For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 4 August 2015

From Robin Ray to Purple Penguin: a muddle over a commissioned logo

From Katfriend and one-time guest Kat Rebecca Gulbul, who is proving to be a very useful extra pair of paws during the summer lull, comes this post on last Thursday's decision of Judge Richard Hacon, of the Intellectual Property Enterprise Court, England and Wales, in Atelier Eighty Two Limited v Kilnworx Climbing Centre CIC & Others [2015] EWHC 2291 (IPEC). Explains Rebecca:

This was an action to establish ownership of the copyright in three commissioned logos, shown on the right.  Kilnworx commissioned the logos from Purple Penguin Design under an agreement which was made between Lionel Bunting (a director of Kilnworx) and Rik Kirk (employee and director of Purple Penguin). The payments made to Purple Penguin had been made by Lionel Bunting’s other company Atelier (of which he was the sole director and shareholder). Kilnworx agreed to reimburse Atelier for the costs, but never did. Atelier then went to court, claiming that since the payments had been made by them, they owned the copyright in the logos and that Kilnworks and the other defendants had infringed them through its use. The issue at stake was whether Kilnworx had the benefit of an assignment of the rights, had been licensed to use them or did not have any claim on the logos at all. 

The facts

Messrs Bunting, Sandhu and Shabbir thought of the idea of a climbing centre in late 2009, incorporating Kilnworx in May 2011. After they decided they needed a logo, in August 2011 Bunting emailed Mr Kirk from Purple Penguin to ask him to create the logos. He replied with a quote of £300-£500 for designing the logos. Further emails followed, in which Bunting identified himself as the director of Atelier.  Purple Penguin invoiced Kilnworx for their work on the logos in September 2011, requesting payment of £300; payment was not made by Kilnworx but by Atelier. Four other invoices followed, of which three were addressed to Kilnworx and one to Atelier. All four were paid by Atelier. Additional payments were also made by Atelier on other matters relating to the Kilnworx business. Kilnworx opened in June 2012 but by September was under financial pressure. At a shareholders' meeting in September of that year, it was agreed that Atelier would invoice Kilnworx for all the expenses it had incurred thus far, including the costs of the logos.

Bunting resigned as director of Kilnworx in November 2012, and it was around then that he emailed his previous business partners to tell them he did not believe that Kilnworx owned the copyright in the logos. His view was that Kirk owned the logos and that Atelier was the only entity licensed to use them. He offered to transfer ownership of the copyrights to Kilnworx for £5,000, but his offer was rejected. Kilnworx believed that they were entitled to use the logos. In December 2012, Kilnworx explained to Bunting that they did not have the funds to pay Atelier’s invoices.

The law

Judge Hacon cited Griggs Group Ltd v Evans [2005] EWCA (Civ) 11, an earlier case in which the copyright in the Dr Martens AirWair logo was disputed [noted by the IPKat here]. There Evans, a freelance designer, had been commissioned to design a logo for Griggs, but there was no agreement regarding the ownership of the copyright. He therefore contended that he had retained both the legal and equitable interests in the copyright and that Griggs only had a licence to use the logo. On appeal Jacob LJ referred to the principles that govern the rights of a client commissioning a copyright work and those of the contractor who carried out the work [found in Robin Ray v Classic FM plc [1998] FSR 662 at 640]. In such cases, the court had to determine whether the client under the contract had agreed to pay for the copyright and whether they had either bought the copyright, bought a copyright licence or nothing. The commission of a work implied that, at the minimum, a licence had been purchased. The conclusion in Griggs Group Ltd v Evans was that there had been no implied term regarding title to copyright, and only a limited licence.

Judge Hacon summed up the principles to be applied at paragraphs 22 and 23 of his judgment. He said that where the design of a logo is commissioned, the starting point will be as explained in Griggs, namely that, in order to give business efficacy to the contract of the commission, it will be presumed that the client can prevent others from using the logo. This will either mean that the client retains ownership of the copyright or that he has an exclusive licence to use it.

