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IP Snapshot – October 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.

InterDigital Inc & Ors, In the Matter Of (Re Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors)

This dispute concerned the redaction of information said to be confidential from a judgment. The Court recapped the basic principle from Scott v Scott [1913] AC 417 as “Transparency and open justice are crucial in a democratic society and so justice is almost always done in public. Nevertheless there are exceptions to this which arise when the yet more fundamental principle, that courts work in the interests of justice, applies to displace the usual requirement for publicity.”

The Court then recited the relevant factors set out in Unwired Planet, below, and explained that the Trade Secrets Directive, discussed in JC Bamford, had not changed the law or the test for whether information can be redacted: the question is whether in the circumstances the principle of open justice gives way to the interests of justice itself.

The factors set out in Unwired Planet are:

“(i) The nature of the information itself: for example cases in which some redaction may more readily be accepted could include technical trade secrets and private information about family life.

(ii) The effect of the publication of the information. This will be a critical factor. If publication would be truly against the public interest then no doubt the information should be redacted. If publication would destroy the subject matter of the proceedings – such as a technical trade secret – then redaction may be justified. The effect on competition and competitiveness could be a factor but will need to [be] examined critically.

(iii) The nature of the proceedings: for example privacy injunctions and competition law claims may require some redaction while an intellectual property damages claim may not. The point is not that different kinds of case demand a different approach, it is that the balance of factors will change in different cases (e.g. the need to encourage leniency applications in competition law).

(iv) The relationship between the information in issue and the judgment (as well as the proceedings as a whole). Obviously judges do not deliberately insert irrelevant information into judgments but not every word of a judgment is as important as every other word. It may be that some sensitive information can be redacted without seriously undermining the public’s understanding of the reasons.

(v) The relationship between the person seeking to restrain publication of the information and the proceedings themselves (including the judgment). For example, a patentee seeking damages for patent infringement on a lost profit basis knows that they will have to disclose their profit margin in the proceedings and that those proceedings are public. A third party whose only relationship with the case is that they are a party to a contract disclosed by one of the parties to the litigation is in a different position.”

Thom Browne Inc & Anor v Adidas AG

The appeal against the decisions as to registrability of certain of the trade marks in this case was dismissed because the Court of Appeal found that the judge at first instance had made no error in law.

The judge had found that the trade marks did not comply with either the first or second condition in s.1(1) of the Trade Mark Act, Article 2 of Directive 89/104/EEC and Article 4 of Regulation 40/94/EC. The conditions are “First, it must be a sign. Secondly, that sign must be capable of being represented graphically.”  The Court of Appeal reviewed the Sieckmann criteria, noting that according to the first criterion a “trade mark may consist of a sign which is not itself capable of being perceived visually, provided that it can be represented graphically. Accordingly, an odour can be a sign.”  The second criterion means that “the graphic representation must enable the sign to be represented visually particularly by means of images, lines or characters, so that it can be precisely identified”, because, inter alia, “the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.”

The judge at first instance found on the facts that the descriptions of each of the trade marks in question when read in conjunction with the pictorial representations do “not correspond to one single, clear precise, objectively ascertainable sign. The mark will not always be perceived unambiguously or uniformly and it follows that the authorities and the public will be left in a state of confusion as to the nature and scope of the sign.” The pictorial representations showed the Adidas three stripes running the length of a sleeve, while the descriptions stated that “the mark consists of three parallel equally spaced stripes applied to an upper garment… the stripes running along one third or more of the sleeve of the garment”.  The judge noted that “the length the starting point and the finishing point of the three stripes may change” and that these possible variations meant that the trade marks did not comply with either of the first and second conditions.

Babek International Ltd v Iceland Foods Ltd

The appeal was dismissed, with the trade mark being held registrable but for a different reason than that given by the judge at first instance (reported in our March 2025 edition).

The judge had applied his “capacity to distinguish” test from the Sainsbury case, which the Court of Appeal held to be legally erroneous and in any event logically posterior to the questions of whether something is a sign and whether it is sufficiently clearly and precisely represented (i.e. the first two conditions of registrability, discussed in Thom Browne v Adidas).

