EPLAW Patent Blog

UK - Samsung v Apple / Samsung UMTS patents held invalid

In the latest of the Samsung v Apple battles in the ongoing war between the two technology giants, the UK High Court has revoked three of Samsung’s UMTS (Universal Mobile Telecommunications System) patents.

The first judgment dealt with EP 726 and 675, the first relating to turbo codes and the second to channel coding and multiplexing. Both patents were held to not be entitled to their priority and accordingly invalid due to the intervening prior art. Had they been entitled to their priority, both patents would nevertheless have been invalid for obviousness.

The decision sets out a good summary of the UK courts’ approach to priority (see paras 104-136).  It also sets out some interesting comments on the requirement in the UK for patentees to identify claims contended to be independently valid (see paras 60-64).  For those wishing to learn more about UMTS in general, it contains an excellent technical primer to the subject matter of the patents in suit.

The second judgment on EP 404 dealt only with the third patent. It was also held to not be entitled to its priority and accordingly invalid due to the intervening prior art.  It was also held to be obvious based on both the UK courts’ standard approach to obviousness and also based on what Floyd J called the Agrevo basis, after a TBA decision of the same name relating to herbicides.  Agrevo says that a claim to a broad class of chemicals would be rejected for being obvious where the invention (if any) would lie in the discovery that some of that class were herbicides.

Read the decision on EP 404 (in English) here.

Read the decision on EP 726 and 675 (in English) here.

Headnote: William Jensen and Graham Burnett-Hall

UK - Glenmark v. GSK (Malarone)

Glenmark Generics (Europe) Limited, Generics (UK) Limited (t/a Mylan) v. The Wellcome Foundation Limited, Glaxo Group Limited, High Court of Justice, Chancery Division, Patents Court, London, UK, 7 February 2013, [2013] EWHC 148 (Pat)

The Patents Court held that GSK’s patent for an anti-malarial drug was invalid.

Glenmark and Mylan applied to revoke GSK’s patent EP (UK) 0 670 719 relating to an anti-malarial pharmaceutical composition comprising a combination of atovaquone and proguanil in the ratio 5:2. The composition is sold by GSK under the trade mark Malarone and it is the most successful anti-malarial prophylactic in the UK. Glenmark and Mylan each planned to sell generic versions of Malarone and there was no dispute that the generic versions fell within the scope of the patent.

Glenmark and Mylan argued that the patent was invalid for obviousness in light of two items of prior art. One was a presentation and the other was an abstract relating to a lecture. The only difference between claim 1 of the patent and the presentation was that the presentation did not disclose the 5:2 ratio for atovaquone and proguanil. Mr Justice Arnold held that it would have been obvious to perform a larger version of the trial described in the presentation and that this would have led to the identification of the appropriate ratio. Mr Justice Arnold also held that the patent was obvious in view of the abstract which stated that a combination of atovaquone and proguanil had produced a cure rate of 100% for treating malaria and noted that the skilled team would have faced no technical obstacle in replicating the work reported in the abstract.

Read the judgment (in English) here.

Head note: Rob Fitt

UK - Environmental Recycling Technologies v. Upcycle Holdings

Environmental Recycling Technologies plc v. Upcycle Holdings Limited, Patents County Court, London, UK, 5 February 2013, [2013] EWPCC 4

The Patents County Court held that Upcycle’s patent relating to a process for moulding plastic articles was valid in its amended form.

Environmental Recycling Technologies (ERT) applied to revoked Upcycle’s patent, GB 2 2460 838, relating to a process for moulding plastic articles called PIM (powder impression moulding). Upcycle applied to amend its patent and elected not to defend the validity of the patent in its unamended form. ERT alleged that the amended patent was invalid for obviousness in view of a patent application entitled Aylmore and a prior use known as Contour.

HHJ Birss QC held that the patent was not obvious in view of Aylmore or Contour and that the proposed amendments to the patent were allowable.

Read the judgment (in English) here.

