberal in its assessment of Sandoz’s loss, or more willing to make assumptions or presumptions in favour of Sandoz when assessing that loss.

Kyra Nezami acted as junior counsel for Bayer.

[2025] EWHC 2533 (Pat)

The Court of Appeal considered the confidentiality to be afforded to non-parties and parties to an action in circumstances where confidential information has been included in a judgment.

The Court, considering both of its own decisions in Lilly ICOS v. Pfizer (No 2) [2003] 1 WLR 2253 and JC Bamford Excavators v. Manitou [2023] EWCA Civ 840, explained the relationship between those two judgments, and reversed the decision of Marcus Smith J ([2024] EWHC 197(Ch)).  The Court recognised the right of non-parties InterDigital, Qualcomm and others to appeal a judgment in proceedings to which they were not themselves a party.

Brian Nicholson KC acted for Apple, instructed by Wilmer Cutler Pickering Hale & Dorr LLP.

[2025] EWCA Civ 1263

This was the damages inquiry in a longstanding dispute between two global pharmaceutical businesses.  Although both use the name “Merck” to refer to their businesses, products, and services, it is only the Claimant which has the right to do so in the United Kingdom (whereas the Defendants may use “MSD”, or “Merck Sharp & Dohme” plus a geographical identifier).  The Defendants had been found, in earlier judgments in the litigation, to have infringed the Claimant’s registered trade marks and breached an agreement dating from the 1950s by using the name “Merck” including on websites (such as merck.com) which were targeted at consumers in the United Kingdom.

The Claimant claimed damages assessed on the basis of a notional licence fee: i.e. what reasonable parties in the position of the Claimant and Defendants respectively would have agreed as the price for permitting the Defendant to carry out the acts found to have been infringements of registered trade mark and breaches of contract.  The damages inquiry addressed the availability of licence fee damages in breach of contract and trade mark cases, the utility of certain agreements relied upon by the Claimant as comparables, and an economic benefits approach to quantification of benefits obtained by the Defendants through their acts of infringement and breach.

Bacon J rejected the Defendants’ argument that the Claimant had not established an entitlement to any award of licence fee damages, finding (adopting an economic benefits approach, but rejecting the Claimant’s comparables-based approach) a total of c. £6m (inclusive of interest) to be due to the Claimant.

Benet Brandreth KC and David Ivison appeared on behalf of the Claimant, Merck KGaA.

[2025] EWHC 2376 (Ch)

This was a trial of a claim primarily for infringement of UK Unregistered Design Right infringement in relation to safety equipment. The trial (in the Shorter Trial Scheme) took place in October 2023. Judgment was given in September 2025, for which the Court apologised. An earlier claim of Registered Design Right infringement was discontinued shortly before trial upon evidence of the Claimant’s prior disclosure being uncovered. A reverse passing off claim of short duration was admitted at trial. Of some note was the Court’s acceptance of the Defendant’s argument that the CJEU test on copyright applied to UK Unregistered design right subsistence. In addition, the Court was required to interpret the ‘made available for sale or hire’ date in s. 216(1)(b) CDPA. The only infringement claim which succeeded was the unregistered design right claim introduced by amendment shortly before trial, in relation to the edge of one of the safety boards. The remaining claims were dismissed as not having been relevantly copied, or that the alleged design was not a design. It was determined that all of the designs were found to be in the licence of right period when the acts of infringement took place.

Jacqueline Reid appeared for the Defendant, instructed by Virtuoso Legal.

[2025] EWHC 2241 (Pat)

Sandoz brought a claim for an account of profits in reliance on Bayer’s cross-undertaking given at the time of obtaining interim injunctions.  It relied on the principle established in Attorney General v Blake that an account of profits may be available for breach of contract in exceptional circumstances.

Bayer successfully applied to strike out and/or for reverse summary judgment on Sandoz’s claim to an account of profits.  Michael Tappin KC (sitting as a Deputy Judge of the High Court) held that a correct construction of the cross-undertaking given by Bayer was that Bayer undertook to comply with any order the Court might make to compensate Sandoz for loss it had suffered as a result of the injunction.  Bayer was not undertaking to disgorge profits it made as a result of the injunctions.

Kyra Nezami acted as junior counsel for Bayer.

[2025] EWHC 2201 (Pat)

This was an application by Spribe for an interim injunction to prevent trade mark infringement and passing off.  The interesting legal aspects of the dispute were the Respondent’s assertions that: (i) Spribe had brought the application against the wrong party; and (ii) in quia timet scenarios the court should apply the test in Vastint Leeds BV v Persons unknown [2018] EWHC 2456 (Ch), rather than that in American Cyanamid.

Spribe operates an online ‘crash’ gambling game in the UK under indicia in respect of which Spribe owns registered trade marks and claims goodwill.  The claim arises because the Claimant contends that Spribe’s activities amount to an infringement of copyright subsisting in similar indicia in respect of which the Claimant asserts ownership.  The counterclaim arises because the Claimant Aviator company licensed that copyright to other Aviator-named companies for the purposes of operating online crash games, and Spribe fears that the Claimant, itself or in common design with its licensees, intends to target the UK market.  The Claimant contended that those licensing activities were at arms’ length and that the Claimant would have no further involvement in any targeting of the UK by its licensees.

The Court declined to apply the Vastint test, and applying American Cyanamid found that there was a serious issue to be tried as to the extent of the Claimant’s involvement.  It made an interim order preventing the Claimant, whether acting itself or in common design, from targeting the UK.

Benet Brandreth KC and Christopher Hall appeared for the Applicant, instructed by Bird & Bird LLP

[2025] EWHC 2153 (Ch)

This was the Court of Appeal decision in this litigation concerning Moderna’s patent EP949, which was asserted against Pfizer/BioNTech’s SARS-CoV-2 vaccines.  The appeal considered the judgment of Meade J dated 2 July 2024 ([2024] EWHC 1695 (Pat)).

EP949 claims mRNA in which one of the usual nucleosides (uridine) is replaced with N1-methyl-pseudouridine (“m1Ψ”).  At first instance, Meade J upheld the validity of EP949.  Pfizer appealed, contending that EP949 lacks novelty over, alternatively is obvious in light of, a prior patent application.

The appeal was heard by LJJ Moylan, Arnold and Snowden.  Arnold LJ gave the judgment of the court, in which he dismissed the appeal for largely the same reasons as the Judge’s.

The Court of Appeal held that there is no distinction, as a matter of law or principle, between the application of the law on novelty (including the test of “individualised description”) to items selected from a list, on the one hand, and classes of items, on the other.  The CA’s judgment also:

• includes a useful reminder about the role of expert witnesses in patent cases, and
• summarises the applicable law on the identity of the skilled person, confirming that it is appropriate for judges to assess the extent to which the parties’ expert witnesses embody the attributes of the skilled person.

Piers Acland KC appeared for the Respondent, Moderna, instructed by Freshfields Bruckhaus Deringer LLP

[2025] EWCA Civ 1032

easyGroup appealed the decision of Fancourt J dismissing its claims for registered trade mark infringement and passing off and revoking (either partially or wholly) certain of its marks for lack of genuine use. The Defendants have since 2005 operated an online platform for fundraising by retail under the name Easyfundraising. The appeal was heard immediately after the appeal in another case involving easyGroup (easyGroup v Easy Live (Services) No 2) before the same constitution because the first instance judges in each case reached inconsistent decisions on the same issues on revocation.

Arnold LJ (with whom Coulson and Zacaroli LJJ agreed) dismissed the appeal on infringement, but allowed the appeal to some extent on issues of revocation.  easyGroup was ordered to pay 75% of the Defendants’ costs below (to be assessed on the indemnity basis, as decided by Fancourt J – see [2024] EWHC 3210 (Ch)) and 50% of the Defendants’ costs of the appeal.

The appeal raised the following points of interest:

• In spite of the recent decision of the Supreme Court in Iconix v Dream Pairs, the Court of Appeal reversed certain decisions of the first instance tribunal on issues involving a multifactorial assessment (revocation for lack of genuine use)
• When considering whether use of a variant sign constitutes genuine use of a trade mark, the court will consider whether use of the variant is actually use of more than one sign, applying the Court of Appeal’s judgment in Specsavers v Asda
• In cases of partial revocation of specifications of services the court should consider the “intended mode of use of the services in question”. The Court of Appeal also considered the Nice Classification when arriving at a fair specification.
• The Court of Appeal appeared to introduce a new rule of precedent: where a first instance court is determining the same issue which has already been decided by a different first instance court, the later court should follow the earlier decision unless it contains an error of law or principle

Chris Aikens appeared as junior counsel for the Defendants.

[2025] EWCA Civ 1000

easyGroup appealed the decision of Nicholas Caddick KC dismissing its claim for registered trade mark infringement. The Defendants operate an online auction bidding platform and provide back-office software for use in the auctioneering trade under the name Easy Live Auction. The Defendants cross-appealed the Judge’s dismissal of their counterclaim for revocation. This was the second time that the dispute between the parties had reached the Court of Appeal.  The appeal was heard immediately before the appeal in another case involving easyGroup (easyGroup v Easyfundraising) before the same constitution because the first instance judges in each case reached inconsistent decisions on the same issues on revocation.