The Court of Appeal therefore reconsidered the trade mark in light of the correct law (the Sieckmann criteria, referred to above) and found that there is a sign, that the pictorial representation is entirely consistent with the categorisation in that it depicts a coloured logo.  Furthermore, that “the written description is not inconsistent with the pictorial representation, nor does it give rise to any ambiguity or doubt about what the subject matter of the registration is” the reasonable reader would understand the description in the context of the pictorial representation.

Samsung Electronics Co., Ltd & Anor v ZTE Corporation & Ors

The appeal against this decision (reported in our May 2025 edition) was allowed (meaning that the adjustment to the interim licence is no longer tied specifically to the FRAND terms decided by the High Court), the Court finding that while it was unattractive conduct on the part of the licensor to bring multiple legal actions around the world to put pressure on the licensee to agree that the Chongqing Court should determine the ultimate FRAND rate in the parties’ dispute (rather than the Patents Court), such conduct was not sufficient to constitute bad faith.

The key point is that there are no jurisdictional rules applicable to FRAND disputes.  An SEP portfolio will typically include patents which subsist in multiple jurisdictions. Patents are territorial, but the contractual defence provided by the FRAND obligation is global. It follows that the possibilities of both parallel SEP infringement proceedings and parallel FRAND determinations in multiple jurisdictions are inherent in the current system, and it cannot be bad faith for a party to seek to use those inherencies to its advantage.

Sandoz AG & Ors v Bayer Intellectual Property GmbH & Ors

This decision follows this one, reported by us here, in which the judge held that the party taking the benefit of a cross-undertaking as to damages was not permitted to claim an account of the patentee’s profits, rather than its own loss.

This time the same party applied to include in its Points of Claim in the inquiry as to damages the same points that it unsuccessfully relied on in the previous application, namely its claim that the patentee had made dishonest claims and assertions before the EPO in obtaining its patent.

The judge refused the application, holding that the patentee’s behaviour in obtaining its patent has no bearing on the assessment of damages recoverable under the cross-undertaking. The court will adopt a liberal assessment of the damages based on the existing principles:

“whilst it is for [A] to establish its loss by adducing the relevant evidence, I do not think I should be over eager in my scrutiny of that evidence or too ready to subject [A]’s methodology to minute criticism. That is so for two reasons, quite apart from an acceptance of the proposition that the very nature of the exercise renders precision impossible.

(a) Whilst, in order to obtain interlocutory relief, [B] will not have had to persuade Mann J that it was easy to calculate [A]’s loss in the event of the injunction being wrongly granted, it will have had to persuade him that that task was easier than the calculation of its own loss in the event that the injunction was withheld. The passages I have cited from its skeleton argument and evidence show that it did so. Having obtained the injunction on that footing it does not now lie in [B]’s mouth to say that the task is one of extreme complexity and that the court should adopt a cautious approach. Having emphasised at the interlocutory stage the relative ease of the process, it should not at the final stage emphasise the difficulty.

(b) In the analogous context of the assessment of damages for patent infringement, in General Tyre [1976] RPC 197 at 212 Lord Wilberforce said: “There are two essential principles in valuing the claim: first, that the plaintiffs have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but that the object is to compensate the plaintiffs and not to punish the defendants.” The principle of “liberal assessment” seems to me equally applicable in the present context. Although a party who is granted interim relief but fails to establish it at trial is not strictly a “wrongdoer”, but rather one who has obtained an advantage upon consideration of a necessarily incomplete picture, he is to be treated as if he had made a promise not to prevent that which the injunction in fact prevents. There should as a matter of principle be a degree of symmetry between the process by which he obtained his relief (an approximate answer involving a limited consideration of the detailed merits) and that by which he compensates the subject of the injunction for having done so without legal right (especially where, as here, the paying party has declined to provide the fullest details of the sales and profits which it made during the period for which the injunction was in force).”

Formycon AG & Anor v Regeneron Pharmaceuticals Inc & Anor

There were two patents in suit: neither were infringed; one was invalid for added matter and the other valid. The claimant wished to reserve an argument as to anticipation by equivalence, which failed both in law and on the facts, for the appeal.

