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IP Snapshot – March by Tom Carver

Morley’s (Fast Foods) Ltd v Nanthakumar & Ors

The Court of Appeal dismissed the appeal.  The judge was found to have erred in taking into account the level of intoxication of likely consumers, but this was held to be immaterial.  All other findings of fact were held to be well within the bounds of rationality and therefore the judge’s overall assessment of likelihood of confusion was unimpeachable.

Salts Healthcare Ltd v Pelican Healthcare Ltd

There were no disputes as to the law or interesting legal points in this patent infringement and validity case.  The patent was held to disclose a series of particular appliances, but to disclose no principle or method to address the problem it identifies.  None of the valid claims were held to be infringed either normally or under the doctrine of equivalents.

Media Tek Inc & Ors v Huawei Technologies Co Ltd & Anor

This concerns five applications for, respectively, a challenge to jurisdiction, a stay, a strike out, amendment of statements of case and permission to rely on expert evidence.

The issue between the parties in the jurisdiction dispute was whether service under CPR 63.14 was effective to confer jurisdiction in relation to the FRAND claims.  It was common ground that the claimant had to satisfy three requirements: (i) that there was a serious issue to be tried on the merits, (ii) that there was a good arguable case that the claim falls within one of the Gateways and (iii) that the English Court was clearly and distinctly the appropriate forum and the Court should exercise the discretion to permit service out of the jurisdiction. The judge characterised the litigation as a dispute about a UK patent and held that the challenges to validity and the FRAND claims are characterised together as a composite claim to enforce the defendant’s ETSI declarations. Accordingly, he dismissed the application, finding that the claimant had satisfied the requirements for jurisdiction and that the English Court is the appropriate forum.

The applications for a stay and strike out were dismissed, and the amendments and expert evidence permitted.

DSM IP Assets BV & Anor v Algal Omega 3 Ltd

in an unusual comment, the judge noted that he might have found EP 155 valid had the expert evidence relied on by the defendant been better, but as matters stood he found that the series of steps said to be obvious and to make the patent uninventive were too reliant on hindsight.

The patentee’s application to amend a product by process claim in EP 740 was dismissed. The amended claim was held to be unclear because the skilled person would not be able to determine which identifiable and unambiguous technical features are imparted to the product by the process by which it is defined (the use of oil “extracted from… …a thraustochytrid microorganism”). The unamended claim was held to be insufficient as being not enabled across its breadth. There was no evidence that all oils falling within the claim had the same value or utility.

In relation to a claim including a numerical value in EP 801 the judge explained that “Drawing all these points on numerical values together, DSM’s suggestion that there is any sort of ‘general rule’ or ‘convention’ is plainly wrong. What the authorities make clear is that the normal principles of construction apply; and the meaning and scope of a numerical range must be ascertained in the light of the disclosure in the Patent, the CGK and all other relevant circumstances. Furthermore, the reliance on attempted factual analogies is not useful. The notion that a very small number of decided cases establish a convention which applies across the board flies in the face of the general principles established in Smith & Nephew and Jushi.” Following those principles, the judge defined the numerical value and, relying on that, found the patent obvious over prior art.

Klemz v Comptroller – General of Patents, Designs and Trade Marks

The judge agreed with the UKIPO examiner that the claimant’s application for a patent claiming a means of propelling a spacecraft in space should be refused for being not capable of industrial application, not sufficiently enabled and not clear, the device being claimed to work in a manner contrary to Newton’s laws of motion and with no independent expert evidence supporting it.

The principles of law applicable were that

1. i)              when assessing whether a patent application should be refused under s.18(3) of the Act:

1.   The Office should examine the material filed and assess whether the invention is patentable on the balance of probabilities. If yes, the application should be allowed to go forward to grant.

1.   If no, the Office should consider whether there is a substantial doubt about an issue of fact which could lead to patentability. If no, the application should be refused.