Arnold LJ (with whom Coulson and Zacaroli LJJ agreed) allowed the appeal on infringement in respect of one of the signs in issue (EASY LIVE), but dismissed the appeal on all other signs, including the Defendants’ trading name Easy Live Auction.  He also allowed the cross-appeal on partial revocation.  The Defendants were deemed the successful party overall and were awarded 50% of their costs of both first instance and the appeal.

The appeal raised the following points of interest:

• In spite of the recent decision of the Supreme Court in Iconix v Dream Pairs, the Court of Appeal reversed the decisions of the first instance tribunal on matters involving multifactorial assessments (likelihood of confusion and revocation for lack of genuine use)
• In cases of partial revocation of specifications of services, the court should consider the “intended mode of use of the services in question”. The Court of Appeal also considered the Nice Classification when arriving at a fair specification.
• A trade mark proprietor can provide “retail services” without concluding a sale with a purchaser of goods or services
• The enhanced distinctive character of a mark will not normally be confined to the precise goods or services in relation to the which the mark has been used

Chris Aikens appeared as sole counsel for the Defendants.

[2025] EWCA Civ 946

AstraZeneca held two supplementary protection certificates (SPCs) protecting dapagliflozin, an inhibitor of sodium-dependent glucose co-transporter proteins, used for treating Type II diabetes. The patent underlying the SPCs had expired and the Claimants wished to clear the way for launch of their own dapagliflozin products. The validity of the SPCs was challenged on the grounds that the basic patent was invalid for lack of plausibility and/or lack of technical contribution over the prior art (WO 128). Dr Tappin KC had held the SPCs invalid, finding for the Claimants on both of the invalidity attacks.  AstraZeneca appealed to the Court of Appeal.

The Court of Appeal dismissed AstraZeneca’s appeal on all grounds.  Applying Sandoz v BMS, the Judge had correctly concluded that the Patent did not make it plausible that dapagliflozin would be useful for the treatment of diabetes, and therefore the claims were invalid for both lack of inventive step and insufficient disclosure. Even if the standard applicable when considering inventive step for a product claim were to be “whether the skilled team would have legitimate reason to doubt that dapagliflozin would be useful for the treatment of diabetes”, on the Judge’s findings the skilled team would have legitimate reason to doubt this. Regarding arbitrary selection, the Judge was correct to hold that the Patent claims a compound arbitrarily selected from the prior art because the Patent makes no technical contribution compared to the prior art.

Adam Gamsa appeared for Generics and Kathryn Pickard for Glenmark

[2025] EWCA Civ 903

Rolls-Royce applied to set aside an ex parte order, granted by the Senior Master of the King’s Bench Division, which gave effect to a Letter of Request issued by the United States District Court of California.

The Letter of Request sought production of (amongst other things) the software underlying the Rolls-Royce vehicle configurator. That software was the subject of a copyright infringement complaint by Topalsson against Rolls-Royce dealers in the US. Rolls-Royce argued that the order was obtained in breach of the duty of full & frank disclosure; alternatively that the Court ought not to have exercised its discretion under the relevant statute to grant it. The Senior Master declined to set aside the order, instead limiting its scope to the software requests and imposing conditions.

The case is notable for the discussion of whether there has been a material breach of the duty of full & frank disclosure and the use of CPR 3.1(3) to impose conditions on an order giving effect to a Letter of Request.

Kathryn Pickard KC was instructed by Topalsson.

[2025] EWHC 1584 (KB)

The Supreme Court unanimously overruled the Court of Appeal and allowed Dream Pairs’ appeal, holding that the Court of Appeal was not justified in substituting its own view in respect of the similarity and confusion assessments which had been made by the trial judge, in this trade mark infringement case. In doing so the Supreme Court discussed the principles and circumstances in which it is appropriate for the Court of Appeal to interfere with a first instance evaluative judgment. In addition, the Supreme Court considered and held that “realistic and representative post sale circumstances” can be taken into account for the purposes of assessing whether a sign and mark are similar and the extent of such similarity and further that post sale confusion without causing damage to the trade mark may give rise to an actionable likelihood of confusion, even where there is no likelihood of confusion at the point of sale.

Mark Vanhegan KC, led Theo Barclay of 4 New Square, instructed by Bird & Bird, acted on behalf of the successful appellants in the Supreme Court

[2025] UKSC 25

AstraZeneca, the patentee & SPC holder, sought interim relief to prevent generic dapagliflozin being put on the market in the UK. A number of pharmaceutical companies, including Glenmark, Teva and Viatris, were sought to be enjoined.

Dapagliflozin is a sodium glucose transport inhibitor used to treat Type II diabetes. AstraZeneca’s patent and SPCs in respect of dapagliflozin had been held invalid (by decision of Mr Michael Tappin KC, siting as a Deputy Judge – [2025] EWHC 1012 (Pat)). However, AstraZeneca had obtained permission to appeal that decision from the Court of Appeal, and sought injunctive relief pending resolution of the validity appeal.

HHJ Hacon, sitting as a Judge of the Patents Court, granted the interim injunction. He found that either side was likely to suffer irreparable harm on the alternative hypotheses of an injunction being granted or not. He therefore decided to maintain the status quo, taking into account that the validity appeal had been expedited to be heard within 4 weeks.

The case is notable for the discussion of the ‘price spiral’ often relied upon by patentees in pharmaceutical cases – in particular the actual mechanisms by which drug prices are controlled in the UK, including the Department of Health & Social Care’s ‘voluntary scheme for prices and growth’ or ‘VPAG’ scheme. The Court found that the VPAG scheme would not prevent AstraZeneca from either reducing its prices to compete with the generics or in reinstating it prices in the event that it succeeded on its validity appeal. Nevertheless, the Court found that harm would be caused to AstraZeneca in the form of damage to its relationships with wholesalers and/or retail pharmacists.

Anna Edwards-Stuart KC appeared for Teva; Brian Nicholson KC appeared for Viatris; and Kathryn Pickard KC appeared for Glenmark.

[2025] EWHC 1339 (Pat)

In Praesidiad Holding BVBA & Anor v Zaun Limited ([2025] EWCA Civ 591), in the context of an allegation of infringement of Community Design Right and Re-Registered Design Right, the Court of Appeal considered the effect of Brexit legislation on the re-litigation of validity challenges in proceedings pending on IP Completion Day. The Court of Appeal upheld the first instance finding that Zaun’s counterclaim was barred by Article 86(5) of the CD Regulation and common law principles of res judicata and abuse of process. It rejected Zaun’s construction of the effect of the Brexit legislation. Benet Brandreth KC acted for the successful appellant Respondent, Praesidiad.

[2025] EWCA Civ 591

This was the Court of Appeal decision in Trial E of this litigation concerning the FRAND terms of a licence granted by Optis to Apple for the implementation of the former’s portfolio of ETSI-declared SEPs in products such as the iPhone.

The appeal considered the judgment of Marcus Smith J dated 16 February 2024 which set the rate and other relevant terms of the FRAND licence in issue.  Birss LJ gave the judgment of the Court on the FRAND rate, and Arnold LJ addressed the other licence terms and the impact of parallel US proceedings on the remedies available.

Brian Nicholson KC acted for Apple, instructed by Wilmer Cutler Pickering Hale & Dorr LLP.

[2025] EWCA Civ 552

This judgment concerns the question of whether as a matter of principle ancillary interest may be awarded upon sums found due in an account of profits for patent infringement.

The defendants had each been held liable for patent infringement: [2020] EWHC 1968 (Pat) & [2022] EWCA Civ 20. Leech J heard the ensuing account of profits [2025] EWHC 375 (Pat) and determined the relevant sums due for each defendant (see [1]-[4] of [2025] EWHC 1034 (Pat)).  The question then arose as to Lufthansa’s entitlement to interest upon those sums.

Leech J held that the court has the power to award the payment of interest on sums found due following an account of profits for patent infringement, both pursuant to the court’s inherent equitable jurisdiction (see [6]-[12]) and (obiter) pursuant to s.35A Senior Courts Act 1981 (see [13]-[21]).

In addition to that question of principle, the Judge determined disputes relating to the amount of interest: namely discretion to award interest [22]-[25], delay [26]-[30], rate [31]-[35], tax upon interest [36]-[38], and the time from which interest should be calculated [39].

Further, against a background of multi-jurisdictional litigation between the parties in respect of products which in the ordinary course of trade pass through several jurisdictions, the issue arose as to how to address the risk of ‘double recovery’ of profits by the patentee.  On the facts, the UK Patents Court was the first court to reach a decision on recoverable profits.  The Judge elected not to render the account on a provisional basis with liberty to apply, preferring instead to leave the matter of double recovery for the overseas courts to address in their own decisions in due course (see [44]-[56] & [58]).