Infringement was alleged by equivalence only, the patentee accepting that the patents were not infringed under normal construction.

There were two legal arguments when considering the Actavis questions.

First, when considering the first Actavis question of whether the variant achieves substantially the same result in substantially the same way as the patent, the judge found that the question of infringement should be considered at a level of generality equivalent to that of the claim.  The claim was very specific, a claim to a formulation with specified amounts of five specific ingredients and the judge found that the defendants’ formulations achieve the same effect but not in the same way as the claimed formulation at the level of (non-) generality of the claim.

The patentee had tried to argue that the law does not provide the inventor of an empirical formulation invention with fair protection and that this situation should be remedied with a generous approach to infringement by equivalence, and that “the inventor should be able to draft a claim which is very narrow on its ordinary interpretation and hence not vulnerable to insufficiency attacks, and then call on the law of infringement by equivalence to bring within the scope of the monopoly the full range of further formulations which are inspired or helped along in their development.”  The judge’s answer was that the technical contribution in formulation cases such as this one are often very narrow and exists in “the interaction of the excipients which the skilled team does not understand but which works for a specific combination of excipients in specific amounts at specific conditions such as pH. This is not a principle of general application, let alone one that can meaningfully be said to be used by someone who comes along later and does their own empirical work, even if they get some comfort from the fact that they know a solution is possible.” At heart the argument is about what the technical contribution was: this particular formulation, or the knowledge that this type of protein can be stably formulated in this way? The judge felt that the patentee would need to explain how the formulation’s stability is achieved in order to provide the technical contribution required to justify a broad protection.

The second dispute over the Actavis questions concerned the second question of whether it would be obvious to a person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention. The dispute was whether the answer can be affirmative if the skilled person had to conduct experiments to assess whether the variant works in substantially the same way as the invention.  The judge found that it could not be.

There was extensive discussion on inventive step, including the relevance of the expectation of success and lions in the path, which boiled down to the two “extreme propositions” that either “nothing is obvious in the formulation field because predictions can never be made for individual experiments, or that everything is obvious because the methods used are all routine. These propositions are both wrong, as the above dicta make clear. Obviousness remains a multifactorial question in which the empirical nature of the field and the routine nature of the methods are factors but not determinative. It is clear that the court has to look at the overall expectation of success in a project as well as the expectation of success for individual experiments.”

Amazon.Com Inc & Ors v InterDigital VC Holdings, Inc & Ors

The short story of this is that it was a case management decision ordering a hearing at which an application for expedition of the trial of the substantive RAND dispute would be heard.

The juicier story is that an unnamed partner at the defendants’ English solicitors Bird & Bird was said by the judge to have given “obviously incorrect and unmaintainable” evidence (relating to the possible timing of hearings and decisions from the High Court) to the Mannheim UPC and the Munich national court in the defendants’ ex parte applications in those courts for anti-suit injunctions (which were granted) to restrain the claimant from applying for declarations as to interim licences in England (interim until the trial of the substantive RAND dispute).

There is a sub-text here that, while the judge was very careful not to criticise the UPC or the Munich court, evidence given in ex parte decisions is by definition untested and unopposed and at least in England and Wales there is a duty of full and frank disclosure on the party making the application.  It appears that the judge did not feel that full and frank disclosure had been given to those courts. The judge listed four recent English cases on similar subject matter to note that the timing of those cases was nothing like that suggested by the Bird & Bird partner in their evidence. The timetables of those cases should, one might think, have been provided as part of a full and frank disclosure.

Amazon.Com, Inc v Interdigital VC Holdings, Inc & Ors

The judge granted the applicant in this ex parte decision an anti-anti-suit injunction against the defendants.

The injunction is interim, lasting only until an inter partes hearing can be held, and restrains the defendants from making an application to any court to restrain the claimant from carrying on its claim in the English High Court to substantive, final RAND relief.

The judge’s decision rests on the defendants’ track record both at previous hearings before the High Court in this litigation and also in applying for urgent ex parte relief in the UPC and Munich courts in parallel litigation.