The decision 

Judge Hacon found that Bunting had entered the contract with Purple Penguin for the creation of the logos on behalf of Kilnworx and in his capacity as director of the company. An oral agreement was thus made between  Bunting and Kirk (on behalf of Purple Penguin), its express terms being that Purple Penguin would design logos for use by Kilnworx and that Kilnworx would pay Purple Penguin the going rate (between £300 and £500). A £300 payment was later made for the logos.

There was also an implied term to the contract, namely that Kilnworx would own the copyright in the logos. This is a usual term to be implied in such contracts. Purple Penguin was the owner of the legal interest in the copyrights at the time the logos were created and held the copyrights on trust for Kilnworx.  By the written agreement of 23 August 2013 between Purple Penguin and Atelier, the legal interest was assigned to Atelier. However, Atelier took the legal interest in the copyrights, subject to Kilnworx’s equitable interest, of which it was aware. Judge Hacon therefore found that Kilnworx was entitled to an assignment of the legal interest in the copyrights from Atelier and that none of the defendants had infringed the logos’ copyrights.


This decision is reasonable, as Kilnworx had commissioned the logos for their use. They therefore had an equitable entitlement to them. Purple Penguin initially owned the legal interests as they had produced the logos, but assigned these through their agreement with Atelier. Payment of the invoices by Atelier did not entitle them to the equitable interests. The principles of Robin Ray v Classic FM plc [1998] are still relevant to commissioned work and achieve a fair balance between the rights involved.

This Kat never ceases to be surprised at the number of occasions in which businesses that commission logos forget to take an assignment of the copyright and, if necessary, unregistered Community design right, in order to protect their interests in the event of  (i) a relatively small likelihood of infringement of their logos and (ii) a far greater prospect of being dragged into annoying litigation over their entitlement to them. The fault lies with those of us who fail to advise with sufficient clarity and firmness that commissioned artwork in logos does not automatically become the property of the business using the logo.

The AMBA Consultation on the Reform of the Boards of Appeal

Fellow Kat Jeremy briefly reported that AMBA (the Association of the Members of the Boards of Appeal) has launched its own consultation on its proposed new structure of governance for the Boards of Appeal of the European Patent Office.  Now, Merpel has had a chance to purr-ruse the proposal, and would like to share her thoughts.

AMBA: not to be
confused with Amber
The IPKat has already reported that the EPO launched a consultation on its proposed new governance structure for the Boards of Appeal, set out in document CA/16/15.  That consultation closed on 30 June 2015.  There was perceived a need for reform of the current structure for a number of reasons, but chiefly in order to increase the actual and perceived independence of the Boards of Appeal following Enlarged Board of Appeal decision R19/12.  The main feature of the proposal was to set up a new position of President of the Boards of Appeal, to whom certain powers of the President of the EPO would be delegated, and a Board of Appeal Committee (BOAC), to be composed of seven members, with three being members of the Administrative Council and four being external members to be chosen by the Council from among presidents and/or senior judges of national, European and international courts upon proposals from the delegations.  AMBA, the Presidium of the Boards of Appeal, the European Patent Lawyers Association and the Council of Bars and Law Societies of Europe, among others, have all commented on these proposals (reported by the IPKat here and here).  The EPI (the Institute of Professional Representatives before the European Patent Office) has also commented and provided its own proposal.  In the comments, the legitimacy of the proposed transfer of powers from the President of the EPO to the President of the Boards of Appeal has been questioned, and the constitution and proposed function of the BOAC has also led to doubts.  Moreover, the conflation in document CA/16/15 of the independence of the Boards of Appeal with their efficiency and the management of conflicts of interest of Board members has led to adverse comment.