Hugo Cuddigan KC, Christopher Hall and Miruna Bercariu acted for Lufthansa.  Iain Purvis KC and Piers Acland KC acted for Astronics, Safran and Panasonic.

[2025] EWHC 1034 (Pat)

AstraZeneca held two supplementary protection certificates (SPCs) protecting dapagliflozin, an inhibitor of sodium-dependent glucose co-transporter proteins, used for treating Type II diabetes. The patent underlying the SPCs had expired and the Claimants wished to clear the way for launch of their own dapagliflozin products. The validity of the SPCs was challenged on the grounds that the basic patent was invalid for lack of plausibility and/or lack of technical contribution over the prior art. The Judge held the SPCs invalid, finding for the Claimants on both of the invalidity attacks.

The case is notable for the careful exposition of the law of plausibility (following G2/21) and the discussion of the law relating to lack of technical contribution and the circumstances in which a patent will be invalid for arbitrary selection.

Adam Gamsa appeared for Generics and Kathryn Pickard for Glenmark

[2025] EWHC 1012 (Pat)

Miruna advised on copyright subsistence and infringement in a criminal case concerning the alleged theft of video game currency, successfully assisting lead counsel at the preparatory hearing in this matter in the Cambridge Crown Court.

The factual background primarily concerned the Defendant’s alleged appropriation of in-game currency known as “gold coins” from users’ accounts in the online multiplayer game Old School RuneScape.  On 24 February 2025, a preparatory hearing was held in the Cambridge Crown Court for the purposes of establishing whether “in-game wealth” falls within the definition of “property”, either under the Theft Act 1968 or at common law, and is therefore capable of being stolen.

Shortly before the hearing, the Prosecution raised a new argument relying on copyright alleged to subsist in the underlying software as supporting their assertion that in-game wealth should be regarded as property.  On 23 April 2025, HHJ Grey gave judgment in this matter.  The Court agreed with the Defendant that, as a matter of law, in-game wealth is not property, and dismissed the Prosecution’s copyright argument.

The Prosecution has applied for permission to appeal.

Miruna Bercariu acted as junior counsel for the successful Defendant, instructed by BSB Solicitors.

35NT1558319

In the case of Merck KGaA v Merck Sharp & Dohme LLC & Anor [2025] EWCA Civ 343, the Court of Appeal upheld the High Court’s decision that Merck Sharp & Dohme LLC and Merck & Co., Inc. breached the court order regarding the use of the name “Merck” in the UK made in previous proceedings for breach of contract and trade mark infringement. The dispute centred on the Defendants’ use of “Merck” on websites and other materials targeted at the UK. The Court of Appeal confirmed that these uses constituted a breach of the order and did not fall within the exemptions provided. In doing so it rejected the submission that a declaration of “breach” was inappropriate and that Merck KGaA should have brought contempt proceedings.

Benet Brandreth KC acted for the successful Claimant Merck KGaA.

[2025] EWCA Civ 343

Patent infringement and validity action concerning three patents relating to oils extracted from microorganisms, which are rich in beneficial fatty acids such as docosahexaenoic acid (DHA), and the production of such oils.

The case concerned a number of issues including Biogen sufficiency and the allowability of claim amendments involving product-by-process features.

Kyra Nezami acted as junior counsel for DSM (the Claimants).

[2025] EWHC 675 (Pat)

Huawei wishes to license its SEPs at the chipset rather than device level. MediaTek brought proceedings against Huawei in the Patents Court, seeking relief including determination of a global FRAND licence.

Huawei pointed to the China-focussed location of the relevant acts, as well as the existence of parallel proceedings brought by Huawei and MediaTek in China.

Leech J heard jurisdiction and service challenge applications on 18-20 December 2024.  He concluded that MediaTek’s claims can go forward to trial.

Adam Gamsa appeared for Huawei, instructed by Allen Overy Shearman Sterling LLP.

[2025] EWHC 649 (Pat)

Patent infringement/validity – pathway lighting units suitable for use where climbing is to be discouraged, such as on railway bridges; identifying the skilled person in the art.

Heather Lawrence was instructed by Penningtons Manches Cooper for the Defendant.

[2025] EWHC 563 (IPEC)

As part of the global FRAND dispute between Ericsson and Lenovo (and Lenovo’s subsidiary Motorola) the High Court dealt with the question of construction of a past licence between Ericsson and Motorola as a preliminary issue. The Hon. Mr Justice Meade determined that the licence scope operated to capture devices existing at the effective date of the agreement and commercially reasonable updates and extensions of such devices. The parties will therefore be required to conduct a trial to determine which of Motorola’s past devices satisfy this test, so that no payment for these devices is included in the future FRAND licence between Lenovo and Ericsson.

Edward Cronan acted for Motorola/Lenovo.

[2025] EWHC 539 (Pat)

Following a 10 week trial in 2024, O’Farrell J handed down judgment in this case which featured as one of The Lawyer’s Top 20 Cases of 2024. The Judge determined that the Defendants’ development of their Software Defined Mainframe software platform had been in breach of IBM’s standard form license agreement into which the Second Defendant had entered. Specifically the Judge held that the Second Defendant’s acts amounted to a process of reverse engineering and did not fall within any of the protections provided by Articles 5(1), 5(3) or 6(1) of the Software Directive. The Judge further held that the Second Defendant’s acts had been procured by two of the other Defendants and that they had all participated in an unlawful means conspiracy, and that any limitation defence failed because of concealment.

Mark Vanhegan KC, together with Jaani Riordan and Joshua Marshall of 8 New Square, and Roger Stewart KC, Thomas Ogden, George McDonald,  instructed by Clifford Chance, acted for the Defendants.

[2025] EWHC 532 (TCC)

In the latest chapter of FRAND litigation before the English courts, the Court of Appeal sets the boundaries of the courts’ jurisdiction to make FRAND declarations requested by the implementer in relation to a SEP platform (here, the Avanci 5G Platform targeting the automotive industry).

The appeal considered Fancourt J’s judgment ([2024] EWHC 1815 (Ch)) allowing Avanci’s Part 11 Application to set aside permission to serve out granted to Tesla on its ex parte application before Mellor J.  We have summarised the factual background of the dispute in our previous note here.

The Court heard the appeal in December 2023.  Notwithstanding the main judgment given by Arnold LJ, the majority (Phillips and Whipple LLJ) dismissed Tesla’s appeal for lack of a serious issue to be tried against each of Avanci and InterDigital alone.  Notably, the majority confirmed that Tesla does not meet the requirements set out in Vestel Electronic Sanayi Vi Ticarat AS v Access Advance LLC [2021] EWCA Civ 440 in circumstances where it does not have any legally enforceable right against Avanci.  Of relevance to the Court’s decision was, inter alia, the fact that Avanci does not agree or purport to fulfil any SEP owner’s ETSI obligations, which individual SEP owners remain under an obligation to satisfy by offering bilateral licences on FRAND terms.  Instead, the Avanci 5G Platform is simply a commercially convenient arrangement through which SEP owners can choose to licence their SEPs in the alternative to a multitude of bilateral agreements and outside the scope of their ETSI FRAND undertaking.

The Court unanimously upheld the Judge’s decision refusing to permit the claim for FRAND declarations to be brought against InterDigital under CPR rule 19.8 as a representative of all SEP holders whose SEPs are included in the Avanci 5G Platform.

Tesla was refused permission to appeal by the Court of Appeal.  It is entitled to apply for permission from the Supreme Court.

Brian Nicholson KC and Miruna Bercariu acted for Avanci, jointly instructed by Osborne Clarke and EIP.

[2025] EWCA Civ 193

Lenovo successfully appealed against the decision of Richards J dismissing its application for a short term licence to hold the ring pending determination of FRAND terms.

The Court of Appeal were unanimous that Ericsson’s conduct in seeking and obtaining injunctive relief in multiple jurisdictions throughout the world, in circumstances where Lenovo had given an undertaking to take a licence on terms determined by the Court to be FRAND, constituted a breach of Ericsson’s duty of good faith.

The case is significant because it confirms that the short-term licence jurisdiction, first recognised in Panasonic v Xiaomi [2024] EWCA Civ 114, is not limited to the situation where both parties have given undertakings to be bound by the Court’s FRAND determination.

Kathryn Pickard was instructed for Lenovo.

[2025] EWCA Civ 182

This is the judgment in an account of profits following the liability trial ([2020] EWHC 1968 (Pat)) concerning infringement of Lufthansa’s patent for an aircraft passenger in-seat power supply system. Astronics manufactured such systems, Safran installed them into airline seats, and Panasonic supplied in-flight entertainment systems incorporating power supplies.

Accounts of profits are rare in patent infringement disputes, and the main issue addressed by the Court was the correct legal approach to causation in an account of profits.

The judge first conducted a ‘differential profits’ analysis comparing the profits the Defendants actually made in the real world with those which the Defendants could hypothetically have made in a counterfactual world.  The Defendants were permitted to propose hypothetical non-infringing activity in which they could have engaged (a departure from the rule to the contrary in United Horse Shoe (1888) 13 App Cas 40).  The judge then followed the differential profits analysis with an apportionment exercise based upon the royalty provisions in a licence agreement between Lufthansa and a third party.

