United Kingdom Patent Decisions 2013

This report highlights seven patent cases from the UK in 2013 concerning infringement by making, damages liability, stays, patentable subject-matter, admissibility of post-dated evidence on inventive step, sufficiency, and privity of interest.

This report highlights key UK patent decisions from the past year, signalling major developments that may be of interest to comparative lawyers. Most notably, in 2013 there were two cases decided by the Supreme Court (the UK's highest court), on infringement and damages liability, respectively. There were also a number of important Court of Appeal decisions, five of which are mentioned here.
The first Supreme Court case, Schütz (UK) Ltd v. Werit (UK) Ltd, 1 concerned infringement by ''making''. The court held that providing replacement bottles for a product comprising a bottle nested in a cage did not amount to infringement. This was because the bottles were freestanding, replaceable components of the patented product, distinct from its inventive concept. 2 The court's multi-factorial approach differed slightly from that of the German Federal Supreme Court when it considered the same patent in Palettenbehälter II (Pallet Container II). 3 The main difference between the jurisdictions was that the UK Supreme Court considered multiple factors as part of a single test and rejected the need for remittal to adduce additional market evidence, while the German Federal Supreme Court posited a staggered approach, assessing first whether trade opinion regarded re-bottling as a usual maintenance measure, and only then considering whether the invention's technical effects resided in the bottle or the cage. On remittal, the Munich Court of Appeal held there was no infringement; though an appeal is still possible. 4 In the UK, Schütz v. Werit was subsequently applied by the High Court in a case involving coffee cartridges, Nestec SA v. Dualit Ltd 5 (patent found invalid by both the High Court and the EPO in Nestec/Device for Extraction of a Capsule 6 .) The second Supreme Court case, Virgin Atlantic Airways Ltd v. Zodiac Seats UK Ltd, 7 held that damages were not payable for a patent found valid and infringed in the UK, but subsequently revoked in EPO opposition proceedings. Overturning established precedent to the contrary, the court held that cause of action estoppel did not apply in such a case. The Virgin case has interesting comparative dimensions, particularly in relation to issues that were not raised by the facts, namely, whether damages will be recoverable once they have been either ordered and assessed or actually paid over. In Germany, there is a statutory framework governing both scenarios. In the Netherlands, recovery will depend on whether the damages award is ''implemented'' or ''enforced'' under Art. 50(2)(a) of the Dutch Patents Act. This would seem to cover actual payment but not necessarily antecedent stages. French law is similarly uncertain on this point, following the authorities of Wehrkamp-Richter v. Guitay 8 and Scherrer v. Newmat. 9 An important practical consequence of Virgin was the Supreme Court's recommendation that the lower courts re-examine the practice of rarely granting stays when EPO proceedings are pending, pursuant to guidance in Glaxo Group Ltd v. Genentech Inc. 10 An opportunity for re-examination arose in the Court of Appeal in IPCom GmbH & Co Kg v. HTC Europe Co Ltd. 11 Though the decision formally echoed the Supreme Court's criticism of Glaxo and made cosmetic changes to the guidelines, Floyd LJ's multifactorial restatement preserved the essential point that if there is concern about EPO delay and a commercial interest in achieving certainty domestically (which will almost always be the case), a stay may be denied. While this result benefits patentees, it seemingly evades the Supreme Court's repeated emphasis on the EPO's broad territorial impact, the undesirability of wasted costs, and sceptical receipt of the assumption that the EPO will always be slower. Given the significance of this assumed delay, it is curious that no empirical evidence was adduced in the cases as to the average duration of proceedings in both fora, as well as the number of patents invalidated or amended. The EPO's opposition decision in Cubist Pharmaceuticals/Daptomycin 12 was cited in IPCom absent any context identifying how the duration of that specific dispute concerning a biotechnology patent compares with disputes in other fields of technology. Existing studies would seem to contradict Floyd LJ's assertion that ''a large number of oppositions fail'' or that EPO proceedings are often ''of no effect at all''. From 2000-2005 (and recent data seem concordant), 32% of oppositions failed, but 38% resulted in findings of invalidity and 28% in amendment (affecting, in turn, national proceedings). 13 Stepping back, Virgin and IPCom can be seen as examples of UK higher courts deferring to the specialist expertise of lower courts with day-to-day practical experience of patent proceedings. This is a topic of great interest following recent controversial forays into patent law by the US Supreme Court and the Court of Justice of the European Union, as well as heated discussion surrounding the Unified Patent Court. UK exceptionalism from the EPO approach to the computer program exclusion to patentable subject-matter. Though the programming improvement enabling multitouch touchscreen control in HTC v. Apple was held patentable, as was the microcontroller running Java applications in HTC Corp v. Gemalto SA, 16 an emailcontrolled data-retrieval system was found to be unpatentable subject-matter in Lantana Ltd v. Comptroller-General of Patents. 17 Generics (UK) Ltd (t/a Mylan) v. Yeda Research & Development Co Ltd 18 affirmed the admissibility of post-dated evidence to challenge the plausibility of an inventive step and to assess the true nature of a patent's technical advance, showing a tightening in some cases of the inventive step standard as well as increasing convergence in UK and EPO approaches.
Regeneron Pharmaceuticals Inc v. Genentech Inc 19 again placed significant emphasis on ''plausibility'' and provided an example of an antibody patent deemed sufficient because it disclosed a ''principle of general application''. Two counterexamples of insufficient patents can be seen in Eli Lilly & Company v. Janssen Alzheimer Immunotherapy 20 (also concerning antibodies) and Omnipharm Ltd v. Merial 21 (concerning parasiticide formulations). Further, Regeneron v. Genentech held that an invention may be non-obvious if the prior art suggests that a particular molecule among multiple targets may have potential therapeutic use, but does not disclose how or if that use is actually achieved.
The final Court of Appeal case of note is Resolution Chemicals Ltd v. H. Lundbeck A-S, 22 which clarified the law on privity of interest and confirmed that patent validity may be contested by a litigant belonging to a corporate group involved in previous proceedings if it had no prior concrete legal interest. After an unsuccessful judicial recusal application, the case settled and will not proceed to trial.
On 12 December 2013, CJEU guidance was given in relation to two UK referrals, Actavis Group PTC EHF, Actavis UK Ltd v. Sanofi, Sanofi Pharma Bristol-Myers Squibb SNC intervening 23 and Eli Lilly & Company Ltd v. Human Genome Sciences Inc 24 (and one Dutch reference, Georgetown University v. Octrooicentrum Nederland 25 ) on supplementary protection certificates. An interesting stem cell patent referral is pending on the patentability of ''parthenotes'' (activated unfertilised oocytes).
Finally, observers of the UK system should note that in 2013 the Patents County Court was replaced by the ''Intellectual Property Enterprise Court'', a first instance