The new AMBA proposal, dated 18 June 2015, reiterates the earlier concerns, but then takes the further step of proposing alternative possible reforms to the structure and governance of the Boards of Appeal in order to increase their autonomy.  It is a detailed and considered document.  The main feature of the proposal is to have, in place of the proposed BOAC of CA/16/15, a different body, called (for the sake of nominative differentiation) the "Senate of the Boards of Appeal", that would have external members (in the same way as the proposed BOAC), but, importantly, would include a majority of Board of Appeal members.  This would integrate better with the already existing "Presidium of the Boards of Appeal", whose residual function under the CA/16/15 proposal was unclear and seemed rather limited.  AMBA's proposals are analysed with reference to accepted standards for the governance of the judiciary, embodied in the Burgh House Principles on the Independence of the International Judiciary, and the Council of Europe recommendations on the judiciary CM/Rec(2010)12,  "Judges:  independence, efficiency and responsibilities".
The section of the AMBA website with the consultation ( also has useful background materials (see menu on the right hand side), including the background and key issues, a summary of the CA/16/15 proposal, a summary of the AMBA proposal, a summary of the EPI proposal, and a comparison table of these different proposals.  There is also background information on each of the areas covered by the AMBA consultation (which mirrors the structure of the EPO consultation), such as efficiency, conflicts of interest, and appointment and re-appointment of Board of Appeal members.
Readers are of course very welcome, nay encouraged, to comment here, but it will be of more benefit to the world of IP in general to respond to AMBA at  There is no specific deadline for response, but Merpel believes that the reform of the structure of the Boards of Appeal will be discussed at the Administrative Council meeting in December, so it would assist AMBA to have feedback in good time before then (Merpel has also noticed an additional meeting of the Administrative Council "to be confirmed" on 15 September, and is not sure what this will be for, but she does not understand it to be to consider CA/16/15.)

As ever, Merpel welcomes comments, but begs to remind readers of the following:
Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous".  Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person).   The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning of the comment itself (for example, start your comment with "Descartes says: You forgot one point ..."). This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string.  Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

Microsoft v Motorola: US court grants damages for attempted enforcement of standard essential patents in Germany

Both Motorola and Microsoft are members of the standard setting organisations Institute of Electrical and Electronics Engineers ("IEEE") and the International Telecommunication Union ("ITU"). Motorola owns numerous patents that are essential to the IEEE 802.11 wireless local area network ("WLAN") Standard ("802.11 Standard") and the ITU H.264 advanced video coding technology standard ("H.264 Standard").

Motorola has submitted several Letters of Assurance to the IEEE in connection with the 802.11 Standard stating that it "will grant" or "is prepared to grant" a license under RAND [Reasonable And Non Discriminatory] terms for its patents essential to the 802.11 Standard. A typical Motorola Letter of Assurance to the IEEE provides, in relevant part:
The Patent Holder will grant [or is prepared to grant] a license under reasonable rates to an unrestricted number of applicants on a worldwide, non-discriminatory basis with reasonable terms and conditions to comply with the [Proposed] IEEE Standard.
Similar letters were issued to ITU in connection with the H.264 Standard. Microsoft makes use these standards in some of its products, notably the XBox.

On October 21 and 29, 2010 Motorola sent letters to Microsoft offering to license its standards-essential patents (SEP) for the 802.11 Standard and H.264 Standard. The offer asked for a 2.25% royalty rate on the price of all end products Microsoft sold utilizing the technologies protected by these patents. Microsoft regarded these terms as blatantly unreasonable and responded by filing a breach of contract case against Motorola in the Western District Court of Washington, claiming that Motorola had violated its agreement with the IEEE and ITU to provide reasonable and non-discriminatory terms of licensing to all potential licensees on a global scale.
During the pending US litigation, Motorola sued Microsoft in Germany for infringement of two of its SEP, EP 0 538 667 and EP 0 615 384. This was a grave problem for Microsoft, because its European distribution center was located in Germany, and a German injunction would have prevented distribution in the whole of Europe. In anticipation of the German injunction, Microsoft moved its distribution center to the Netherlands, at the cost of approximately USD 11.5 million.
On 2 May 2012, the Landgericht Mannheim granted the injunction. Shortly before, Microsoft had requested, and obtained, a temporary restraining order and preliminary injunction from the US District Court to enjoin Motorola from enforcing any German injunctive relief it might obtain.
Subsequently the District Court, and the 9th Circuit Court on appeal, held that Motorola’s letters of assurance constituted a contract with the standard setting organizations that barred Motorola from seeking injunctive relief based on its standard essential patents. Microsoft was a third party beneficiary entitled to rely on these contracts (Microsoft Corp. v Motorola, Inc.,Motorola Mobility, Inc., and Gen. Instrument Corp,  696 F.3d 872 [2012]).