The Judge also considered a wide range of other legal and factual issues, including issues of estoppel and abuse with regards to patent claim construction,  secondary liability under s.60(2) Patents Act 1977, and the German law on interpretation of IP licence agreements.  Further, the decision covers the analysis and application of various accounting principles.

Hugo Cuddigan KC, Christopher Hall and Miruna Bercariu acted for Lufthansa.  Piers Acland KC acted for Astronics, Safran and Panasonic.

[2025] EWHC 375 (Pat)

Abbott v Sinocare was a trade mark and passing off dispute.  Abbott claimed brand rights in the shape of the on-body unit (OBU) of its continuous glucose monitoring (CGM) system.  It alleged that Sinocare had  infringed those rights and passed itself off by the use of Sinocare’s iCan i3 CGM system.  Sinocare counterclaimed for the invalidity of the trade mark registration; alleging that Abbott’s mark was invalid for lack of distinctiveness and because the shape protected features having a technical function.  The Court found in favour of Sinocare on all points: they did not infringe and the trade mark was invalid both for lack of distinctive character and because it consisted of features with a technical function.

Benet Brandreth KC acted for the successful defendant Sinocare, with Theo Barclay of 4 New Square as his junior, instructed by Bird & Bird LLP.

[2025] EWHC 206 (Ch)

By this appeal Merck Serono invited the Court of Appeal to invoke its post-Brexit powers and depart from the CJEU decision in Santen, thereby opening up the possibility for the granting of SPCs for second medical use patents where an MA had already been granted for an earlier use of the patented medicinal product.

Merck Serono had applied to the UKIPO for an SPC for the product cladribine (based on MA EU/1/17/1212) for the medicinal product ‘mavenclad’, indicated for the treatment of highly active relapsing remitting multiple sclerosis. The application was refused by the UKIPO on the basis that it did not meet the requirements of Article 3(d) of the SPC Regulation, as interpreted by the CJEU in Santen, because earlier MAs had been granted for cladribine (albeit for a different indication, hairy cell leukaemia).

Merck Serono appealed to the Patents Court on various grounds. The appeal was dismissed by Michael Tappin KC ([2023] EWHC 3240 (Ch)), but he granted permission to appeal. Before the Court of Appeal Merck Serono advanced a single ground of appeal, namely that that Santen had been wrongly decided and the Court of Appeal should exercise its post-Brexit powers and depart from it.

The Court of Appeal held that it could not depart from Santen, having previously applied that decision in Newron ([2024] EWCA 1471). However the Court of Appeal also held that even had it not been bound by Newron it would not have been appropriate to depart from the CJEU’s decision in Santen.

Accordingly SPCs remain unavailable where an earlier MA has already been granted for the active ingredient even where the earlier MA is for a different indication.

Anna Edwards-Stuart KC acted for the Respondents, instructed by Government Legal Department.

[2025] EWCA Civ 45

Dr Hill was an expert in thermophilic proteins with a background in DNA cloning and vaccine technology. She conceived a method of making “doggybone DNA”, in which a specific enzyme – known as a “protelomerase” – was used to cut and close amplified DNA in a single step. Dr Hill further conceived that said process would have various advantages if it was a thermophilic process that used a thermophilic protelomerase.

Touchlight was a company set up to commercially exploit Dr Hill’s inventions. Dr Hill entered into a service agreement with Touchlight with effect from September 2008. It was a term of such agreement that Dr Hill would assign IPR relating to the “Projects” to Touchlight: the “Projects” were defined as “the projects based on thermophilic bacteria”.

Dr Hill resigned her position at Touchlight in 2009 and Touchlight subsequently obtained patent protection in respect of Dr Hill’s invention. The claims of the granted patents were not limited to a thermophilic process.

In these patent entitlement proceedings, Dr Hill claimed joint entitlement to the patents on the basis that she devised the patented invention before her employment at Touchlight commenced and that only the thermophilic aspects of the inventions were transferred to Touchlight under the service agreement.

The key issue at trial was the timing of Dr Hill’s invention, on which the Judge found against Dr Hill. In addition there were issues about the correct construction of the service agreement, estoppel, limitation, unjust enrichment and circuity of actions.

Hugo Cuddigan KC and Kathryn Pickard represented Dr Hill.

[2025] EWHC 107 (Pat)

Celltrion sought revocation of European Patent (UK) No. 3 805 248 B1 (the “Patent”) owned by Genentech and Novartis (“GN”).  The Patent concerned a formulation of a monoclonal anti-IgE antibody, rhuMAB E25 (generic name omalizumab), which is used to treat asthma.  Celltrion’s lack of novelty ground of invalidity relied upon PCT WO 2004/091658 A1 (“Liu”) and included an argument that the law of equivalents ought to extend to anticipation.  For obviousness, Celltrion relied on a paper published in the Journal of Biochemistry, Biophysical Effect of Amino Acids on the Prevention of Protein Aggregation (“Shiraki”), as would be applied to the existing label for lyophilised Xolair.  Celltrion also advanced lack of technical contribution, lack of plausibility and added matter as grounds of invalidity.

Hacon HHJ heard the trial between 24 October 2024 to 1 November 2024.  He found the Patent valid.

Iain Purvis KC and Adam Gamsa appeared for Celltrion, instructed by Bird & Bird LLP.

[2025] EWHC 174 (Pat)

This was a claim for infringement of a trade mark consisting of the word ALICE registered in respect of certain audiovisual equipment and related services.  The Claimant traded as ALICE, selling equipment including amplifiers, mixing desks, and timecode distribution amplifiers.  In 2021, the Defendants started advertising and selling a camera designed for use with a smartphone and incorporating AI technology, under the brand ALICE / ALICE CAMERA.

The Court dismissed the Defendants’ counterclaim for revocation of the Claimant’s trade mark on grounds that it had not been put to genuine use, and held that it had been infringed as alleged by the Claimant.  The Court rejected the Defendants’ evidence that their cameras had a different target audience from the goods for which the Claimant’s trade mark was registered, holding that there was indeed a likelihood of confusion as a result of the Defendants’ activities.

David Ivison appeared for the Claimant at trial and at the hearing of an interim application in which a counterclaim for cancellation of the Claimant’s trade mark on the basis of alleged bad faith was struck out.

[2024] EWHC 3256 (IPEC)

This was the appeal to the Irish Court of Appeal from the judgment of Barrett J given in the Dublin High Court last year in which he found that the patent for apixaban in Ireland was invalid as lacking plausibility.  The Aplxaban patent has been attacked by generic producers across Europe and this case is the Irish arm of the dispute.  The appeal was heard over four days in May 2024 and the Court of Appeal handed down its judgment on 25 November.

At the trial, Teva attacked the validity of the patent on the grounds of plausibility and lack of priority.  The High Court rejected the priority attack and there was no appeal from that decision.  BMS appealed the decision that the patent was invalid for implausibility.

After a detailed and careful review of the evidence, the Court of Appeal concluded that the trial judge had failed to make critical findings of fact and failed to explain the findings that he had made.  The Court consequently overturned the first instance decision and remitted the case for rehearing before a different judge.  The Court of Appeal noted particularly that the trial judge had leant heavily on findings in the parallel judgments in the English courts even though the evidence on the technical issues before the Irish courts was substantially different from that which was adduced in England.  The retrial is expected to take place in about a year.

Michael Silverleaf appeared at the appeal for the successful appellant with Michael Howard SC, Yvonne McNamara SC and Paul Coughlan instructed by Wilmer Hale, London and McCann Fitzgerald, Dublin.

[2024] IECA 287

Three Stripes vs Four Stripes: Adidas trade marks invalid / not infringed by Thom Browne

New York couturier Thom Browne has emerged victorious in a heavyweight trade mark dispute with German sportswear giant Adidas.

Thom Browne is known for reimagining classic tailoring with a modern, avant-garde edge. Adidas took issue with the asymmetric ‘four bar’ motif used on some of Mr Browne’s designs, alleging infringement of its three stripe trade marks and passing off.

In a comprehensive and meticulous judgment the trial judge Mrs Justice Joanna Smith has invalidated eight of Adidas’ three stripe trade mark registrations and dismissed Adidas’ counterclaim that the UK sale of Thom Browne’s clothing constituted trade mark infringement or passing off.

The judgment contains extensive analysis of so-called ‘position’ trade marks, the relevance of the post-sale context in assessing infringement and of honest concurrent use. It also contains salutary practical lessons for practitioners concerning CPR PD 57AC (Trial Witness Statements in the Business and Property Courts) and the logistics of trial by samples.

Edward Cronan acted for Thom Browne, instructed by Mishcon de Reya LLP.

[2024] EWHC 2990 (Ch)

This was an application for a short term licence between the parties pending determination of FRAND terms by a court of competent jurisdiction.

