EPLAW Patent Blog

UK - Apimed Medical Honey v. Brightwake Limited

Apimed Medical Honey Limited v. Brightwake Limited, Court of Appeal, London, UK, 20 January 2012, Case No. [2012] EWCA Civ 5

The patent claimed a composition (commercially available as Algivon) for a wound dressing combining honey with a "gelling agent". The gelling agent increases viscosity to the extent that it results in a flexible sheet or pliable putty which can be moulded to fit the wound, providing a way to retain the honey at the wound site. All but one of the examples in the patent relied on sodium alginate as "a gelling and viscosity increasing" agent. Apimed brought an infringement claim against the manufacturer, Brightwake, of an allegedly infringing product. Brightwake’s product was a sheet formed from calcium alginate fibres and then coated with honey. Brightwake counterclaimed for revocation of the patent on the grounds of lack of novelty and obviousness. 

Held: on appeal, overturning the Patents County Court's finding of obviousness, Kitchin LJ focussed on the fact that the prior art paper taught solid honeys may be liquefied by warming and semi-solid honeys may often be liquefied by stirring. As such, the paper contemplated that the honey should be softened. This was contrary to the teaching of the patent. It also described the spreading of honey on a dressing pad or, alternatively, that it should be squeezed directly into a deep wound. There was no description of what may be said to be the heart of the invention of the Patent, namely the use of a gelling agent to increase the viscosity of the honey to such a degree that it can be formed into a flexible sheet or a pliable putty without the need for any separate dressing at all. There had been an error of principal by the first instance judge, because he had failed to identify the above differences between the prior art and the invention and whether those differences, without any knowledge of the invention, would have been obvious to the person skilled in the art.

UK - Teva UK v Merck Sharp & Dohme / Appeal

Teva UK Ltd v Merck Sharp & Dohme Corp, Court of Appeal, London, UK, 8 April 2011, Case No. A3/2010/0126/CHPCF

The English Court of Appeal has upheld the finding of the Patents Court that Merck's European Patent (UK) No. EP 0 509 752 B1 was invalid for lack of inventive step, due to a paper - whose authors included three representatives of Merck - published just six days before the priority date of the patent.  In doing so the Court of Appeal dismissed the appellant's argument that a relevant consideration when applying the test of obviousness was whether there was sufficient time between the publication of the prior art paper relied upon and the priority date of the patent for the skilled addressee to carry out certain routine tests that would have been necessary to arrive at the claimed invention.

The patent was concerned with a treatment for glaucoma which involved the co-formulation of timolol (a beta blocker), which was already widely prescribed for the treatment of glaucoma, and a carbonic anhydrase inhibitor designated by Merck as MK 507 and which came to be known as dorzolamide. The paper, referred to as "Nardin" by the Court, disclosed the concomitant administration of these two drugs, that is, they were administered at effectively the same time, but not their co-formulation.  Nardin further disclosed that the results were clinically and statistically significant.

UK - Gemstar-TV Guide International Inc. v Virgin Media Limited

Gemstar-TVGuide International Inc, Starsight Telecast Inc, United Video Properties Inc v. Virgin Media Ltd, Virgin Media Payments Ltd, Case No. [2011] EWCA Civ 302

The English Court of Appeal has dismissed the appeal by Gemstar against the earlier judgment of the Patents Court, which held that three of Gemstar's patents relating to various uses of electronic programme guides (interactive on-screen menu systems for digital television) were invalid.

The first instance judgment considered issues of novelty, obviousness and whether the claimed inventions were patentable at all or consisted of unpatentable excluded subject matter.  The appeal was only concerned with two of the three patents.  Rather than hear arguments on all the potential issues, the Court of Appeal considered novelty first, as if Gemstar could not succeed on this point, the appeal would be bound to fail.  In the event the Court of Appeal agreed with the first instance judge that the patents lacked novelty and that disposed of the appeal.  Although it would have been interesting to see the Court of Appeal's views on excluded subject matter, this judgment nevertheless provides a good illustration of the Court of Appeal's willingness to split the issues before it, in order to determine the case as expeditiously as possible.

A further issue worth noting was the comment made by Lord Justice Jacob (in one of his last judgments before his retirement from the Court of Appeal) regarding translations.  He strongly disapproved of the amount of time that had been taken up by disputes over the correct translation of prior art documents.  The judge's view was that in future any issues concerning translations should be determined at an early stage of the proceedings, if necessary by way of a court hearing specifically for that purpose.  It will therefore be important in future that litigants in the UK identify any potential issues concerning translations quickly and seek to resolve them without delay.

Read the judgment (in English) here.

Head note: Graham Burnett-Hall

UK - Shütz v. Werit / Appeal

Shütz (UK) Ltd v. Werit (UK) Ltd, Court of Appeal, London, UK, 29 March 2011, Case No. Case No: [2011] EWCA Civ 303

The facts of Shutz (UK) Ltd v Werit (UK) Ltd concern intermediate bulk containers (IBCs). These consist of an outer protective cage and a removable plastic inner bottle capable of holding 1000 litres of material. Schütz claimed to have patents protecting the IBCs at issue.

Werit’s infringement was alleged to be the supply of its own plastic bottles to be fitted (by a third party) into second hand Schütz cages. This gave rise to a number of disputed issues, including whether the IBCs were covered by the Schutz patents, whether those patents were valid and what effect the terms of supply contracts had on the alleged infringement. However, given that one of the patents did cover the IPCs and was valid, the stand-out questions was:

Was the placing of the Werit bottles in the Schütz cages by the third party “making” the patented IBC product, further to Section 60(1)(a) of the Patents Act 1977, and therefore an infringement?