Head note: Rob Fitt

UK - Omnipharm Limited v Merial

Omnipharm Limited v Merial, Court of Appeal (Civil Division), London, UK, 23 January 2013, Case No [2013] EWCA Civ 2

This was an appeal against the judgment of Floyd J, dated 21 December 2011, following a trial of an action brought by Omnipharm to revoke two of Merial’s patents, EP (UK) 0 881 881 (the ‘881 patent) and EP (UK) 2 317 564 (the ‘564 patent) on the grounds of obviousness and insufficiency.
The patents in suit both relate to ‘spot on’ formulations of parasiticide for protecting small animals against ticks and fleas; the ‘881 patent relating to formulations of fipronil and the ‘564 patent relating to fipronil in combination with an insect growth regulator (“IGR”).  The patents protect Merial’s “Frontline” products which provide Merial with global sales of approximately $1 billion per year.  

After allowing Merial’s proposed amendments, the trial judge declared the ‘881 patent valid, but found the ‘564 patent invalid for insufficiency.  He also ordered Merial pay 40% of Omnipharm’s costs.  Merial appealed.  By way of contingent cross-appeal, Omnipharm contended that if the ‘564 patent was found to be sufficient, the judge would or ought to have found it invalid for obviousness and by parity of reasoning, should also have found the ‘881 patent invalid for obviousness. 
The Court of Appeal upheld the trial judge’s decision on insufficiency. As a result the cross-appeal was not pursued.

UK - Novartis AG v Generics (UK) Limited (trading as Mylan)

Novartis AG v Generics (UK) Limited, Court of Appeal (Civil Division), London, UK, 12 December 2012Case No. A3/2011/2970

In this decision, the UK Court of Appeal confirmed that obviousness must be assessed by reference to the invention as described and claimed by a patentee.  In order to undertake that assessment, all the circumstances including, where appropriate, whether it was obvious to try a particular route with a reasonable or fair expectation of success, must be taken into account.  What is a reasonable or fair expectation of success will again depend upon all the circumstances, and is fact dependent.

Sometimes, it may be appropriate to consider whether it is more or less self-evident that what is being tested ought to work. However, simply including something in a research project in the hope that something might turn up is unlikely to be enough.  The Court rejected that a finding of obviousness can only be made where it is manifest that a test ought to work.  Such a straightjacket upon the assessment of obviousness is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable.

UK - Microsoft v. Motorola

Microsoft Corporation and others -v- Motorola Mobility LLC and another, Patents Court, High Court of Justice, London, The Hon Mr Justice Arnold, 21 December 2012, [2012] EWHC 3677 (Pat)

This case concerned the validity of Motorola’s European Patent (UK) No. 0 847 654, relating to the synchronisation of message information across multiple mobile devices, and its alleged infringement by Microsoft in relation to two classes of Microsoft software products, namely Exchange Active Sync (“EAS”) and Live Messenger. (An alleged infringement in relation to a third class of products, Lync, was abandoned in Motorola’s closing submissions at trial.)

In a decision handed down on 21 December 2012, the High Court held that Motorola’s EP ’654 is invalid: three of the seven claims of EP ‘654 were held to lack novelty over three items of prior art, and all claims were found to be obvious in light of the common general knowledge and/or over the pleaded prior art. The Court also held that, if the claims had been held to be valid, Microsoft would have infringed EP ’654 by its supply of its EAS and Live Messenger products save that, as a result of the acquisition of Motorola Mobility Inc. by Google, Inc. in May 2012, Microsoft could claim the benefit of a pre-existing cross-licence between Microsoft and Google (“the Google Licence”) in relation to EAS.

UK - Medimmune v. Novartis

Medimmune v Novartis & Anor and Novartis v Medimmune & Anor, Court of Appeal, London, UK, 10 October 2012, Case no. [2012] EWCA Civ 1234

This is a joint appeal relating to Medimmune's and MRC's jointly held patents for phage display technology:

1. In action HC09C04770 MedImmune Limited (“MedImmune”), alleged Novartis Pharmaceuticals UK Limited (“Novartis”) had infringed European Patents (UK) Nos. 0 774 511 and 2 055 777 by selling a product called ranibizumab which is used for the treatment of wet age-related macular degeneration of the eye.  Novartis disputed infringement and counterclaimed for revocation of the patents. The judge held at first instance that both patents were invalid on the grounds of obviousness and because the claims were not entitled to priority from the relevant priority document, it being conceded that if they were not entitled to priority then the patents were invalid. Novartis disputed infringement and counterclaimed for revocation of the patents. The judge held at first instance that both patents were invalid on the grounds of obviousness and because the claims were not entitled to priority from the relevant priority document. The appeal was persued only in respect of the '777 patent.