Microsoft sought damages in connection with Motorola’s German injunction (which was never enforced), notably the cost for the relocation of its distribution center (USD 11.5 million) and attorney fees (USD 3 million). After a jury trial, the jury found that Motorola had indeed breached its contractual obligations and Microsoft was entitled to damages in the amount of USD 14.5 million for its expenses in connection with the German injunction.
In an opinion filed 30 July 2015, the 9th Circuit affirmed the decision. Notably, the 9th Circuit Court rejected Motorola’s reliance on the Noerr-Pennington doctrine, which shields individuals from, inter alia, liability for engaging in litigation. The Court held that the doctrine does not immunize a party from actions that amount to a breach of contract. Enforcing a contractual commitment to refrain from litigation does not violate the First Amendment. The Noerr-Pennington doctrine did not immunize Motorola from liability for breach of its promise not to seek injunctive relief.

This decision comes on the heels of the European Commission finding Motorola abusing a dominant market position for failing to license its standard essential patents relating to the European Telecommunications Standardisation Institute's (ETSI) GPRS standard on RAND terms to Apple. On 29 April 2014, the Commission announced “that it was abusive for Motorola to both seek and enforce an injunction against Apple in Germany on the basis of an SEP which it had committed to license on FRAND terms and where Apple had agreed to take a licence and be bound by a determination of the FRAND royalties by the relevant German court. The Commission also found it anticompetitive that Motorola insisted, under the threat of the enforcement of an injunction, that Apple give up its rights to challenge the validity or infringement by Apple's mobile devices of Motorola SEP.” The Commission did not, however, impose a fine on Motorola.

Tuesday tiddlywinks

Henry Carr: a portrait in search of a caption?
Hurrah for Henry!  It was with a mixture of excitement and pleasure that this Kat read of the canonisation annointment appointment of Henry Carr QC as a judge of the Chancery Division of the High Court, England and Wales.  Unlike some of the current members of the Patents Court, Henry is no stranger to intellectual property, a field in which he has practised since the 1980s: indeed, he is a fully-fledged member of the IP community and his exploits as a Deputy Judge have been recorded on a number of occasions on this weblog (see eg Healey v Jensen here, International Stem Cell Corporation v Comptroller of Patents here).  Merpel joins this Kat in looking forward to seeing what Henry can do, and how elegantly he can perform the increasingly important judicial function known as "cut-and-paste". Meanwhile, you can enjoy watching him giving this excellent talk on design protection back in 2012.

Many people in big business still think
that SMEs look something like this ...
Around the weblogs 1. Intellectual property intelligence company Aistemos, which has pioneered both the Cipher patent analytics platform and the not-for-profit ORoPO Foundation, which seeks to provide accurate and reliable patent ownership information via the Open Register of Patent Ownership, has now launched a more informal, interactive and user-friendly weblog which you can try out here. "IP policy for SMEs -- but which SMEs?" is the question posed by IP Draughts' Mark Anderson, asking readers to contrast the entitlement of the fictitious Xavier, Yvonne and Zac to be targeted by government beneficence. 

