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IP Snapshot – Michaelmas Term 2024

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.

SkyKick UK Ltd & Anor v Sky Ltd & Ors (Rev1)

The Supreme Court has allowed the appeal, holding that the judge at first instance was entitled to find that the marks in suit were applied for in bad faith to the extent that he did and to require modification of the eight categories of Selected Goods and Services in the manner set out in his judgment which can be found here.

The Court listed fifteen principles of assessing bad faith at paragraph 240, which you can review using the link. The key principle in terms of how to make out the objection is that it must be shown that the “proprietor made the application for registration, not with the aim of engaging fairly in competition but either (a) with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties; or (b) with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, and in particular the essential function of indicating origin.”

Panasonic Holdings Corporation v Xiaomi Technology UK Ltd & Ors

This is the decision in the appeal against this decision reported in my July & August 2024 snapshot, by which the defendant had been refused a declaration in SEP litigation proceedings that the claimant should grant it an interim licence.

The Court of Appeal decided, with one judge dissenting, that the declaration would serve the useful purpose of forcing the claimant to reconsider its position in relation to the interim licence. This could promote international comity, rather than be an exercise in jurisdictional imperialism as the first instance judge had thought, because if the claimant were to reconsider its position then it would relieve the German court and the Unified Patent Court of a great deal of work.

Sandoz AG & Ors v Biogen MA Inc

The patent was found to be insufficient for excessive breadth of claim, lack of certainty and classical insufficiency. The patent, on the judge’s construction, simply did not provide sufficient information for the skilled reader to be able to be able to interpret certain antibody tests in such a way as to use them to make the clinical predictions claimed by the patent.

Further, the patent was not infringed. Blood samples are taken in the UK, and the test results reported in the UK, but the antibody tests are conducted outside the UK.  The judge recited the applicable law from Menashe v William Hill [2002] EWCA Civ 1702, RIM v Motorola [2010] EWHC 118 (Pat) and Illumina v. Premaitha [2017] EWHC 2930 (Pat) and held that because the antibody tests were conducted outside the UK and the results were analysed outside the UK, then it did not matter that the results were reported to the patient in the UK.  The claimed method had been used outside the UK and therefore the patent not infringed.

Lastly, the court refused an Arrow declaration because the applicant had put the argument on the basis that a particular PCT application did not enable the skilled person to perform a particular process at a particular date (relying on the same arguments which prevailed as against the patent in suit). The judge agreed with the patentee that this was an attempt to usurp the function of the EPO.  Courts can give declarations in relation to products or processes that exist independently of patent applications, but not in relation to the text of a pending patent application.  There is a fine line between the two!

Sandoz AG & Ors v Biogen MA Inc

Biogen was ordered to pay 87.7%of Sandoz’s costs (of £2.455 million) for the case reported immediately above, with 70% as an interim payment.

Accord Healthcare Ltd & Ors v Regents of the University of California & Anor

The patent was held not obvious and sufficient in this lengthy decision concerning a claim to a pharmaceutical. The bulk of the decision concerns obviousness, the claimed compound differing only in the substituent in one position to the prior art compound relied on in the obviousness attack. The judge noted that the arguments were finely balanced but came down on the patentee’s side because the arguments against were not strong enough to show that it would have been obvious to do the SAR which led to the claimed compound.

Pfizer Ltd v GlaxoSmithKline Biological SA & Anor

The patents were found not infringed under normal construction and the doctrine of equivalents, with the definition of the ‘result’ (in relation to question 1 of the Actavis questions – ‘does the variant achieve substantially the same result in substantially the same way as the invention?’) being the key factor in the judge’s decision on equivalents.  The patentee had argued for a definition of ‘result’ which included the characterisation of the invention in the specification. The judge rejected that argument and held that the level of generality to be applied to assessing the ‘result’ is the level of generality of the particular claim under consideration.

There was a factual dispute over the identity of the skilled person, and the approach applied was that set out in Illumina of asking firstly what problem does the patent seek to solve, and secondly what was the established field in which the problem was located, and therefore what was the composition of the skilled team. This approach is said to guard against the hindsight that can creep in if one starts the analysis based on the invention in the patent.

