News

IP Snapshot – December 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.

AGA Rangemaster Group Ltd v UK Innovations Group Ltd

The Court of Appeal dismissed the various heads of appeal against the first instance finding of infringement (reported here) for the same reasons as given by the first instance judge, finding that the defendant’s actions did give the impression of a commercial connection with the claimant. The lead judge stated that the defendant should have made clear statements in their marketing to dispel any false impressions, and that the compound signs “eControl AGA” and “AGA eControl” should simply not be used.

Abbott Diabetes Care Inc & Ors v Dexcom Incorporated & Ors

The appeal was allowed and the order to revoke the patent set aside.

The judgment had been given a full 14 months after the trial had been heard.  In the meantime, the parties had settled the question of infringement and only the validity of the patent was in issue in the appeal.  The consequence of this was that there was no longer a squeeze between validity and infringement, and the patentee could accept a much narrower construction of the claims.

Further, it appears that that the long gap between trial and judgment led to errors in the judgment, with the judge’s conclusion on obviousness being inconsistent with his interpretation of the claim.  The Court of Appeal found no evidence to support the finding of obviousness on the judge’s interpretation of the claim and therefore allowed the appeal.

Paramount Skydance Corporation & Anor v Nokia Corporation & Anor

The claimant was refused an ex parte anti-anti-suit injunction, but given permission to renew its application if necessary.

The application was refused because the judge was aware, from discussions with the judge hearing Warner Bros v Nokia that the defendant (the same party as in this case) had given evidence in that case that it does not intend to apply for anti-suit relief to prevent any English litigation between those parties. The judge concluded the claimant’s application had been overtaken by events and rendered inappropriate.

The claimant changed tack and requested an order that the defendant should make certain statements about its actions and intentions, but the judge refused this too on the basis that the defendant should have the opportunity to comment on the draft order. Notwithstanding these refusals, the judge did put on record that he encourages the defendant to respond constructively and in good time to the claimant’s requests.

Amazon.com, Inc & Ors v Interdigital VC Holdings, Inc & Ors (2 December)

This is the decision on the application by the defendant to set aside the anti-anti-suit injunction granted at an ex parte hearing (reported here) and subsequently confirmed following an inter partes hearing.

The judge noted that he must consider afresh whether the anti-anti-suit relief is appropriate, rather than conduct some sort of appeal from his original decision.

The defendant submitted that there was no sufficient threat or intent on its part to obtain anti-suit relief preventing the claimant from seeking final RAND relief in the High Court, and that the relief was an offence against comity.  The claimant contended that the anti-anti-suit relief should continue, for the same reasons as it was originally granted.

The judge refused the application, holding that the anti-anti-suit injunction is justified in light of the defendant’s position and conduct, while agreeing to make some minor modifications to the wording of the anti-anti-suit injunction.

Fujikura Ltd & Anor v Sterlite Technologies Ltd 

 The patent was found valid and infringed. The decision on validity turned on the expert evidence, with the defendant’s expert’s oral evidence falling substantially short of his written evidence and failing to establish a case of obviousness over the prior art or the Agrevo/breadth of claim type.

Infringement was established by way of experimental evidence.  The defendants criticised the experiments under a number of heads, but failed to show that any of their criticisms could take the results of the experiments outside the range in the claims, and also failed to carry out any of its own experiments or interpret the data from the claimant’s experiments to prove any of the points on which it relied.

Amazon.com, Inc & Ors v Interdigital VC Holdings, Inc & Ors (19 December)

The claimant seeks a declaration that it is entitled to a licence to four UK SEPs, a declaration as to what the terms are and an order for specific performance.

The defendant challenged service of the claim, and sought a stay of the proceedings based primarily on forum non conveniens.  In support of its application for a stay, the defendant gave undertakings not to assert its UK patents, made an arbitration and standstill offer and gave undertakings to accept and submit to the jurisdiction of the courts of Switzerland or Delaware if the claimant were to bring the same claims in those courts. It said that this all meant that there is no jurisdictional hook for the claimant’s claims in the High Court.

The judge refused the stay, noting that the defendant’s undertaking not to assert its patents did not provide the claimant a licence, and that by agreeing to the stay on the basis of the offer to arbitrate he would effectively be compelling the claimant to arbitrate if it wanted to continue its claim. He explained that he thought the claimant is entitled to fully open justice and agreed that it is important to have public, transparent decisions on ITU-T RAND.

Acer Incorporated & Ors v Nokia Technologies OY 

The claimants had applied for declarations, inter alia, that “… a willing licensor and willing licensee would agree to enter into and actually enter into an interim licences pending a final determination [of the terms of a RAND licence]…” and of “… the terms of an Interim Licence.”.