Around the weblogs 2.  Over on The SPC Blog you'll find a report by Jan Pot and Mark van Gardingen (Brinkhof) on some pretty powerful litigation before the District Court, The Hague, on a patent for a proposed zinc salt of rosuvastatin (right): was it a "pharmaceutically acceptable salt" as claimed in the basic patent, which had now been extended into SPC-Land? (Note: this case affects an SPC but it's really a patent case: you can check it out here).  Remaining in the zone of patent law, PatLit carries a guest blog from the Wragge Lawrence Graham duo of Paul Inman and Andrew Maggs on inventive step and the role of the "obvious to try" test in Teva v Leo [Merpel posted on this very case yesterday, so now you have two commentaries to consider]. On Class 46, guest Kat Mark picks up a slightly surprising decision of the Swiss Federal Administrative Court to the effect that the Yves St Laurent logo couldn't shoo away a not-dissimilar Skinny Love logo (the two are pictured on Class 46 and also on the increasingly colourful MARQUES Facebook page.

Fancy a bit of hands-on European patent filing? The European Patent Office is holding its second Online Services User Day of 2015 in Zürich on 22 and 23 October. This event offers you a chance to attend a combination of practical PC workshops, not to mention seminars about the EPO's patent granting procedure. The hands-on sessions include workshops on both the new online filing (CMS) system and the current online filing software, these two options being covered in separate workshops (ie  remember to pick the one you want when you register for the event). Full details about the programme can be found hereThe deadline for registration is 4 October 2015 and it's first-come, first-served.  For registration details click here.

Monday, 3 August 2015

No traditional knowledge for hair loss treatment: another alleged attempt to patent traditional knowledge does not bear scrutiny

This Kat was perusing the Pune Mirror, and came across another allegation that the Traditional Knowledge Digital Library, a unit of the Council of Scientific and Industrial Research (CSIR-TKDL), had once again thwarted an attempt to get a patent: this time on a medicinal composition containing turmeric, pine bark and green tea for treating hair loss.  The source of the article was a statement released by the Indian Ministry of Science and Technology.  It bears repeating in full:

India Foils UK Company’s Bid to Patent Use of Turmeric, Pine Bark & Tea for Treating Hair Loss 
India once again has been successful in protecting its traditional knowledge by preventing an attempt made by Europe's Leading Dermaceutical Laboratory-Pangaea Laboratories Limited, to take patent on a medicinal composition containing turmeric, pine bark and green tea for treating hair loss. 
Traditional Knowledge Digital Library (TKDL), a Unit of Council of Scientific and Industrial Research, located the patent application filed at European Patent office by M/S Pangaea Laboratories Limited and filed pre-grant opposition along with prior-art evidences from TKDL, proving that turmeric, pine bark and green tea, are being used as a treatment for hair loss, since long in Indian systems of medicine like Ayurveda and Unani. The above UK based company had filed the patent application at European Patent office in February, 2011. CSIR-TKDL Unit had filed evidences from TKDL on January 13, 2014 after the patent application got published on website, pursuant to which the patent application is finally deemed to be withdrawn by the applicant on June 29, 2015. Till date CSIR-TKDL Unit has achieved success in about 200 such cases without any cost. 
Recently, CSIR-TKDL Unit has foiled an attempt of M/S Colgate-Palmolive Company to patent a mouthwash formula containing herb (Nutmeg- Jayaphal) extract used in Indian traditional systems of medicine to cure oral diseases, at European Patent office. 
Traditional Knowledge Digital Library of Council of Scientific and Industrial Research (CSIR-TKDL), headed by Dr. Archana Sharma, submitted proof in the form of references from ancient books in this case, which said the herb and its extracts of Myristica Fragrans were historically used for oral diseases in Indian systems of medicine. 
The last time that this Kat saw such a statement, he unleashed Tufty the Cat to investigate, and you can read the resulting blogpost here.  This relates to the Colgate-Palmolive Company patent application on a mouthwash, referred to in the penultimate paragraph of the above statement.  (Tufty has analysed a further 23 claims for the TDKL here and concluded that 15 out of the 23 are false).  Reluctant to call in a feline favour for a second time in two weeks, this time he decided to investigate himself.  Of course, the statement above makes no mention of anything useful such as the patent application number, but this Kat tracked it down from the applicant and filing date as 11154255.1. publication number EP236160.

Regular readers will be unsurprised that the truth is rather different from what the statement portrays.

