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IP Snapshot – April by Tom Carver

Astrazeneca AB & Anor v Glenmark Pharmaceuticals Europe Ltd

Parties are generally not permitted to adduce new evidence on appeal, but the patentee’s solicitor was permitted, unopposed by the defendants, to give a further witness statement updating the Court on communications between the patentee and non-party generic companies as to their intentions regarding the product the subject of the interim injunction application.

Those communications showed that at least two other generic companies intended to enter the market if no injunction is granted against the defendant. This meant that it was inevitable that there will quickly be price competition between the three or more generic entrants leading to a downward price spiral, changing the Court’s mind as to whether damages would be an adequate remedy for the claimant and changing the balance of the risk of injustice.  The Court of Appeal granted the interim injunction.

Nador Cott Protection SAS v Asda Stores Ltd & Anor

The defendants applied for a stay of these proceedings for infringement of a UK Plant Breeders’ Right on the basis that there is a pending application for a declaration that the right is null and void before the UK Plant Varieties Office, and drawing an analogy between the principles applied in the Patents Court when there are pending oppositions at the EPO.

The judge distinguished the Patents Court/EPO situation, noting that the High Court has no parallel jurisdiction for validity of the Plant Breeders’ Right and that it is not possible to amend a Plant Breeders Right (it is either valid or not).

The stay was refused, in order to enable the earliest resolution of the dispute.

Ahmad v Comptroller-General of Patents, Designs and Trade Marks

The claim for “losses due to the unjustified refusal to grant a patent, including losses due to patent infringement by car companies” was struck out as disclosing no reasonable grounds for bringing the claim, with the judge noting that he would have granted summary judgment had he not struck the claim out.

He noted the distinction between the test for strike out and summary judgment, taken from the judgment in Jukic v BBC [2025] EWHC 221 (Ch):

“98. However, there are distinctions between the two tests, as was pointed out by Master Marsh (sitting in retirement) in MF TEL SARL v Visa Europe Limited [2023]1336 (Ch) he pointed out at [34(3)] that:

“The test for striking out as it has been interpreted leaves no scope for the statement of case showing a claim that has some prospect of success. The claim must be unwinnable or bound to fail. Under CPR rule 24.2 it is not good enough for a point to be merely arguable, it must have a real prospect of success. An application to strike out might fail whereas the same application for summary judgment might succeed.”

99. A further difference (noted at [10(1)] in the same judgment) is that for the purposes of the application under CPR rule 3.4(2)(a) the court will usually proceed on the basis that the pleaded facts are true, whereas evidence, and in particular, witness statements, may have a greater bearing on an application under CPR rule 24.2 as on such applications the court may be required to exercise a judgment about the quality of the evidence.

100. The evidential burden is on the applicant to establish that there are grounds to believe that the respondent has no real prospect of success and that there is no other compelling reason for a trial (see para.2(3) of Practice Direction 24 and para 24.3.3 of the White Book, page 674). That standard of proof is high. If credible evidence is adduced in support of the application, then the respondent assumes an evidential burden of proving some real prospect of success or some other compelling reason for a trial.”

Generics (UK) Ltd v Astrazeneca AB

The patent did not disclose enough to make it plausible that the claimed compound will have the claimed in vivo effect or that it would be effective in treating diabetes, and was held to be invalid for lack of inventive step and/or sufficiency. The judge rejected the patentee’s characterisation of the patent’s description as a “verbal statement of an experimental result” and held that it was simply an assertion unsupported by any experimental results.

The judge reiterated the principle that “…the specification must disclose some reason for supposing that the implied assertion of efficacy in the claim is true…”, acknowledged the law that “…(at least in the absence of something which casts real doubt about the veracity of the statement…), a statement in a patent document that an experiment was done and certain results were obtained is to be taken at face value.  Further, it may be, as Illumina shows, that a statement about the experiment and the result is sufficient to make the relevant technical effect plausible, even if the results are presented in verbal form without numerical or graphical data.” and went on to explain that “…what is important is the disclosure of the document. It is important to examine the disclosure to see whether the document does in fact contain a statement that an experiment was done and certain results obtained, or whether it contains no more than a bare assertion that the compound has a particular property.  If the document does not contain a statement that an experiment was done and certain results obtained, (just as it cannot be permissible to go behind such a statement) it cannot be permissible to assume that the patentee had done an experiment and obtained data to support what would otherwise be a bare assertion…”

Lufthansa Technik AG v Astronics Advanced Electronic Systems & Anor (Re Interest)

The patentee was entitled to interest on sums awarded as an account of profits under the Court’s equitable jurisdiction and under s.35A of the Senior Courts Act 1981.

The defendants sought to have the sums awarded under the account of profits made “provisional pending the final resolution of [parallel litigation] in France and Germany” in order to avoid the risk of double recovery by the patentee.  The judge refused, noting that “The principle of finality requires that the Court must bring the proceedings to a close and give judgment on the evidence before it at trial. If the Court is required to anticipate what further evidence might come to light in the future or give parties an opportunity to reargue the case in the light of future events, it would be impossible to draw a final line under the litigation.”.  Any potential double recovery will be a matter for the French and German Courts when those proceedings are resolved.

Edwards v Boohoo.com UK Ltd & Ors  

There was no dispute on the law and the designs were held on the facts and the balance of probability either not to subsist, not be copied or the alleged infringements not to be made exactly or substantially to the designs.

On copying, the judge cited  “…the low likelihood of an old social media feed with limited followers being copied…”, the very low originality in the design and the coincidental chance of someone coming up with a similar design.  However, he did also comment that it was regrettable that the primary witness on copying for the defendants (i.e. the actual designer) did not give evidence. The Order for Directions permitted only three witnesses for the defendants, and the defendants decided to give hearsay evidence from the designer via one of the other witnesses rather than directly.  The judge evidently thought that on the key question of whether the designer in fact copied the design, it would have been useful to have evidence from the designer.