The parties were engaged in negotiations for a cross-licence in respect of each other’s standard essential patents. Both parties had referred the question of FRAND terms to a court – Lenovo to the Patents Court and Ericsson to the Eastern District Court of North Carolina. Lenovo had undertaken to enter into a licence on terms determined to be FRAND by the Patents Court and trial of the Patents Court FRAND proceedings was fixed for 2025. Notwithstanding this, Ericsson sought and obtained multiple preliminary injunctions against the appellants in Brazil and Colombia, as well as seeking exclusion orders in the US ITC, in an attempt to coerce the appellants into taking a licence on its terms before any court determination.

Richards J declined to grant the declaration sought, holding that he was not satisfied to a high degree of assurance that the conditions for making the declaration were met. A key part of his reasoning was the absence of any reciprocal undertaking by Ericsson to enter into a licence on terms determined to be FRAND by the English court.

The case is significant because it is the first application by the Patents Court of the new short term licence jurisdiction, confirmed by the Court of Appeal in Panasonic v Xiaomi [2024] EWCA Civ 1143 (Pat).

Kathryn Pickard was instructed for Lenovo.

[2024] EWHC 2941 (Pat)

HHJ Hacon refused an application in each of two actions for summary judgment, alternatively strike out.  Both actions concern designs for phototherapeutic devices.  The first action is a claim brought by I-Smart against Currentbody.com for infringement of UK registered designs and unregistered design rights in phototherapeutic face masks and neck bibs sold by Currentbody.com.  The second action was brought by a different party, Kaiyan Medical, against I-Smart.  Kaiyan Medical created the designs in which I-Smart claimed registered and unregistered rights and had supplied them to I-Smart.  It is also Currentbody.com’s supplier.  Kaiyan Medical’s claim against I-Smart is that in claiming rights in those designs and asserting them against Currentbody.com, I-Smart breached the terms of an NDA it entered into with Kaiyan Medical and breached an equitable duty of confidence.

I-Smart applied for summary judgment on, alternatively strike out of, Kaiyan Medical’s claims for breach of the NDA, and Currentbody.com’s defence relying on that breach, on the basis that the designs had become generally known and available to the public by the time of the alleged breach by I-Smart.  The applications were dismissed because Kaiyan Medical and Currentbody.com’s arguments in response carried some degree of conviction.  They raised arguable points of construction of the NDA that needed to be determined against the background facts at trial.

Chris Aikens appeared as sole counsel for Kaiyan Medical.

[2024] EWHC 2889 (IPEC)

This is the highly anticipated decision of the Supreme Court in the Sky v SkyKick saga.  The case centred around Sky’s claim of trade mark infringement for the use of the sign ‘Sky’ in relation to cloud migration and cloud backup services, and SkyKick’s counterclaim for invalidity based on bad faith.

The appeal was heard in June 2023 by Lords Reed, Lloyd-Jones, Kitchin, Hamblen and Burrows.  An application made by SkyKick shortly before the judgment was finalised asking for permission to withdraw the appeal was rejected on public policy grounds.

The main judgment was given by Lord Kitchin (with whom the rest of the panel agreed). The court allowed the appeal and reversed the Court of Appeal’s decision on bad faith, and upheld its decision on infringement.  Lord Reed gave additional reasons for agreeing with Lord Kitchin’s finding that England and Wales courts retain their pre-Brexit jurisdiction in full in relation to proceedings for infringement or validity of EU trade marks pending on IP Completion Day.

The judgment raised several points of policy with regards to the appropriate limits that need to be placed on applicants when registering a sign for specific goods and services, taking into account the fundamental origin function of trade marks and the need to maintain fair competition on the market.  The judgment includes inter alia the following important findings:

• It was confirmed that at the time a trade mark application is made the applicant does not need to have a firm or settled intention to use the sign as a trade mark in relation to the goods and services in its specification. However, lack of such use and intention may be evidence in support of an allegation of bad faith where the applicant has no genuine intention to use the grace period to try to establish or even reasonably to explore the viability of a business under the mark, in particular where they nevertheless intend vigorously to enforce the registration against third parties across the full range of the goods and services in respect of which it is registered.
• The length of the list of goods and services in the specification, when compared with the size and nature of the applicant’s business, can be taken into account as a factor supporting an allegation of bad faith, as can a failure on behalf of the applicant to provide any satisfactory explanation for the choice of specification.
• An applicant’s reputation does not allow them to apply to register the mark for goods and services which they never had any intention to sell or supply.
• Applicants should not be permitted to apply to register a mark in respect of distinct categories of goods or services in relation to which they never had an intention to use the mark simply because they chose to use a broad description. A general terminology should be viewed as consisting of several sub-categories, some of which may have been included in bad faith.
• As to the proper procedure, the trial judge was entitled in the circumstances of the case to put forward a different limited specification. It would not be fair to require a party seeking a declaration of invalidity to set out with precision the specification to which the trade mark should be restricted without sufficient knowledge of the applicant’s intention.
• In the context of infringement, the court agreed with the CoA and reaffirmed the principle that, in considering a specification of goods or services defined by terms which are not clear or precise, the correct approach is to confine the terms used to the substance or core of their possible meanings. Comprising cloud migration within the meaning of “electronic mail services” was therefore an impermissible extension of the core meaning of the expression to an unclear and indeterminate range of services connected to electronic mail in an unspecified way.

Anna Edwards-Stuart KC appeared on behalf of the Comptroller-General of Patents, Designs and Trade Marks as an intervener.

[2024] UKSC 36

This was a copyright subsistence and infringement dispute relating to a series of developments of a water resistance rowing machine each of which were alleged to be works of artistic craftsmanship within s.4(1)(c) CDPA.  The Defendant asserted that no copyright subsisted in the works, and counterclaimed for a declaration to that effect.

The case was heard in the IPEC by Mr Campbell Forsyth (sitting as a Deputy High Court Judge) in July 2023. Judgment was handed down in November 2024.

The judgment addresses the law on “works of artistic craftsmanship” under the CDPA, at European and International level. The Deputy Judge concluded that the UK court does not have a discretion to ignore relevant pre-Brexit CJEU cases relating to the treatment of applied art.  He also recognised that there was  a potential conflict between UK and CJEU authorities on the scope of works covered by those regimes, and tried to interpret the House of Lords decision in Hensher v Restawhile. The Deputy Judge concluded that under the CJEU line of authorities, the works were protectable as copyright works, but that they were not works of artistic craftsmanship under s. 4(1)(c) CDPA.  The Deputy Judge also concluded that it was not possible to apply Marleasing to interpret the CDPA in accordance with the CJEU authorities, and proposed the following approach to assessing whether copyright subsists under s.4(1)(c) CDPA. Firstly, one needs to consider whether the relevant work is original within the meaning of the InfoSoc Directive. Secondly, if the work is original, one applies the terms of s.4(1)(c) interpreted in accordance with Hensher v Restawhile.  The court focused on the judgment of Lord Kilbrandon, in the latter case, who proposed a requirement for the craftsman to have the desire “to produce something of beauty which would have an artistic justification for its own existence”.

The counterclaim was dismissed because the Defendant’s evidence did not demonstrate that a declaration would serve any useful purpose.

Jacqueline Reid appeared for the Claimant, instructed by Moore Commercial Law Limited.

[2024] EWHC 2806 (IPEC)

Nataluzimab is an effective antibody treatment for multiple sclerosis. A rare, but potentially devastating side effect of treatment, is development of progressive multifocal leukoencephalopothy (“PML”). PML is caused by the John Cunningham Virus (“JCV”), a virus that is widespread in the general population and generally benign. However, in patients with compromised immune systems, JCV can reactivate leading to development of PML.

Biogen, the original developer of nataluzimab, patented a method for assessing the risk of PML. The method comprised using an assay to determine the anti-JCV antibody titer in a blood or serum sample taken from a patient, wherein the result was expressed as an index value, and determining the patient to be at high risk of PML where the index value was greater than 1.5. Biogen provided it assay free of charge to clinicians.

Sandoz developed a biosimilar version of nataluzimab and wanted to offer its own assay for assessing risk of PML upon launch of its biosimilar. It therefore sought to revoke Biogen’s patent. Its invalidity attacks included classical insufficiency, namely that the skilled team could not produce an assay in which an index value of 1.5 represented the same anti-JCV antibody titer as it did in the assay disclosed in the patent, and obviousness. Faced with further divisional applications, Sandoz also sought an Arrow-type declaration that the PCT did not disclose an assay clearly and completely enough for the skilled person to use to determine PML risk in line with the PCT’s teaching. Biogen counterclaimed for threatened infringement.

Mellor J found the patent invalid for insufficiency but dismissed the claim for declaratory relief. He found that the Sandoz assay would have fallen within the claim under the doctrine of equivalents but that there was no infringement as Sandoz was not going to use the method in the UK.

The case is of interest for the discussion of insufficiency, declaratory relief and territorial aspects of infringement.

Kathryn Pickard was instructed for Sandoz and Tom Alkin for Biogen.