The patents were also held invalid for obviousness, with last minute submissions on the secondary indicia of ‘if it was obvious why had no one done it’ admitted by the judge seemingly because the claimant did not object to the lateness, unable to save the patentee.

The judge granted an Arrow declaration that the claimant’s vaccine products in suit were obvious at the priority date of the patents, with the useful purpose being the commercial certainty for the claimant in being able to supply its products without fear of the patentee relying on its divisionals.

Pfizer Inc v UniQure Biopharma BV

This is a rare example of the invention in a patent being held non-obvious based on secondary evidence, in this case the argument that if the invention were obvious then why had no-one done it before? The priority date of the patent is 2008, and the prior art document relied on was dated 1999. None of the various teams around the world working in the relevant field had thought it worthwhile to conduct the routine work of taking forward the suggestion in the prior art that the defendant said was obvious. The judge found this to be compelling evidence that the invention was not obvious.

The patent was held valid and infringed.

BioNTech SE & Anor v CureVac SE & Anor

The two patents (one a divisional of the other) were found to be insufficient due to lack of plausibility. The judge quoted the test for plausibility from Takeda as:

1.     is it disclosed in the patent?

2.     is it plausible?

3.     is it true? is it a technical advance?

4.     does it support claims of the breadth they are?

‘it’ being the technical contribution claimed by the patentee. The judge found that the patents say that improved expression of proteins is an object of the invention, but found that nowhere did the patents say that the claimed invention does in fact improve expression.  The patents therefore fell at the first question because the technical effect was not disclosed in the patent. He conceded that if he was wrong about question 1 then the patents did “contribute a showing” for the first time that the claimed invention can improve expression (i.e pass question 2).

The patents were also insufficient because the technical effect does not exist over substantially the whole scope of the claim. The judge said that the question is whether it is the case that substantially all of the mRNAs within the claims of the patents provide the technical contribution of improved expression. He found that “sometimes [the technical contribution] is present but often it is not… It is impossible to assess with any meaningful precision over what proportion of the claims the technical effect is and is not present, because the experimental evidence covers only a finite number of possibilities and because the mechanisms at work are not understood, but I am confident in concluding that the scope across which the technical effect is absent is significant. It is not a case of “occasional failures”; the effect is not present across substantially all of the claim.”

Safestand Ltd v Weston Homes Plc & Ors

The claimant’s application to strike out the defendant’s Formstein defences succeeded.

The defendant sought to rely on a piece of prior art that it had previously relied on in invalidity proceedings. The judge found that issue estoppel prevented it from relying on the same document, reciting the House of Lords’ explanation:

“Except in special circumstances where this would cause injustice, issue estoppel bars the raising in subsequent proceedings of points which (i) were not raised in the earlier proceedings or(ii) were raised but unsuccessfully. If the relevant point was not raised, the bar will usually be absolute if it could with reasonable diligence and should in all the circumstances have been raised.”

The defendant also sought to rely on an alleged prior disclosure by the claimant, also something it had sought (and failed) to rely on in the previous proceedings. The judge held that the rule in Henderson v Henderson applied and that the argument should be struck out, quoting:

“The basis of the rule in Henderson is the avoidance of multiplicity of litigation in relation to a particular subject or set of circumstances in order to avoid the prejudice to a defendant which inevitably results in terms of wasted time and cost, duplication of effort, dispersal of evidence and risk of inconsistent findings which are involved if different courts at different times are obliged to examine the same substratum of fact which gives rise to the subject of litigation. The rule is justifiable and justified as a matter both of common sense and common justice between the parties and it is the aspects of prejudice which I have mentioned which will usually render a second bite of the cherry worthy of the description “abuse of process.” They are essentially objective considerations to which the particular circumstances of the parties will generally be irrelevant; hence the need for special circumstances if the full rigour of the rule is to be alleviated.”. 

Lenovo Group Ltd & Ors v Telefonaktiebolaget LM Ericsson (publ) & Anor

The claimant in this action applied for a declaration in this SEP case that a willing licensor and willing licensee would agree a short term cross-licence to cover the period until the English court or the Eastern District of North Carolina court decided on the on the terms of a FRAND cross-licence.