1.   If yes, the Office should consider whether there is a reasonable prospect that the invention will be found patentable if that issue of fact is fully investigated at a trial. The application should be allowed only if the answer is yes.

1. ii)             The reasonable prospect must be based on credible material before the Office and not on supposing that something helpful may turn up.

iii)             The greater has been the opportunity for the applicant to produce such material, the smaller scope there is for supposing that fuller investigation will lead toa different conclusion.

1. iv)           Matters which may be taken into account in resolving the issues under paragraph (1) include whether there has been authoritative independent comment on the invention, the nature of any such comment and in the absence of comment any plausible reasons for the absence.

Samsung Electronics Co. & Anor v ZTE Corporation & Ors

This was a case management dispute over the trial date in a FRAND action. The claimant wished to expedite the trial, while the defendant objected. The judge set out the factors as per WL Gore v Geox.

1. i)              whether there is good reason for the expedition;

1. ii)             whether expedition would interfere with the good administration of justice;

iii)             whether expedition would cause prejudice to the Defendant; and

1. iv)           whether there are any other special factors.:

The judge agreed with the claimant that good reasons for expedition included the desirability of bringing wasteful litigation to a close as soon as possible, and the prospect of highly damaging injunctions being granted if a FRAND licence is not determined and concluded as soon as possible.

The earliest trial date suggested by the claimant would have required other hearings to be moved, and would therefore interfere with the good administration of justice, but the second date (January 2026) was available and would cause no interference.

There was no risk of prejudice caused by the shorter timeline to trial and there were no special factors, so the judge ordered the trial to be listed for January 2026.

Astrazeneca AB & Anor v Glenmark Pharmaceuticals Europe Ltd (Re Interim Injunction Application)

The judge refused to grant an interim injunction in this application. He held that damages would not be an adequate remedy for the NHS or for the defendant/respondent because of the difficulty in establishing the counterfactual with any degree of accuracy as regards either party.  Further, that damages would be an adequate remedy for the applicant, on the basis that the respondent provides an undertaking to pay a specified sum per pack sold between the date of the decision and the form of order hearing in the substantive proceedings into a separate bank account.

Well Lead Medical Co Ltd v CJ Medical Ltd

This is the decision in the trial on the merits of a case in which an interim injunction was refused, as reported by us here.

Claim 3 of the patent in suit was found valid and infringed.

A point of law arose relating to mosaicing prior art.  The judge noted that “It is well established that where the cited prior art expressly refers to other material which may be consulted by the reader, that further material becomes in principle available to supplement the cited disclosure when considering inventive step. However… “When any piece of prior art is considered for the purposes of an obviousness attack, the question asked is “what would the skilled addressee think and do on the basis of this disclosure?”  Where the cited prior art refers to more than one document which can be consulted by the reader and the party relying on the prior art alleges that just one such document would have been considered, there is an evidential burden on that party to show that the skilled person at the priority date (a) would have consulted that document as opposed to any of the others referred to in the cited prior art and (b) would have selected particular information from within the supplementary disclosure if selection is alleged.”

The relevant passage in the cited prior art cross-refers to three patents, one of which (Russo) was relied on as being incorporated by reference.  The other two were not in evidence and were not shown to the experts. The judge held that it is “entirely possible that the skilled person would have thought that one or other of the devices disclosed in the two other US patents would be significantly more suitable”. Were that the case, it may well not have been obvious to use the Russo device.  On that basis the judge declined to permit the party to rely on the other two.

Babek International Ltd v Iceland Foods Ltd

The defendant applied for summary judgment in this case relating to a figurative trade mark, alleging that it was invalid for lack of clarity and precision on the basis that the image provided of the figurative mark was not consistent with the written description provided.

The judge commented that to find the image was inconsistent with the description “would need an assumed degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable.”

The mark was held to be valid.

DW Windsor Ltd v Urbis Schreder Ltd

There were no disputes as to the law or interesting legal points in this patent validity case (infringement having been conditionally admitted). Certain of the claims were found novel, inventive and valid.