[2024] EWHC 2567 (Pat)

CureVac, a German developer of mRNA vaccines, asserted that BionTech/Pfizer’s Comirnaty COVID-19 vaccine infringed 2014 patents directed to a ‘split poly(A) tail’ i.e. a 3’ sequence of repeated adenosines split by a linker.   CureVac argued that the patents plausibly disclosed improved protein expression resulting from the split poly(A) tail across the scope of the claims.  BioNTech/Pfizer sought revocation of the patents on the grounds that they did not plausibly disclose this effect and it could not be obtained in fact, and on the further grounds that they lacked inventive step over an earlier CureVac patent (Thess) and added matter.  Meade J heard the trial between 10 and 24 July 2024. He found that the patents did not plausibly disclose the claimed effect, this could not be obtained in fact and that the patents were also invalid for obviousness over Thess.

Piers Acland KC and Adam Gamsa appeared for CureVac, instructed by Bird & Bird LLP.  Tom Alkin appeared for BioNTech, instructed by Powell Gilbert LLP.

[2024] EWHC 2538 (Pat)

This case concerned the validity of the first defendant’s patent and SPC which claim the compound enzalutamide (identified as RD162’) and its therapeutic use.  This compound is marketed by Astellas under the brand name “Xtandi” for treating both hormone sensitive prostate cancer (“HSPC”) and hormone refractory prostate cancer (“HRPC”).  The claimants challenged the validity of the patent on the basis of obviousness over two pieces of prior art, a Poster and Slides, both of which disclosed a molecule identified as RD 162.  The only difference between RD162 and RD 162’ lay in the substituents at the bottom right of the central thiohydantoin ring, i.e. a cyclobutyl group and a geminal dimethyl respectively.  The claimants also deployed a squeeze argument between obviousness and insufficiency based on implausibility for lack of technical contribution.

The judgment handed down by Mr Justice Mellor includes a detailed consideration of the application of primary expert evidence and the avoidance of hindsight and highlights the potential weakness of obviousness and plausibility arguments not developed in the evidence in chief.  The judgment also includes the following points of interest:

• a recognition of the fact that the proposition that a seemingly small structural change is tantamount to an obviously immaterial one is not generally appropriate or applicable in medicinal chemistry;
• a useful summary of some of the main principles around obviousness, including a discussion of the differences between “immediately obvious” (obvious to develop) and “obvious to do a SAR” (obvious to do routine tests) arguments;
• an analysis of the role of motivation, and a reaffirmation of the principle that the skilled person of patent law makes compounds with some specific technical purpose in mind;
• an investigation into the extent to which competitive and patenting considerations should influence an obviousness analysis, based on what real-life teams would do. In particular, the Judge held that the normal expectation of the Skilled Team would be that the widest possible patent protection would be in the process of being sought and that would normally indicate that the development of a novel and protectable molecule starting from the prior art would require significant changes;
• a synopsis of the legal propositions relating to plausibility as derived from the CoA in Apixaban [2023] EWCA Civ 472; and
• an endorsement of the EPO case-law emphasising the absence of a requirement for an invention to be better than the prior art (in addition to it simply being new and non-obvious).

Anna Edwards-Stuart KC appeared for Accord and Sandoz, instructed by Pinsent Masons LLP.

[2024] EWHC 2524 (Pat)

This was an appeal in a trade mark and passing off dispute in which TVIS had alleged infringement and misrepresentation of its VETSURE trade mark by Howserv’s PETSURE trade mark, used for identical services.  At first instance the claim had been dismissed. The Court of Appeal held the judge had erred in his approach to the conceptual comparison of the marks and to distinctive character.  It also criticised the judge’s approach to the evidence on confusion; holding that it should not have been dismissed as showing mere “administrative errors” and that a number of instances relied on by TVIS did in fact show relevant confusion.  The Court of Appeal therefore re-evaluated the likelihood of confusion.  Having done so, it held that there was trade mark infringement and passing off and that Howserv’s own trade mark registration was invalid.  Benet Brandreth KC acted for the successful appellant, TVIS, on appeal and Chris Aikens for Howserv at first instance and on appeal.

[2024] EWCA Civ 1103

The parties were engaged in negotiations for a cross-licence in respect of each other’s standard essential patents. Both parties had referred the question of FRAND terms to a court – the appellants to the Patents Court and the respondent to the Eastern District Court of North Carolina. Trial of the Patents Court FRAND proceedings had been fixed for 2025. The respondent obtained multiple preliminary injunctions against the appellants in Brazil and Colombia, as well as seeking exclusion orders in the US ITC, in an attempt to coerce the appellants into taking a licence on its terms before the court determination.

The appellants sought an interim injunction against the respondent in this jurisdiction as a way of levelling the playing field between them. Said injunction was refused at first instance and again on appeal.

The decision is notable for its discussion of the application of the American Cyanamid principles in this novel situation, the FRAND process and the indication that there may be a role for the Court to play in regulating the position in the period between commencement of FRAND proceedings and the court’s determination.

Kathryn Pickard was instructed by the appellants.

[2024] EWCA Civ 1100

easyGroup has lost its latest claim for trade mark infringement and passing off, following a trial before Fancourt J.  The principal defendant in this case was Easyfundraising, who operates an online platform for fundraising by retail.  Members of the public, or supporters, go to the Easyfundraising platform and click through to various retailers’ websites.  If they then buy goods and services from the retailer, a small part of their spend is remitted by the retailer to Easyfundraising, who passes on some of that sum to charities or other good causes nominated by the supporter.  easyGroup claimed that the use of the name Easyfundraising in relation to this platform infringed a number of its trade marks, including easyJet, easyHotel and easylife.  Its case was that the average consumer would perceive Easyfundraising as a member of its “easy” family of brands.

Each of the infringement claims was dismissed.  There was no likelihood of confusion because the common “easy” element was not by itself sufficient for the average consumer to make the connection.  The use by Easyfundraising of different get-up to easyGroup’s distinctive white on orange meant confusion was unlikely.  The claims under s. 10(3) of the Trade Marks Act 1994 were dismissed because no detriment had been caused to, and no unfair advantage taken of, the distinctive character or repute of easyGroup’s marks.

Easyfundraising’s counterclaim for revocation of easyGroup’s marks was largely successful.  Notably, the easylife device mark was revoked for lack of genuine use.  easyGroup relied on use of variants of the mark as registered.  In holding that the variants did alter the distinctive character of the mark, and therefore could not be relied on, Fancourt J came to the opposite conclusion on the same issue to Nicholas Caddick KC in Easy Live Auction No 2.

Chris Aikens appeared as junior counsel for Easyfundraising.

[2024] EWHC 2323 (Ch)

This was the trial of the second claim for trade mark infringement brought by easyGroup against the Defendants, who have 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.  In the first action, Sir Anthony Mann dismissed the infringement claim against the Easy Live Auction logos used by the Defendants since before the issue of the claim form.  The Judge did, however, hold that the Defendants had infringed the Claimant’s EASYJET trade mark under s. 10(3) of the Trade Marks Act 1994 (TMA) by using three logos up to 2019.

In this second claim, easyGroup claimed that the Defendants had infringed two different trade marks including the word ‘easylife’ under s. 10(2) TMA.  easyGroup had acquired both registrations as part of a settlement of separate litigation in 2022.  Following a trial of the second Easy Live Auction claim in the Shorter Trials Scheme, Nicholas Caddick KC (sitting as a Deputy High Court Judge) dismissed the Claimant’s claim for infringement.  In doing so, the Judge held that the average consumer would not assume that a party trading, even trading in relation to identical or similar services, using another sign that featured the word “easy” was easyGroup or associated in some way with easyGroup and/or its trade marks. The average consumer would not assume that the Claimant had a monopoly of the use of the word “easy”.

The Judge also dismissed the Defendants’ counterclaim for revocation of one of easyGroup’s ‘easylife’ marks alleged to have been infringed.  In doing so, he held that (1) use of variants of the mark amounted to use of the mark as registered under s. 46(2) TMA and (2) use of some of those variants in relation to a service placing advertising inserts into Easylife retail catalogues amounted to use of the mark in relation to the general categories of ‘advertising services’ and ‘promotion services’.

Chris Aikens appeared as sole counsel for the Defendants.

[2024] EWHC 2282 (Ch)

R2 is the proprietor of European Patent (UK) No. 3 376 653 (the “Patent”), which concerns over voltage spike protection of a switching converter.  R2 alleges that Intel infringe the Patent by marketing chips, processors and other microelectronic devices containing certain fully integrated voltage regulators, “FIVRs”.  Intel counterclaimed for revocation of the Patent on the grounds of lack of novelty and obviousness over a paper entitled “3D Power Delivery for Microprocessors and High-Performance ASICs” authored by Jian Sun and others (“Sun”).  Sun was presented at a conference in Anaheim, California in 2007.  Intel also alleged added matter and insufficiency.

Hacon HHJ heard the trial between 16 and 30 April 2024. The Judge decided that the Patent is invalid for obviousness over Sun.  Had the Patent not been invalid, it would have been infringed as alleged.