The problem in this case is that the patent application concerned is hardly about "turmeric, pine bark and green tea" at all.  Claim 1 as originally filed reads as follows:
A method of treating hair comprising the steps of: a) providing a hair building solid agent for use on, or with, one or more of hair, skin and hair building solids for altering and/or maintaining the electrostatic charge of the hair and/or skin such that it has a substantially negative polarity; b) applying said hair building solid agent (30) to one or more of hair (10), skin and hair building solids (20); c) providing hair building solids; and d) applying hair building solids (20) to hair (10) before and/or during and/or after applying the hair building solid agent (30); characterised in that the hair building solid agent (30) is applied as a spray on to one more of the hair (10), skin and hair building solid (20).
See any reference to turmeric, pine bark and green tea? No, because (although the application is admittedly somewhat unclear) what is presented as inventive in the application and in claim 1 is achieving an electrostatic effect in the interaction of hair building solids with hair.  This is obtained by use of a naturally amphoteric substance such as: a surfactant, a conditioner, cocamidopropylbetaine, dodecylbetaine, cocoamphoglycinate, oleyl betaine, soyamidopropylbetaine and an amino acid; in combination with a water resistant agent, such as octylacrylamide copolymer, C12-22 alkylmethacrylate copolymer, PVP/dimethylaminoethylmethacrylate copolymer, polyquaternium 69, isobutylene ethylmaleimide copolymer, isobutylene hydroxyethylmaleimide copolymer, polymethylsilsesquioxane and polyurethane-14 AMP-Acrylates copolymer.  (If these terms mean nothing to you, worry not - all you have to know is that they are not turmeric, pine bark, or green tea.)

You have to get to claims 10 and 11 before you can even guess what all the fuss is about.  These read as follows:
10. The method of any preceding claim, in which the hair building solid agent (30) includes one or more pharmacologically active ingredient for treating one or more of hair loss, thinning hair and skin conditions.
11. The method of claim 10, wherein the pharmacologically active ingredient is one or more of finasteride, dutasteride, spironolactone, minoxidil, nitric oxide donators, β-glucan, saw palmetto, resveratrol, curcumin, marine extracts, polycyanidins, superoxide dismutase, superoxide dismutase mimetics, taurine, plant sterols, pine bark extract, melatonin, green tea, caffeine, copper peptides, copper PCA, EUK-134, copper(II) 3,5-disopropylsalicylate, dimethylmethoxy chromanol, catalase, catalase mimetics and hydrolysed lupine protein.
The European Search Opinion of 19 July 2012 raised objections of novelty based on four documents against several of the claims, including claims 10 and 11.  The closest state of the art was considered to be D1 (WO 2008/135979), which was considered novelty destroying for claim 10, and in respect of claim 11 it was stated "All compounds mentioned as further ingredients in the composition are well-known in the fields of hair treatment as described as such in the present application".

The application cannot be fairly described as trying to "patent" the claim 11 ingredients at all - the application is simply clarifying that the composition can additionally include conventional components for their known uses.  This view is confirmed by the comment of the Examiner.  Of  course, the patent, if granted, would cover, in the sense of being infringed by, the presence of additional components (provided the requirements of claim 1 were complied with) whether they were specifically recited in a dependent claim or not.

So what then happened?  Well, the applicant filed amended claims and arguments against the European Search Opinion, and the the TKDL third party observations were filed.  The Examiner objected to the amended claims in a Communication of 21 January 2015 on the grounds of added matter, relating to a method of medical treatment, and clarity.  About the third party observations, it was stated:
The comments developed in this [the third party observations] filing concern mainly the subject-matter of original claims 10, 11 and 12, which relate to the introduction of pharmacologically active ingredients.
The third-party observation has been taken into account.
From this it can be seen that they played no part in the examination at all.  The examination report was not responded to, and the application has now lapsed.

