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IP Snapshot – November 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.

Dr Reddy’s Laboratories (UK) Ltd v Boehringer Ingelheim International GmbH

The judge granted an interim injunction, reiterating the importance the Court places on the duty of generic companies to clear the way of patents before launching products.

The details of this decision are more complex than a vanilla interim injunction application because a significant proportion of the market for the drug in suit is interchangeable with a second drug (dapagliflozin) which recently went off-patent, and this complicated the assessment of potential damage.

A further point of interest is that a representative of the Department of Health and Social Care gave evidence in the dapagliflozin case and in this case to the effect that the NHS would not pursue a policy directed to deterring an originator drug company from restoring historic levels of actual selling or list prices, following an earlier reduction in the face of generic competition.  This could have been critical, given that patentees often rely on the difficulty in returning patented drug prices to pre-generic competition levels as evidence to support a contention that damages would not be an adequate remedy.  However, notwithstanding that evidence, the judge found that “it will in practice be impossible for [patentee] to return prices to current levels.” (my underlining).

Warner Bros. Discovery Inc & Anor v Nokia Corporation & Anor

The implementer claimant is seeking declarations of invalidity and/or non-essentiality in respect of two patents.  It also makes a conditional request for the Court to determine the final terms of a RAND Licence and to make associated orders and declarations.  The judge granted permission to the claimant for service of the claim out of the jurisdiction.

The claimant also applied for an anti-anti-suit injunction (AASI) to prevent the defendant from seeking anti-suit relief (ASI) which would have the effect of prohibiting it from pursuing the RAND claim in the High Court, at least on an interim basis.  The claimant cited the recent decisions by the Munich Regional Court and the Mannheim Local Division of the UPC to grant anti-interim licence injunctions (AILI) in the Amazon v InterDigital proceedings (the English part of which we reported here).

The judge set out the law applicable to the application for an AASI (in this case the critical point is the protection of the English Court’s jurisdiction), for mandatory interim relief (the same as for prohibitory interim relief – i.e. the American Cyanamid test) and for quia timet relief (there must be a sufficient threat that the targeted proceedings will be commenced and that they will be of a nature which will justify the injunction).

The judge reviewed the question of whether the defendant should be given notice of the application for AASI but decided against it, in case the defendant had already filed applications for ASI relief and could accelerate the decisions in those ASI applications to pre-empt the decision in this AASI application.

The claimant’s strongest submission was that this AASI application was the only chance the claimant had to protect the High Court’s jurisdiction against a possible AILI.  The AASI would cause no material prejudice to the defendant if the application turns out to be unfounded, either on the basis that the defendant had no intention of seeking an AILI or because it does have such an intention and it should be permitted to do so.  In either case the AASI can be discharged at the return date (i.e. the next inter partes hearing) without having caused any practical difficulties for the defendant in pursuing its chosen litigation tactics.

The judge granted the ex parte AASI in order to guard against the non-negligible risk that the defendant has sought or will seek ASI or AILI relief in either Germany or the UPC.

Getty Images (US) Inc & Ors v Stability AI Ltd (Rev1)

This is not in fact reported in the Patents Court reports on bailii.org, but I thought you might be interested in it, nonetheless. The short story is that the only claim that made it to the trial was that of secondary infringement (importing into the UK, or dealing with “…an article which is, and which he knows or has reason to believe is, an infringing copy of the work”).  The issues of law were whether Stable Diffusion (the AI model) is capable of being (i) an “article” for the purposes of sections 22 and 23 CDPA and (ii) an “infringing copy” for the purposes of section 27 CDPA.  The answer is that Stable Diffusion can be an article, but it is not an infringing copy.

A statutory provision is “always speaking”, which means that “as a general rule, a statute should be interpreted taking into account changes that have occurred since the statute was enacted. Those changes may include, for example, technological developments, changes in scientific understanding, changes in social attitudes and changes in the law. Very importantly it does not matter that those changes could not have been reasonably contemplated or foreseen at the time that the provision was enacted. Exceptionally, the always speaking principle will not be applied where it is clear, from the words used in the light of their context and purpose, that the provision is tied to an historic or frozen interpretation.”  It was under this principle that Stable Diffusion was found to be an “article’” notwithstanding that it is intangible.

Stable Diffusion does not and has never stored or reproduced any copyright works and therefore is not an infringing copy under s. 27 CDPA.

The trade mark claim was also unsuccessful except a narrow claim to s.10(2) TMA infringement in relation to three specific images.

There was no evidence that the training and development of Stable Diffusion took place in the United Kingdom, which led to the claimant abandoning the ‘Training and Development Claim’.  By the time of trial the defendant had blocked the prompts which the claimant had used to generate examples of allegedly infringing output, which meant that the relief to which the claimant would have been entitled in relation to those prompts had been substantially achieved and the claimant therefore also abandoned the claim relating to them. In addition, the claimant abandoned a claim for database rights linked to these two claims.

Nador Cott Protection SAS v Asda Stores Ltd & Anor (PTR Judgment)

This pre-trial review did not go well for the defendant. The judge held that it had not sufficiently particularised a case that it wished to run, and that it could not list documents under a Civil Evidence Act Notice to be used as a ‘reservoir’ of documents to be deployed as necessary.  A Civil Evidence Act Notice should identify the specific hearsay relied on, and averments in pleadings should be substantiated.

Regeneron Pharmaceuticals, Inc & Anor v Alvotech HF & Anor

The question before the Court boiled down to: can a party seeking an SPC export waiver give a valid notification prior to having an MA in the export country (or the number of an MA) so long as they provide the MA number later, or is a notification without an MA number inherently invalid?

Article 5 of the SPC regulation provides that “the information to be provided by the maker… shall be … the reference number of the marketing authorisation, or the equivalent of such authorisation, in each country of export, as soon as it is publicly available.” The judge found that the ordinary meaning of the text is that the MA number need not be included with the notification and can be provided later, and held that the notification in suit (which included no MA number because it was not yet publicly available) was valid.

The decision is quite long, considering it is a simple point of interpretation, because the District Court in Munich found differently and the judge reviewed that decision as well as decisions from the Hague and Belgium (both of which agreed with the judge and disagreed with the Munich Court).

easyGroup Ltd v Jaybank Leisure Ltd

The sign in suit was found to infringe the trade mark in suit, being identical aurally and conceptually and for identical services, but the defendant had a valid defence under s.11A of the 1994 Act (i.e. that the trade mark was liable to be revoked for non-use).

The claimant pointed to two alleged uses of the trade mark before the relevant date, which was three months before the defendant hypothetically applied to revoke the trade mark for non-use (s. 46(1)(3) TMA (hypothetical because there was no application for revocation, only the s.11A defence), but the judge found that neither of these alleged uses were uses of the trade mark in relation to the service in respect of which the trade mark was registered.