The claimant wanted this short-term cross-licence in order to be able to argue that various injunctions around the world obtained by the defendant based on the same set of SEPs should fall away, on the basis that the claimant was licensed.

The judge refused to grant the declaration, because he was not persuaded that there was a useful purpose to the declaration (a key requirement under the test in Messier-Dowty).

Insulet Corporation v Menarini Diagnostics Ltd & Ors

The third defendant (based in the Republic of Korea) applied to set aside an earlier order which had granted the claimant permission to serve its claim on it in the Republic of Korea.

The Korean defendant accepted for the purposes of the application that there were serious issues to be tried in relation to whether the UK defendant had committed an act of infringement, whether the Korean defendant had knowledge of the essential features of that act and whether the Korean defendant had done an act which more than minimally assisted in that act.

However, the Korean defendant argued that there was no serious issue to be tried as to whether it was a joint tortfeasor with the UK defendant because there was no common design between the parties to commit the acts of infringement. The Korean defendant claimed that the UK defendant was simply a distributor in a “fire and forget” arrangement.

The judge found, on the facts, that there was a realistic prospect of the claimant proving that there was common design and therefore dismissed the application. The judge also refused to impose any conditions of confidentiality on the judgment, after the defendant failed to provide any evidence to support its assertion of confidentiality.

Halozyme, Inc v The Comptroller-General of Patents, Designs and Trade Marks

The judge dismissed this appeal against the decision of the Hearing Officer to refuse two SPC applications. The patentee argued that human recombinant hyaluronidase is an active ingredient, rather than an excipient, and that therefore under the Forsgren test the SPCs should be granted. The Comptroller-General argued that whether a substance is an active ingredient or not should be determined conclusively by reference only to Section 2 of the SmPC (i.e. following the medicines regulator’s decision as to whether the substance is active or excipient), in this case an excipient.

The judge declined to decide the point as to whether Section 2 of the SmPC should be determinative, and found on the facts that recombinant human hyaluronidase is not an active ingredient.

I-Smart Developments Ltd v Currentbody.com Ltd (Rev1)

Part of the claim is based on an NDA.  The NDA is relied on by a party which was not a party to the NDA – instead it relies on the Contracts (Rights of Third Parties) Act 1999.  The judge refused to strike that part of the claim out, holding that it was sufficiently arguable that the third party did have rights under the NDA and that the meaning and effect of the relevant clauses will require consideration by reference to the matrix of fact.

Thurgood v Laight & Anor

There was no dispute on the law in this passing off case, and the claimants succeeded on the very clear facts.

Water Rower (UK) Ltd v Liking Ltd (t/a Topiom)

The judge found that one of the works at issue, the Prototype, was an original work within the meaning of the InfoSoc Directive and therefore entitled to copyright protection under EU law.

However, the judge then assessed whether the works qualified as works of artistic craftsmanship under UK law, treating the InfoSoc test as a gateway and then applying the narrower test under UK law, and found that they did not. He attempted to set out the principles of law relating to works of artistic craftsmanship at paragraph 135, and held the deciding factor to be that the contemporaneous documents did not “give the impression the subject matter was the result of a mind with a desire “to produce something of beauty which would have an artistic justification for its own existence” or that the creator “was an artist in that he used their creative ability to produce something which has aesthetic appeal”.

Alice Ltd v Photogram Ltd & Ors

The judge commented that the counterclaim that the trade mark had not been put to genuine use was “patently ill-founded (as well as unsupported), and should not have been made”.  Further, that the individual who had signed the statement of truth in the Defence and Counterclaim knew when signing that the document was false in part.  However, there seems to be no sanction for either in this decision save that the claim for infringement succeeded.

Barber v Wakefield & Ors

Both parties represented themselves in this design right case which started in the IPEC Small Claims court and was transferred into the IPEC. The judge managed the case accordingly, noting that it was not possible or sensible to conduct the case with “close attention to the wording of the pleadings”!