Brian Nicholson KC and Adam Gamsa appeared for the Claimant, instructed by Herbert Smith Freehills LLP.  Anna Edwards-Stuart KC appeared for the Defendants, instructed by Kirkland & Ellis International LLP.

[2024] EWHC 1974 (Pat)

This was a patent revocation claim concerning a method of treating ulcerative colitis using an anti-IL12/IL23 antibody to achieve corticosteroid free clinical remission. The patent disclosed that the antibody in question (ustekinumab) was an effective maintenance treatment.

Janssen, the patentee, had developed a blockbuster antibody product called Stelara® which was an anti-IL12/IL23 antibody and which was authorised for the treatment of ulcerative colitis. Samsung wished to market its own biosimilar.

Samsung relied upon several pieces of prior art in support of its invalidity attack. It succeeded on one – the Sands Slides – a presentation of initial induction results obtained during Phase III clinical trials.

The case is notable because of the discussion of the correct approach to claim construction in light of Sycurio v PCI-PAL [2024] EWCA Civ 606 and the need for a claimed therapeutic effect to be a “real one” i.e. effective to treat a statistically significant proportion of patients compared to placebo.

Kathryn Pickard was instructed on behalf of Janssen, with Seaghan Davey assisting as a secondee at the instructing solicitors.

[2024] EWHC 1984 (Pat)

The claimants are the proprietors of the Beverly Hills Polo Club trade mark and licensing franchise.  Their mark includes the name of the club and a picture of a mounted polo player. They sued the defendants for infringement of trade mark and passing off by the use of their club logo which includes the name of the club and a picture of a mounted polo player.  The primary use of the marks is on leisure clothing.  There are other polo-themed clothing brands, including the well-known Polo by Ralph Lauren, which also use a picture of a mounted polo player as part of their branding.

The primary subject matter of the appeal was whether the trial judge (Mellor J [2023] EWHC 1839 (Ch)) was correct to take into account the presence of such marks used on the third party products in the market in considering the distinctiveness of the claimants’ mark and accordingly its scope of protection against other similar marks.  The secondary subject of the appeal was whether he was correct to take into account a number of co-existence agreements between various traders in the market.

The Court of Appeal dismissed the appeal and refused the claimants permission to appeal to the Supreme Court.  They held that the trial judge was right on all counts.  The Court said that, if marks with enhanced distinctiveness have a greater scope of protection, then it is axiomatic that the opposite also applies.  It follows that if the public is accustomed to distinguishing between marks with common elements which are widely used in the trade, then those elements make relatively little contribution to the mark’s distinctiveness.  It was common ground that the parties’ names are distinctly different and the judge was accordingly correct to find that there was no likelihood of confusion.

The Court also confirmed the trial judge’s conclusion that co-existence agreements provide a guide to what experienced traders in the market consider is likely to be sufficient to avoid confusion and should be taken into account in evaluating the likelihood of confusion.

This is a significant decision as it establishes clearly in appellate domestic jurisprudence that elements of a mark which are commonly used by traders in a particular field should be given little weight when evaluating the likelihood of confusion whether or not those elements allude to the properties of the goods to which they are applied and that the differences between such marks must be considered as well as the similarities when carrying out the assessment.

Michael Silverleaf KC instructed by Maitland Walker appeared for the successful defendants.

[2024] EWCA Civ 814

Brian Nicholson KC and Anna Edwards-Stuart KC represented the Comptroller General of Patents, Designs and Trade Marks (“the Comptroller”) before the Court of Appeal in this important decision concerning the patentability of artificial neural networks (“ANNs”) having regard to the exclusions under s.1(2) of the Patent Act 1977 (as amended) (“the Act”).

Overturning the decision of Sir Anthony Mann (on appeal from the UKIPO), the Court of Appeal (Nicola Davies, Arnold and Birss LJJ) accepted the Comptroller’s submissions, holding that ANN-implemented inventions involve a computer programs (whether implemented in dedicated hardware or by software simulation) and, as such, engage consideration of the ‘computer program…as such’ exclusions under s.1(2) of the Act.  The Court went on to agree with the Comptroller as to the consequences, pointing out that it does not mean that ANN-implemented inventions are unpatentable. As Birss LJ explained: just as many computer implemented inventions are outside of the exclusion and are patentable as a result, the fact that the exclusion is engaged “simply means that ANN implemented inventions are in no better and no worse position than other computer implemented inventions”.

In the second part of the appeal, applying s.1(2) of the Act to Emotional Perception AI (“EPAI”)’s patent application, the Court again agreed with the Comptroller, overturning Sir Anthony Mann and restoring the decision of the Hearing Officer that EPAI’s patent application is excluded from patentability.

The Court of Appeal refused EPAI’s application for permission to appeal to the UK Supreme Court (“UKSC”).  EPAI is entitled to petition the UKSC to grant permission to appeal.

Brian Nicholson KC and Anna Edwards-Stuart KC represented the Comptroller General of Patents, Designs and Trade Marks, instructed by Government Legal Department.

[2024] EWCA Civ 825

This was the denouement of multi-party / multi-action litigation concerning the claim by Dr Craig Wright to be Satoshi Nakamoto, the pseudonymous inventor of Bitcoin.

The case is notable for its discussion of the modern approach to injunctions, the principles applicable to the grant of injunctive relief in intellectual property matters, dissemination orders and costs.

Kathryn Pickard was instructed on behalf of Coinbase.

[2024] EWHC 1809 (Ch)

In this important decision as to the scope of the Patent Court’s Jurisdiction to hear implementor-brought FRAND determinations in respect of platform/pool licensing of Standards Essential Patents, Brian Nicholson KC and Kathryn Pickard represented Avanci in its successful Part 11 Application (before Fancourt J) to set-aside permission to serve out granted to Tesla on its ex parte application (before Mellor J).

Avanci is a platform operator offering 5G licences to the automotive industry on behalf of some 65+ 5G SEP holders.  Tesla’s claim against Avanci was to have the Courts of England and Wales determine the FRANDness of Avanti’s 5G platform licence and, if necessary, set FRAND rates.  Tesla contended that it could come within the principles set out by the Court of Appeal in Vestel Electronic Sanayi Vi Ticarat AS v. Access Advance LLC [2021] EWCA Civ 440.  Fancourt J found otherwise, and set-aside permission to serve out against Avanci, holding that Tesla had not met the requirements set out in Vestel and there was no serious issued to be tried against Avanci.  In any event, FancourtJ found that England and Wales was not clearly and distinctly the most appropriate forum for a dispute between Delaware entities concerning a licence subject to New York law, where there was no real suggestion that Tesla would not receive justice in the United States.

Tesla also sought to advance substantially the same claim against SEP-holding companies in the InterDigital group in their own right, and as representative defendants (pursuant to CPR rule 19.8) of all other 5G SEP-holders who have patents on the Avanci platform.  Permission to serve out was also set-aside on the FRAND determination, (leaving only patent invalidity and non-essentiality claims extant, albeit that Tesla had indicated that it was not presently desirous to pursue those claims absent the FRAND determination).

Tesla may appeal to the Court of Appeal.

Brian Nicholson KC and Kathryn Pickard acted for Avanci, jointly instructed by Osborne Clarke and EIP

[2024] EWHC 1815 (Ch)

This trial concerned two patents owned by Moderna, EP949 and EP565.  Both patents were asserted against Pfizer/BioNTech’s SARS-CoV-2 vaccines.  This trial focused on the issue of revocation of the two patents – infringement was not disputed.

EP949 claims mRNA in which one of the usual nucleosides (uridine) is replaced with N1-methyl-pseudouridine (“m¹Ψ”).  The prior art concerned a patent application and an academic article.  EP565 relates to a betacoronavirus mRNA vaccine formulated in a lipid nanoparticle, and the use of such an mRNA vaccine in a method of preventing and/or treating betacoronavirus disease.  The Judgment focused on the “functional features” of claims 1 and 10 of EP565, which required that the formulated mRNA is a “vaccine”, meaning that it is able to generate an antigen-specific immune response.

The trial was heard by Meade J.  The Judge upheld the validity of EP949 and revoked EP565 on the basis that it is obvious over the prior art and invalid for added matter.

The Judgment contains a useful consideration of various legal principles on the topics of the skilled team, added matter, novelty and obviousness and the test for individualised disclosure and selection from lists.  The following findings are of particular interest:

• The Judge expressed his obiter view that the EPO’s alternative test of “serious contemplation” for added matter should in principle render the same results as the “golden standard” test, but is best avoided.
• The Court confirmed that it is not legitimate to say that there is a relevant pointer to one disclosure on a list merely because the CGK says that particular choice is desirable.
• Whilst the Judge accepted the proposition in T1581/12 that a full length sequence implicitly discloses all fragments, this does not mean that disclosure of use of a modified nucleotide necessarily involves disclosure of all percentage requirements of the nucleotide.
• There is no precise numerical limit to prior art lists – each case turns on its facts. Meade J found that the presence of m¹Ψ in the middle of a 96-item list without any (sufficiently strong) pointers to individualise it did not amount to sufficient disclosure.
• The Court emphasised the need for the skilled team to have had a practical interest in the application of the invention, and warned against assessing the mindset at the priority date in 2015 in relation to SARS-Cov with hindsight following the 2020 pandemic.
• The Judge rejected points that only amounted to criticism of EP565 for not meeting the highest standards of experimental science, which is not required of a patent specification.
• Paragraphs [677]-[682] list several errors that can affect an added matter analysis.