The defendant had challenged the court’s jurisdiction to hear the matter at all, and opposed the declarations. The jurisdiction challenge was based, in part, on the submission that the defendant had already made RAND offers of a licence, open for acceptance, by making offers of adjustable RAND licences with the adjustment mechanism being via arbitration rather than via the English court.  The judge rejected this proposition, noting that those offers were offers to enter into arbitration and not offers of a RAND licence.

The judge considered the ITU-T commitment under Swiss law (the case concerns patents in the ITU-T SEP pool rather than the ETSI pool which has been addressed in previous telecoms patent litigation) and held that it requires a patent holder to make a RAND offer that is capable of acceptance and then to grant the resulting licence, and that RAND (like FRAND under ETSI) is a process which requires negotiation in good faith towards RAND terms.

Lastly, the judge applied the law on declaratory relief and asked whether the declarations would serve a useful purpose, and whether they should be refused on the grounds of comity (or any other reason of policy or principle).  The judge held that the declarations would serve a useful purpose mainly, it seems, because they give some commercial certainty to the parties and may assist in settlement. There was no comity or other policy or principle issue to prevent the grant of the declaratory relief and so the judge ordered that a licence be granted and the basic terms for that licence.

Dryrobe Ltd v Caesr Group Ltd

The claimant succeeded on almost all counts in this trade mark infringement action.

The DRYROBE trade marks were found to be descriptive of some but not all of the goods for which they had been registered, but had acquired distinctiveness by the date of the later registrations and the date of the counter-claim and the invalidity counterclaim therefore failed.

Furthermore, the trade marks were not susceptible to revocation under s. 46(1)(c) (“that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered”) because despite the increasing generic use by competitors, press and the public the mark still carried out its essential function as a mark of origin.  The judge noted, using ‘to google’/Google as an example, that a word can be used generically and also operate as a brand and a mark of origin.

The judge found that the defendant had knowingly infringed the claimant’s marks.

Harrison (t/a Rayson Engineering) v Buchanan & Anor

The claimant succeeded in this breach of contract claim for €15,000.

Boghossian v IOP Publishing Ltd & Anor

The claimant failed in her claim that she was joint author of a scientific paper.  The principles relating to joint authorship from Kogan v Martin were set out:

1. A work of joint authorship is a work produced by the collaboration of all the people who created it.

2. There will be a collaboration where those people undertake jointly to create the work with a common design as to its general outline, and where they share the labour of working it out. The first task for the court in such a case is to determine the nature of the co-operation between the putative joint authors which resulted in the creation of the work.

3. Derivative works do not qualify. Works where one of the putative authors only provides editorial corrections or critique, but where there is no wider collaboration, do not qualify. Ad hoc suggestions of phrases or ideas where there is no wider collaboration do not qualify.

4. In determining whether there is a collaboration to create a literary or artistic work it is never enough to ask, “who did the writing?”. Authors can collaborate to create a work in many different ways. For example there may be joint authorship if one person creates the plot and the other writes the words, or if either or both of these types of labour is shared.

5. Joint authors must be authors, in the sense that they must have contributed a significant amount of the skill which went into the creation of the work. Again, it is not correct to focus exclusively on who fixed the work in writing. The statutory concept of an author includes all those who created, selected or gathered together the detailed concepts or emotions which the words have fixed in writing.

6. Contributions which are not “authorial” in the above sense do not count. What counts as an authorial contribution is acutely sensitive to the nature of the copyright work in question.

7. The question of what is enough of a contribution is to be judged by the Infopaq test, i.e. whether the putative joint author has contributed elements which expressed that person’s own intellectual creation. The essence of that term is that the person in question must have exercised free and expressive choices. The more restrictive the choices the less likely it will be that they satisfy the test.

8. The contribution of a putative joint author must not be distinct.

9. There is no further requirement that the authors must have subjectively intended to create a work of joint authorship.

10. The fact that one of the authors has the final say on what goes into the work may have some relevance to whether there is a collaboration, but is not conclusive. The author with the final say must be given credit in deciding on the relative proportions of ownership, for the extra work involved in making those choices.

11. It follows that the respective shares of joint authors are not required to be equal, but can reflect, pro rata, the relative amounts of their contributions.

The judge found, based on the absence of contemporaneous evidential documents and the unreliable nature of the claimant’s evidence, that the claimant’s contributions to the paper were non-authorial (see principle 6) and that she did not share in the labour of working it out (principle 2), and her claim was dismissed.