OOO Abbott and Godfrey Victor Chasmer v. Design & Display Limited and Eureka Display Limited, Patents County Court, London, UK, 30 May 2013, [2013] EWPCC 27
The Patents County Court held that Abbott’s patent regarding display panels used in shops was valid and infringed by the defendants. Abbott commenced proceedings against Design & Display and Eureka for independently infringing its patent, EP (UK) 1 816 931. Both defendants denied infringement and counterclaimed for revocation.
Mr Justice Birss held that the snap-in insert made by Design & Display and the snap-in insert made by Eureka infringed the patent when used in a display panel. Although indirect infringement was not admitted, Mr Justice Birss held that both inserts were means relating to an essential element of the invention claimed in claim 1 of the patent.
UK takes first steps towards ratifying the UPC agreement / DK: Two regional chambers proposed for the Unified Patent Court, by Nicholas Fox and Ben Hall, Simmons & Simmons
On 08 May 2013, an Intellectual Property Bill1 was announced in the Queen’s Speech which will enable the UK to implement the Unified Patent Court Agreement. The new bill, in addition to providing a basis for enabling the UK to ratify the Unified Patent Court Agreement, also makes a number of amendments to UK design law.
Clause 16 of the Bill will introduce a new section into the UK’s Patents Act giving the Secretary of State power to amend UK law to enable the Unitary Patent Court to take effect. There are no provisions in the Bill in relation to the Unitary Patent as any changes required to implement the Unitary Patent can be made under the existing powers the government has to amend national legislation to comply with EU obligations.
Swarovski-Optik KG v. (1) Leica Camera AG (2) Leica Camera Limited, Patents Court, Chancery Division, High Court, London, UK, 10 May 2013, [2013] EWHC 1227 (Pat)
The Patents Court held that Swarovski’s patent relating to sighting telescopes and riflescopes was valid and had been infringed by Leica.
Swarovski was the owner of EP (UK) 1 746 451 which related to sighting telescopes and riflescopes with a zoom factor greater than 4. Swarovski alleged that Leica had infringed the patent by the supply of riflescopes in its Magnus range. Leica counterclaimed that the patent was invalid because it was either not novel or obvious in light of the common general knowledge and the prior art as at the priority date. Leica also alleged that it was invalid due to added matter and insufficiency.
Mr Justice Vos held that the IOR riflescope sold before the priority date did not clearly and unambiguously disclose all the features of the claims of the patent and so the patent survived Leica’s novelty attack. Mr Justice Vos rejected Leica’s obviousness attacks based on common general knowledge and the four separate prior art citations relied upon by Leica. Mr Justice Vos also rejected Leica’s added matter and insufficiency attacks.
Mr Justice Vos held that Leica’s riflescopes infringed Swarovski’s patent.
Phil & Ted’s Most Excellent Buggy Company Limited v. (1) TFK Trends for Kids GmbH (2) Oliver Beger (3) Udo Beger, Patents County Court, London, UK, 8 May 2013, [2013] EWPCC 21
The Patents County Court held that TFK’s patent relating to a baby buggy was invalid.
Phil & Ted’s commenced proceedings for unjustified threats and revocation of TFK’s patent, EP (UK) 1 795 424. TFK responded with a counterclaim for infringement in respect of Phil & Ted’s Promenade buggy which has a seat which transforms into a carry cot and vice versa. Phil & Ted’s denied infringement and alleged claim 1 (the only claim in issue) was invalid for obviousness in light of a Chinese Utility Model Patent (Goodbaby), a UK patent application (Bigo) and common general knowledge based on a product called the Bugaboo Frog.
HHJ Birss QC held that the Promenade buggy fell within the scope of claim 1 of the patent but noted that the points on non-infringement were squeezes on validity.
HHJ Birss QC held that the patent was invalid for obviousness in light of Goodbaby but that the attacks based on Bigo and common general knowledge failed.
HTC Europe Co. Ltd. V. Apple Inc. and Apple Inc. v. HTC Corporation, Court of Appeal, London, UK, 3 May 2013, [2013] EWCA Civ 451
The Court of Appeal allowed in part Apple’s appeal of the decision of the Patents Court that one of its patents was invalid.
The original trial before Mr Justice Floyd concerned four actions between HTC and Apple regarding four patents owned by Apple. Following the judgment, HTC and Apple settled their dispute and so HTC did not take part in the appeal.
The appeal only concerned the validity of two of the Apple patents, EP (UK) 2 098 948 (“the ‘948 Patent) and EP (UK) 1 964 022 (“the ‘022 Patent”). The ‘948 Patent relates to computer devices with touch sensitive screens which are capable of responding to more than one touch at a time and the ‘022 Patent relates to ways unlocking computer devices with touch sensitive screens. The issues before the Court of Appeal were as follows:
Brigade (BBS-Tek) Limited v. Amber Valley Limited, Patents County Court, HH Judge Birss QC, 19 April 2013, London, UK, Case No. [2013] EWPCC 16
In this judgment, HH Judge Birss QC has found the Claimant’s (“Brigade”) UK Patent No. 2,318,662 (“the Patent”) partially valid and infringed by the Defendant’s (“Amber Valley”) vehicle reversing alarm product called Ecolarm.
The Patent relates to an alarm (or other device) that enables an individual to locate a given object and take appropriate action, and the use of such an alarm as a locating device, the core idea of the invention being an alarm in which the sound emitted is broad band noise (e.g. white noise). Tonal sounds, even complex tonal sounds, were deemed not to be broad band noise, as construed in the context of the Patent.