The Judgment also contains useful practical indications on:

• how best to conduct a hearing on two separate patents in the same trial, placing particular emphasis on the cooperation between the parties’ legal teams and the Court; and
• the benefits of allowing multiple experts who represent the notional skilled team to interact with each other or, at the very least, to read each other’s reports.

Lastly, the Judgment contains an interesting assessment of the different evidence and arguments which led to different outcomes having been reached in the Patents Court and in the Court of Hague.

Piers Acland KC appeared for Moderna on EP949, instructed by Freshfields Bruckhaus Deringer LLP.

[2024] EWHC 1695 (Pat)

This patent case is part of the global litigation between the Abbott and Dexcom groups of companies relating to their continuous glucose monitoring devices.  This trial (referred to in the UK litigation as ‘Trial B’) concerned the alleged infringement of Abbott’s patent EP 3,730,044 by Dexcom’s ‘G7’ CGM device.  The patent was held invalid and not infringed.

Iain Purvis KC and Christopher Hall acted for Dexcom.

[2024] EWHC 1664 (Pat)

This patent infringement dispute concerns refuelling couplings for AJAX tanks.  On this application for strike out / summary dismissal, the Patents Court considered the ‘knowledge’ requirement of indirect infringement in s60(2) Patents Act 1977.

In Grimme Maschinenfabrik v Scott [2011] FSR 7, the Court of Appeal held that s60(2) requires that at the time of supply of the means essential, the supplier must know (or it must be obvious to a reasonable person in the circumstances) that “some ultimate users will intend to use or adapt the means so as to infringe”.  Here, the Patents Court considered the application of this test where there was only one ultimate user – the Ministry of Defence – holding that in such circumstances the patentee must show that that ultimate user “has or will form the requisite intention” [22].

Bacon J found that the pleaded facts did not satisfy the s60(2) test ([41]-[44]), and that there was no evidential material on which the patentee could rely to establish a sufficiently arguable case [54].

Christopher Hall acted as sole counsel for the Second Defendant.

[2024] EWHC 1691 (Ch)

In a recent High Court judgment, Mr. Justice Zacaroli ruled in favor of Praesidiad Holding BVBA (formerly Betafence) and Guardiar Europe BVBA, represented by Benet Brandreth KC, striking out Zaun Limited’s counterclaim challenging the validity of Betafence’s Registered Community Design (RCD) and its UK Re-registered Design. Praesidiad successfully argued that Article 86(5) of the Community Designs Regulation, which precludes re-litigation of a matter already decided by the EUIPO, still applies post-Brexit. The court affirmed that the EUIPO’s final decision on the RCD’s validity, upheld by principles of res judicata, prevents Zaun from re-litigating the issue in the UK.

Benet Brandreth KC acted for the Claimants, instructed by Bird & Bird LLP

[2024] EWHC 1549 (Pat)

The Claimant appealed the decision of Bacon J against the finding that its patent was invalid for obviousness over the prior art and, in any event, would not have been infringed on a normal construction or under the doctrine of equivalents. The question of construction arose in part from the issue of conformance of the description with the claims, and in particular whether the skilled reader would understand certain embodiments in the specification to be outside the scope of the claims as granted.

In upholding the Judge’s decision on construction the Court of Appeal, Lord Justice Arnold giving the leading judgment, dismissed the appeal on ground 1 (the invalidity appeal) and held that it was therefore not necessary to determine the remainder of the appeal. The Court of Appeal’s judgment gives detailed consideration to the structure of the specification and the language used to describe the options and embodiments disclosed therein.

Michael Silverleaf KC and Kyra Nezami acted for the Appellants, instructed by Michelmores LLP. Edward Cronan acted for the Respondents, instructed by Shepherd & Wedderburn LLP.

[2024] EWCA Civ 606

Bayer owns European Patent (UK) No. 1 845 961 (the “Patent”), which concerns once daily dosing of rivaroxaban (a blockbuster blood-thinning drug). At first instance, Hacon HHJ had found the Patent obvious 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.

Bayer appealed the Judge’s decision on obviousness. The appeal was heard and dismissed by Davies, Arnold and Falks LLJ on 16 May 2024.

Adam Gamsa appeared as junior counsel for the Respondents, instructed by Pinsent Masons, Bristows, HGF Law and Taylor Wessing. Iain Purvis KC appeared for the Appellants, instructed by A&O Shearman.

[2024] EWCA Civ 562

This appeal saw Supponor seeking to overturn a judgment of Meade J which found AIM Sport’s patent EP (UK) 3 295 663 B1 to be valid and infringed by Supponor’s virtual overlay advertising technology. Supponor appealed on construction, obviousness, infringement, and on a procedural point which they referred to as the Promptu point.

The Court of Appeal held that Meade J had erred in his construction of the claim, holding that it was sufficiently broad to include a prior art reference called Nevatie. However, prior to trial conditional amendments had been proposed which the Judge had considered would have the effect of narrowing the claim to exclude Nevatie in the event he was wrong on construction. The Court of Appeal upheld Meade J on the construction of the claim amendment, and therefore permitted AIM Sport to amend the claim. The claim as amended was considered to be both valid and infringed.

The Court of Appeal gave specific consideration to the Promptu point, rejecting Supponor’s contention that AIM Sport’s procedural concession before trial regarding the validity of other independent claims of the patent had an impact on AIM Sport’s ability to contend that the remaining claim was valid. Nonetheless, the Court of Appeal gives cautionary advice about the need for careful framing of procedural concessions so as to avoid issues later in proceedings.

Brian Nicholson KC, and David Ivison instructed by Ignition Law appeared for the appellant, Supponor Limited

Edward Cronan instructed by Powell Gilbert appeared for the respondent, AIM Sport

[2024] EWCA Civ 396

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)

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.

[2024] EWHC 820 (Ch)

Aylo applied for expedition to avoid the “injunction gap” in parallel German proceedings.  Meade J reviewed the authorities and found that Aylo passed the hurdle of some objective need for urgency (insofar as that was a threshold test) because there was a real risk of an adverse effect on its UK business as a result of injunctions in Germany.  However, expedition was declined.  Meade J placed particular weight on the potentially severe impact on other court users, and the organisation of the Patents Court list.

Kyra Nezami appeared for DISH, and Iain Purvis KC appeared for Aylo.

[2024] EWHC 1310 (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.

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

[2024] EWCA Civ 276

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.

[2024] EWCA Civ 262

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 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:

1. 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.
2. 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.
3. 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.

[2023] EWCA Civ 1508

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.

[2023] EWCA Civ 1502

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.

[2023] EWCA Civ 1247

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.

[2023] EWHC 2361 (Pat)

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.

[2023] EWHC 2589 (Ch)

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.

[2023] EWHC 2571 (Pat)

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.

[2023] EWHC 1839 Ch

Court of Appeal decision on the publication of the Defendant’s confidential information and trade secrets in a judgment.  The Court held that:

1. 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
2. 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.

[2023] EWCA Civ 840

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.

[2023] EWHC 1535 (Pat)

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.

[2023] EWCA Civ 472

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.

[2023] EWCA Civ 438

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.

[2023] EWHC 873 (Ch)

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

[2023] EWHC 2616 (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.

[2023] EWHC 854 (Pat)

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.

[2023] EWCA Civ 105

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.

[2023] EWCA Civ 73

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.

[2023] EWCA Civ 11

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.

[2022] EWHC 3200 (Pat)

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

[2022] EWHC 3327 (Ch)

[2023] EWHC 240 (Ch) (Costs)

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.

[2022] EWCA Civ 1665

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

[2022] EWCA Civ 1638

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.

[2022] EWHC 2158 (Ch)

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.

[2022] EWHC 2034 (Pat)

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.

[2022] EWHC 1831 (Pat)

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

 [2022] EWHC 1856 (Ch)

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

[2022] EWHC 1724 (Pat)

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

[2022] EWHC 1642 (Pat)

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

[2022] EWCA Civ 699

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

[2022] EWHC 1244 (Ch)

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.

[2022] EWHC 1412 (Ch)

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.

[2022] EWCA Civ 594

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.

[2022] EWHC 959 (Ch)

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.

[2022] EWHC 769 (Pat)

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.

[2022] EWHC 708 (Ch)

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

[2022] EWHC 640 (Ch)

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.

[2022] EWHC 319 (IPEC)

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:

1. i) Whether Mylan was issue estopped from challenging the validity of the Divisional in the light of the 2020 action.
2. 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

[2022] EWHC 109 (Pat)

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.

[2022] EWCA Civ 20