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IP Snapshot – September 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.

Sandoz AG & Ors v Bayer Intellectual Property GmbH & Ors

This is one of those decisions which, had it gone the other way, could have been seismic but which, as it happens, leaves the law unchanged. An interim injunction had been granted and a cross-undertaking as to damages in the usual form granted. The patent has been found invalid and the generic company is in in the process of claiming under the cross-undertaking.  So far so normal.  The unusual aspect is that the generic company applied to claim an account of the patentee’s profit under the cross-undertaking, rather than its own loss.

The judge granted summary judgment against this application, as well as striking it out. He found that the authorities on this subject are consistent and he was certain that it would fail.

The generic company had put its argument on the basis that the cross-undertaking should be treated as if it were a contract; that there is case-law to the effect that exceptional remedies for breach of contract can be available; and that an exceptional remedy should be granted in this case because the patentee had obtained the patent on the basis of false and misleading claims.

The judge explained that while the contractual principles of assessment of damage are often relied on by the court in assessing the damages under a cross-undertaking, the cross-undertaking is given to the court and is not a contract between the parties. The wording of the cross-undertaking was clear that the recipient of the benefit of the cross-undertaking was entitled to claim compensation for its loss.

Generics (UK) Ltd v Astrazeneca AB

This is a decision on costs for the main revocation action in this litigation.  The judge recited the principles as “first, who has won; secondly, whether the winning party has lost on an issue which is suitably circumscribed so as to deprive that party of the costs of that issue; thirdly, whether it is appropriate and just to order that the winning party should also pay the losing party’s costs of that issue.”

On the facts he awarded the claimants (the generic companies) their costs save for those relating to the classical obviousness case and those related to some amendments to the statements of claims, with payments on account of 65%.

AstraZeneca AB & Anor v Glenmark Pharmaceuticals Europe Ltd & Ors 

This is the decision on costs relating to the interim applications in this litigation. The judge recited various case law concerning costs of interim hearings, finding that they can, in exceptional cases, be dealt with immediately; or they can be subject to no order if the matter settles after the interim stage; or they can be reserved and then the usual rule that the successful party should be entitled to recover its costs applies. In this case the costs of each interim hearing were reserved until after the trial on the merits.

The patentee was granted an interim injunction against Glenmark and argued that this made it the successful party and therefore entitled to be awarded its costs. The judge disagreed, finding that Glenmark was the successful party on the merits (having succeeded in having the patent revoked) and that “the authorities cited to me imply that once the trial is concluded, it will indeed be possible to identify a successful party and the unsuccessful party and that this identification will apply not only to the substantive proceedings but, on facts such as those here, also to the interim stage”.  Glenmark was entitled to its costs.

However, the same was not true for Sandoz. The patentee had written to Sandoz three times to ascertain its intentions. Sandoz had not responded and had launched its generic product at risk but with the knowledge of the patentee’s legal actions against Glenmark and the other generic companies. The patentee had applied for interim relief against Sandoz, and had been granted it notwithstanding a very late (the morning of the hearing) offer by Sandoz to give undertakings. Sandoz argued that it, like Glenmark, was the successful party because the patent had been revoked and it should therefore be entitled to its costs for the interim injunction. The judge disagreed, holding that its conduct was “out of the ordinary” and that the hearing at which the patentee had been granted its interim injunction “was entirely unnecessary, wasting the time of the court and costs”. The patentee was granted its costs on the indemnity basis.

J Mac Safety Systems Ltd v Q Deck Safety Systems Ltd

This decision is a good demonstration of the difficulty in running unregistered design right claims, and the level of detail required. The decision is necessarily long, with findings on originality, authorship, the ‘commonplace’ exclusion, the ‘must fit’ exclusion, the ‘surface decoration’ exclusion, the ‘method or principle of construction’ exclusion, which ‘parts or aspects’ can be assessed separately, followed by findings on infringement of those designs found to subsist as well as of the designs found not to subsist (in case the judge is wrong on subsistence). The hearing lasted three days, with the court apparently starting early and sitting late in order to be able to hear all the evidence and argument.

There was a dispute on the law of originality, with the claimant’s position being that “the test for originality of a design in the context of s.213(1) CDPA is whether “sufficient skill, effort and aesthetic judgment has been expended on the new design” and that in the creation of the new design anything more than “slavish copying” will result in that design being original.”, following Whitby Specialist Vehicles v Yorkshire Specialist Vehicles, Action Storage Systems v G-Force Europe and Magmatic Ltd v PMS International Ltd. The defendant submitted that the test should be as set out in the series of EU copyright case law including Infopaq International A/S v Danske Dagblades Forening, Cofemel-Sociedade De Vestuario SA v G-Star Raw CV and SI v Chedech/Get2Get (the Brompton case). This is a slightly higher test inasmuch as it requires the design to be the expression of the author’s own intellectual creation.

The judge’s view was that the authorities determined that the word “original” in s.213(1) (i.e. relating to design right) should be given the same meaning as the word “original” in s.1(1)(a) CDPA (i.e. that relating to copyright). He therefore decided to apply the principles of the relevant EU authorities regarding originality.

The claimant succeeded on one of the four designs it relied on, with damages to be determined at a quantum trial.