UK - Les Laboratoires Servier v. Apotex / damages

Les Laboratoires Servier, Servier Laboratories Limited v. Apotex Inc, Apotex Pharmachem Inc, Apotex Europe Limited and Apotex UK Limited, High Court of Justice, Chancery Division, Patents Court, London, UK, 29 March 2011, Case No. [2011] EWHC 730 (Pat)

The issue decided in this case is whether a patentee who has obtained an interim injunction from a court to restrain infringement of a European patent (UK) which is subsequently held invalid should compensate the defendant for losses sustained as a result of being prevented by the injunction from selling goods manufactured by the defendant in infringement of a valid foreign patent owned by the same group of companies.

Servier contends that, as a matter of public policy, Apotex cannot recover damages for being prevented from selling a material whose manufacture would have been unlawful because it infringed a valid foreign patent. This is an application of the rule of law identified by the Latin maxim ex turpi causa non oritur actio (no action can arise from an illegal or immoral act), also known as the illegality defence.

Justice Arnold concludes that Apotex’s claim is barred by the ex turpi causa rule. It follows that Apotex must repay Servier the money which Norris J ordered Servier to pay Apotex.

Read the earlier post here.

Read the judgment (in English) here.
 

UK - Neurim Pharmaceuticals (1991) Ltd v Comptroller General of Patents / Referral CJEU

Neurim Pharmaceuticals (1991) Ltd v Comptroller General of Patents, Court of Appeal, London, UK, 8 March 2011, Case no. [2011] EWCA Civ 228

Facts
This case concerns Neurim’s application for an SPC on “melatonin”. Further to the requirements of Council Regulation 1768/92/EEC  Article 3(b) and (d) (the “SPC Regulations”), the application cited a first marketing authorisation. In this case it was for “Circadin-melatonin”, relating to the use of melatonin and excipients as a monotherapy for the short-term treatment of primary insomnia in over 55 year olds.

However, an earlier authorisation to place melatonin on the market exists. This is for the veterinary product Regulin that comprises melatonin and excipients. Regulin is used to improve the reproductive importance of pure bred and cross bred lowland sheep that are to be mated before the usual peak of reproductive activity. Both the Regulin product and the Circadin product were protected by patents. However, Circadin did not fall within the protection of the Regulin patent and vice versa.

 

UK - Mölnlycke v. Brightwake

Mölnlycke Health Care AB v. Brightwake Limited (trading as Advancis Medical), High Court of Justice, Chancery Division, Patents Court, London, UK, 25 February 2011, [2011] EWHC 376 (Pat)

The Patents Court held that the product claims of Molnlycke’s patent EP (UK) 0 633 757 relating to wound dressings were invalid and not infringed.

Mölnlycke commenced infringement proceedings in respect of Brightwake’s Episil and Episil Absorbent products. Brightwake counterclaimed that the product claims of the patent were invalid for lack of novelty and for lack of inventive step.

His Honour Judge Birss QC, sitting as a judge of the Patents Court, held that the Episil and Episil Absorbent products did not infringe the patent.

HHJ Birss QC held that claim 6 of the patent was novel in respect of the Brassington prior art but that the product claims were obvious over Brassington. The Judge found that claim 6 was not obvious over the Fabo prior art.

Read the judgment (in English) here.

Head note: Robert Fitt

UK - Virgin v. Delta and Virgin v. Premium

Virgin Atlantic Airways Ltd v. Delta Air Lines Inc, Court of Appeal, London, UK, 23 February 2011, [2011] EWCA Civ 162 and Virgin Atlantic Airways Ltd v. Premium Aircraft Interiors UK Ltd. & Anor, Court of Appeal, London, UK, 23 February 2011, [2011] EWCA Civ 163

The Court of Appeal has handed down two judgments in the long running litigation regarding Virgin Atlantic Airways’ patent EP (UK) 1 495 908 for flat-bed aircraft seats.

In 2007 Virgin commenced infringement proceedings against Premium Aircraft Interiors UK (known as “Contour”) who manufacture business class seats for a number of airlines including Delta and Air Canada. Contour counterclaimed that the patent was invalid and commenced opposition proceedings at the EPO. In 2009, the Patents Court held the patent to be valid but not infringed but later on that year on appeal the Court of Appeal overturned the finding of non-infringement and held the patent to be valid and infringed. Virgin subsequently requested appropriate remedies in view of this decision pending the decision of the TBA of the EPO.

UK - DataCard v. Eagle Technologies

DataCard Corporation v. Eagle Technologies Limited, High Court of Justice, Chancery Division, Patents Court, 14 February 2011, [2011] EWHC 244 (Pat)

The Patents Court held two of DataCard’s patents to be invalid. The Judge held that both patents would have been infringed by Eagle Technologies (“Eagle”) if they had been valid.

DataCard is one of the biggest suppliers in the world of card printers and related products and services including printer ribbons. Card printers are used to print on plastic cards such as credit cards, ID cards and loyalty cards. The two patents in issue were EP (UK) 1 458 572 (“the RFID Patent”) and EP (UK) 1 534 530 (“the Error Loading Patent”).

UK – Abbott v. Medinol

Abbott Laboratories Limited v. Medinol Limited, Patents Court, Chancery Division, High Court of Justice, London, UK, 12 November 2010, [2010] EWHC 2865 (Pat)

In a case concerning three patents for coronary stents, Abbott applied for declarations of non-infringement and orders for revocation in respect of EP (UK) 0 846 449 (‘449), EP (UK) 1 181 901 (‘901) and 1 181 902 (‘902). Medinol subsequently counterclaimed for infringement in respect of eight Abbott stents: small and medium Vision, small and medium Multi-Link 8, small and medium Xience and small and medium Xience Prime. Mr Justice Arnold held the ‘449 and ‘902 patents to be valid and ‘901 patent to be invalid. Medinol’s allegations of infringement all failed.