UK - Vernacare v. Environmental Pulp Products

Vernacare v. Environmental Pulp Products Limited, Patents County Court, London, UK, 19 July 2012, [2012] EWPCC 41

The Patents County Court held that Vernacare’s patent was valid and infringed by Environmental Pulp Products (EPP).

Vernacare’s patent, GB 2 446 793, relates to disposable washing bowls made of paper pulp which are used in hospitals and nursing homes. Vernacare alleged that the bowls sold by EPP infringed the patent. EPP had stopped selling their Version 1 bowl and had replaced this with Version 2. EPP had plans to replace Version 2 with Version 3 and denied that Version 2 or Version 3 infringed the patent. EPP counterclaimed that the patent was invalid for obviousness over the cited prior art and common general knowledge. EPP also alleged the patent was invalid for added matter.

EPP admitted that the Version 1 bowl infringed the patent and His Honour Judge Birss QC held Version 2 infringed as well. Version 3 was held not to infringe as it did not have the claimed recesses.

HHJ Birss QC rejected the obviousness attack based on the Chaplin  and Zincone prior art. HHJ Birss QC noted the attack based on common general knowledge alone was probably EPP’s strongest but it also failed.

HHJ Briss QC rejected the added matter attack and held that the disclosure of the patent was the same as the disclosure of the application. Although there was a small degree of broadening of language this was in respect of a broader claim and not a broader disclosure.

Read the judgment in English here.

Head note: Rob Fitt

UK - Gedeon Richter v. Bayer Pharma

Gedeon Richter plc v. Bayer Pharma AG, Court of Appeal, London, UK, 7 March 2012, [2012] EWCA Civ 235

Gedeon Richter (“Richter”) commenced revocation proceedings in respect of two of Bayer’s patents, EP (UK) 1 380 301 (“’301) and EP (UK) 1 598 069 (“’069”). Both patents related to immediate release formulations of the steroidal hormones drospirenone and ethinylestradiol for use as oral contraceptives. At trial, Mr Justice Floyd held:

(a)  claims 1 and 19 of ‘069 were invalid for obviousness but permitted amendment to delete claims 1 to 5 and make claim 19 dependent of claim 6

(b)  Claim 6 of ‘069 was not invalid for obviousness

(c)  Claim 1 of ‘301 was not invalid for obviousness

(d)  ‘301 and ‘069 were not invalid for added matter

Richter appealed the findings (b), (c) and (d) to the Court of Appeal but the appeal failed.

The Court of Appeal rejected the allegations of added matter against both patents as the common parent application taught generally that rapid dissolution ensured “good bioavailability”.

The Court of Appeal also rejected Richter’s obviousness attack on both patents as there was no evidence that the skilled person would have read the contents of the relevant prior art and there was no, or only the slightest, expectation of success based of the prior art.

Read the judgment in English here.

Head note: Robert Fitt

DE - E-Mail via SMS

E-Mail via SMS, German Federal Supreme Court, 22 November 2011, Case No. X ZR 58/10

In the above judgment, the German Federal Supreme Court ruled on obviousness of improvements of data structures provided in an international standard, finding that a skilled person concerned with selectively improving a data structure provided in an international standard normally feels compelled to make recourse to mechanisms already envisaged by the standard for solving the technical problem. If an assessable number of possible problem-solving approaches arise from the standard, each of which has specific benefits and drawbacks, as a rule good cause is given to take each of these approaches into consideration.

Issues of "technical character" and/or "statutory exclusion" were neither raised by the parties nor by the Federal Supreme Court.

Read the decision (in German) here.
Read the summary in English (provided by Bardehle Pagenberg) here.

Head note: Stefan Steinbrener