In the course of the proceedings, Brigade unconditionally applied to amend the Patent effectively limiting the claimed devices (and claimed use thereof) to “indicating” devices or vehicle sirens. There was no dispute as to the allowability of the amendments. Amber Valley challenged the validity of the Patent (as amended) on the grounds of added matter, anticipation and obviousness.
Merck Canada Inc and Merck Sharp & Dohme Ltd -v- Sigma Pharmaceuticals plc, Court of Appeal (Civil Division), Patten LJ, Black LJ and Kitchin LJ, London, UK, Case No. [2013] EWCA Civ 326
Following an appeal by Sigma against a decision of HH Judge Birss QC on 27 April 2012 that the Specific Mechanism (the special derogation from the normal free movement rules which was negotiated as part of the accession arrangements of Poland and a number of other Member States that acceded to the EU in 2004 and is set out in Annex IV, Chapter 2 of the Act of Accession) does not require the patent holder to demonstrate its intention to oppose importation before such activity is rendered an infringement, the UK Court of Appeal has agreed to make a reference to the Court of Justice of the European Union (“CJEU”) requesting clarification as to the proper interpretation of the Specific Mechanism.
Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others, High Court of Justice, Patents Court, Justice Arnold, London, UK, 22 April 2013, Case No. [2013] EWHC 923 (Pat)
Nestec alleged that Dualit had infringed European Patent (UK) No. 2 103 236 (“the Patent”) by supplying coffee capsules compatible with Nestec’s Nespresso coffee machines. Dualit denied infringement and counterclaimed for revocation of the Patent.
On validity, Mr Justice Arnold held that none of the Patent's claims were entitled to priority from the Priority Document and that claims 1, 2, 7 and 8 lacked novelty over the Priority Document. The Priority Document disclosed arrangements having all the features of the relevant claims. As the claims of the Patent were broader than the disclosure of the Priority Document, the claims lacked novelty over the Priority Document even though they are not entitled to priority from it. Dulalit also contended the Patent lacked novelty over the use of "Essenza" machines during the priority interval. On the basis that (a) none of the claims were entitled to priority and (b) the Essenza machine fell within the Patent's claims, Mr Justice Arnold concluded that all the claims lacked novelty in the light of the information made available to the public by the prior uses. Dualit did not succeed on the other grounds of invalidity it relied upon.
On infringement, Mr Justice Arnold held that Dulait's NX capsules in combination with eight of the ten Nespresso machines in the case fell within claim 1. The Judge then considered whether Dualit was liable for contributory infringement under section 60(2) of the UK Patents Act based on Article 26 of the Community Patent Convention ("CPC"). Of particular interest, Mr Justice Arnold considered whether Dulait's NX capsules constituted “means relating to an essential element of the invention”. There appeared to be no English authority as to the correct approach to this requirement which is directly on point although, it has been considered by the courts of a number of other countries which have implemented Article 26 CPC, notably the Netherlands and Germany. Mr Justice Arnold favoured the German Court's approach: the fact the element was known in the prior art did not prevent it being an essential element of the claim, but if a feature was of completely subordinate importance for the technical teaching of the invention it could be regarded as a non-essential element. The NX capsule was held to constitute means relating to an essential element. Although claim 1 only requires the capsule to have a guide edge in the form of a flange, the flange played a significant role in the way the claimed invention worked.
International Stem Cell Corporation v Comptroller General of Patents, Patents Court, London, UK, 17 April 2013, Case No. [2013] EWHC 807 (Ch)
Following an appeal by International Stem Cell Corporation (“ISCC”) against a decision that the inventions disclosed in two of its patent applications relating to human stem cells were excluded from patentability, the UK High Court (Deputy Judge Carr QC) has made a reference to the Court of Justice of the European Union (“CJEU”), requesting that the term “human embryos” in Article 6(2)(c) of Directive 98/44/EC on the Legal Protection of Biotechnological Inventions (“Biotech Directive”) be clarified. In particular whether this includes unfertilised human ova whose division and further development have been stimulated by parthenogenesis, and which, in contrast to fertilised ova, contain only pluripotent cells and are incapable of developing into human beings.
This follows guidance given by the CJEU on the correct interpretation of Article 6(2)(c) in Brüstle (Case C-34/10) in which it ruled inter alia that any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitutes a ‘human embryo” within the meaning of Article 6(2)(c) due to it being capable of commencing the process of development of a human being just as an embryo created by fertilisation of an ovum can do so.
Resolution Chemicals Limited v H. Lundbeck A/S, High Court of Justice, Patents Court, London, UK. Case No. [2013] EWHC 739 (Pat)
Resolution sought revocation of Lundbeck’s SPC for escitalopram on the basis of the alleged invalidity of the basic European Patent (UK) No. 0 347 066 (“the Patent”). Escitalopram is the (+) enantiomer of citalopram, a selective serotonin re-uptake inhibitor used to treat depression.
On 3 January 2013 Lundbeck issued an application seeking, amongst other things: 1. Summary judgment on the ground that Resolution was precluded from bringing its claim The validity of the Patent was previously challenged unsuccessfully by Arrow, Teva UK and Teva Pharmaceutical Industries Ltd (“Teva PI”), and it was common ground that Arrow, Teva UK and Teva PI would be precluded by issue estoppel and the doctrine of abuse of process from challenging the validity of the SPC on the ground that the Patent was invalid. Lundbeck argued that Resolution was also precluded from doing so by virtue of privity of interest with Arrow, or alternatively with Teva UK or Teva PI.
Mr Justice Arnold reviewed the law on privity, confirming that what is required is “a sufficient degree of identification between the relevant persons to make it just to hold that the decision to which one is party should be binding in the proceedings to which the other is party” and that this may or may not be the case for group companies. He applied the law to the facts as follows.
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