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IP Snapshot – April & May by Tom Carver

Every case is interesting to someone and no case is interesting to everyone, and so we provide snapshots of each intellectual property decision reported by bailii.org (British and Irish Legal Information Institute) from the Patents Court (which deals with all registered rights), the Intellectual Property Enterprise Court (for smaller or simpler claims), and the appeal courts, and a contents table so that you can see quickly whether there is anything interesting to you.

Lifestyle Equities CV & Anor v Ahmed & Anor

The Supreme Court allowed the appeal in this case, explaining that the mental element required for accessory liability or common design does not correspond to that required to commit the primary wrong.

The directors of the Defendant company, which was held to have committed acts which amounted to infringement, were not found to have the knowledge required to make them jointly liable for the infringement. The directors were found not to have deliberately intended to take advantage of the distinctive character of the marks in suit, nor known that the reputation of the marks would be adversely affected, nor that this was without due cause.

The Court explained that it may be obvious in a simple case in which a company offers for sale counterfeit goods that a director who arranged for the manufacture and sale of the goods must have known the facts which made the company’s acts infringements. Even so, there are other cases, such as this, in which the directors procured acts to be done by the company which amounted to infringements whereby the directors did not have the knowledge required to make them jointly liable for the infringements either on the principle of accessory liability (where a person knowingly procures another person to commit an actionable wrong and is jointly liable for the tort committed by the primary wrongdoer) or common design (where there is concerted action towards a common end).

On the basis that the Defendant directors did not infringe the trade marks, only induced the Defendant company to do so, the Court held that they should not be liable for an account of profits.

Even if the directors had been personally liable then they would have been liable to account only for profits they personally made from the infringements, and there was no allegation, evidence or finding that their salaries were anything but ordinary remuneration for their services. The position of an employee selling labour was distinguished from that of a sole trader selling goods.

Supponor Ltd & Anor v AIM Sport Development AG

The Court of Appeal reiterated that limitations which are not present in the claim language are not to be read in by reference to examples which appear in the specification. Patents are construed through the eyes of the person skilled in the art, imbued with the common general knowledge. If matter is not set out in the patent and is not part of the common general knowledge, then it is not relevant to construction.

There was a dispute over whether the patentee had made an admission, resolved in the patentee’s favour but with the comment that “this case is also an object lesson in making sure that the precise basis and extent of a concession is made clear”.

Lastly, the parties received something of a slap on the wrist for attempting, on the Claimant’s part, “fairly transparent attempts to adjust the wording of the draft judgment for its own purposes” when it had been sent the draft embargoed judgment to review for typos, with a reminder that “Circulation of the draft is not intended to provide counsel with an opportunity to re-argue the issues in the case.”

Sandoz AG & Ors v Bayer Intellectual Property GmbH & Ors

This is the decision in the appeal against the decision between the same parties in the High Court in this edition. The judge was found to have made no error of principle in his assessment of obviousness and the appeal was dismissed.

It is part of the same litigation as previously reported in which the Claimant was compelled to seek a 9-10 day interim injunction, and the Court of Appeal is clear in this judgment that the “flurry of applications” was not a sensible use of resources and should have been avoided by parties bringing proceedings earlier and keeping the Court properly and timeously informed.

Advanced Cell Diagnostics, Inc v Molecular Instruments, Inc

The patent was found to be novel but obvious over a combination of two prior art documents.  The case based on anticipation over the two prior art documents required too much inference and filling in of blanks, with the cross-reference said to be too general. That same cross-reference was held to be good enough for the test for mosaicking in the context of obviousness.

The combination provided all the integers of the claim to the skilled person, leaving only the question of whether the skilled person thought there was a reasonable expectation of success. The judge rejected an argument that there was a mindset against the claimed invention, rejected the secondary evidence about how a named third party had not come up with the invention despite the prior art being available to it, and found that the prospects of success would have been assessed by the skilled person as good.

Sandoz AG & Ors v Bayer Intellectual Property GmbH

The dosage regime claimed in the patent in suit was found to be obvious to try in a phase II trial, based on pharmacokinetic data set out in the prior art, and the patent therefore found to be invalid.

The judgment is a strong advertisement for the benefits of the common law.  The Brussels Enterprise Court, a civil law court, found the patent valid, relying to some degree on the unexamined evidence relating to the invention story given by a Dr Misselwitz. Dr Misselwitz’s evidence in proceedings in South Africa had been labelled “disingenuous” by the judge there, apparently because the inventorship story he told in the litigation was inconsistent with comments he had made “candidly and unguardedly” in an article he had published in 2016, presumably before litigation was in view.  He did not give evidence in the English proceedings, perhaps to avoid being confronted again with the 2016 comments.

Lenovo Group Ltd & Ors v Inter Digital Technology Corporation & Ors (ReApplications)

The judge refused an application by the Defendants to set aside the Order for service out of the jurisdiction and granted permission to the Claimants to amend their Particulars of Claim.  He also ordered both parties to provide suitably redacted copies of the skeleton arguments and supporting evidence to an interested firm of patent attorneys.

The application to set aside was based on the contention that there was no serious issue to be tried.  The judge explained that this question should be approached in the same way as the test for summary judgment, by asking whether there is a real, as opposed to a fanciful, prospect of the claim succeeding adopting the test set out in [Kawasaki] and supplemented in [Tesco], and noting that the merits test should focus on the claims as pleaded, but that “the focus should be on the fair meaning of the pleading as a whole and considered realistically”. One defect should not crash the whole system.

The Defendant also argued that the order obtained ex parte for permission to serve out of the jurisdiction should be set aside on the basis that the Claimant failed to give full and frank disclosure of various breaches of confidentiality and that the claim was “novel and debatable”, but this failed on the facts.

Well Lead Medical Co Ltd v CJ Medical Ltd

The judge, applying the American Cyanamid principles, refused to grant the Claimant an interim injunction because she found that damages would be an adequate remedy for the Claimant. In particular, she found that the Claimant had submitted insufficient evidence as to the likelihood of any third party suppliers entering the market and therefore any ensuing price war and price depression.

The Claimant also attempted, unsuccessfully, to rely on an argument that loss of market exclusivity would damage its ability to educate the market, and another that granting the interim injunction would remove the Defendant’s motive for making derogatory statements about the Claimant’s product.