So the statement by the Indian Ministry of Science and Technology is pretty much untrue - there was not in any real sense an attempt to "patent" use of "turmeric, pine bark and green tea for treating hair loss", and nothing that the TKDL did had any influence on the examination so India has not "foiled" the attempt to get a patent anyway.  Any announcement is in any case premature, since the applicant can still file a response and revive the application using "further processing" up to 9 September 2015. This Kat hopes that they do.

One more "false" to add to Tufty's list.  When will this misleading propaganda stop?

Taking the pH? Trial judge's decision on psoriasis patent doesn't come up to scratch

Taking the pH? No, just
enjoying a drop of H2O
Last week a judgment from Sir Robin Jacob plopped into Merpel's inbox which caused more than a slight tremor of her whiskers.  At the invitation of Lord Justice Kitchin, veteran British IP judge Sir Robin came back from retirement to give the first judgment in Leo's appeal against the decision of Mr Justice Birss last October [noted by the IPKat here] that its patents -- EP (GB) 1 178 808 and 2 455 083 -- were invalid for obviousness over US Patent 4,083,974  ("Turi").  In Teva UK Ltd & Another v Leo Pharma A/S [2015] EWCA Civ 779 (28 July 2015), the Court of Appeal granted Leo's appeal, deciding that Leo's patents were not quite so obvious after all.

Background and the problem

The patents at issue covered formulations for Leo's ointment treatment to alleviate the symptoms of psoriasis, an inflammatory skin disease without a cure.  When psoriasis is mild and reasonably contained, there is a greater risk that a patient will not comply with the instructions for treatment.  This is especially the case where treatment is unpleasant, has adverse side effects or is simply annoying.  Patient compliance is thus an important factor for the treatment of the condition.

The claims of the patents, as amended, were for an ointment consisting of
Both active ingredients were known before the priority date as the sole active ingredient in ointments and, given their own individual benefits, they were often prescribed together to patients.  However, they could not be applied at the same time because each was unstable except for in a narrow pH range in which the two did not overlap with one other (calcipotriol being an alkali and betamethasone being an acid).  Since it could be tricky to get patients to comply by using one cream in the morning and another in the evening, clinicians wanted an ointment that contained both ingredients.  This, the Court of Appeal stated, could be somewhat discounted because "clinicians are not formulators. What cannot be discounted is that formulators must have known of the desire -– the want –- of clinicians for a combination product."

Things are rarely so simple in the world of pharmaceutical inventions, especially as it was "far from established that any non-aqueous non-toxic solvent would produce a stable ointment".  At trial Mr Justice Birss commented at [39] and [40] that there was no proper evidence either way to establish whether or not such solvents would work, or that a skilled team would expect that it would work.

In theory there was a simple solution.  pHs are only possible if water is present.  Thus, just get rid of water.  All you would need to solve the problem is to find a non-aqueous non-toxic solvent.  Pick one of those and it will surely work (albeit it would be a mere arbitrary, non-inventive selection of the type discussed in Actavis v Novartis [2010]). The Court of Appeal commented that this was an important finding: it could not then be said that any particular non-aqueous solvent selected by a formulator would result in a product stable for both active ingredients, since the opposite is true: the formulator would have to undergo a research project starting with non-aqueous solvents that were already established and which had been used in other pharmaceutical topical formulations.  At the priority date, the formulator may have started with propylene glycol as it was used in a third of marketed corticosteriod formulations and had a water content of 0.2%.  However, that did not work -- as LEO discovered.  In cross-examination, Teva's expert conceded that trying to find a solution for the incompatibility of the two active ingredients required a lot of work.  

It was here that the Court of Appeal considered that the judge missed the significance of this evidence, which Sir Robin summarised as follows:   
"It was that to the skilled person, identifying a non-aqueous solvent which would actually work to produce a stable ointment, was not easy. Having the property of being non-aqueous was a necessary, but well short of sufficient, condition. Finding one was a research project. And that was because there was no sufficient expectation of success. Yes, a particular candidate might work, but it was far from certain that it would.
Indeed the formulator experts agreed that one would test a number of solvents. The Judge found “about 10-20” – again by implication it is clear that the expectation of success with any one of them was not high. The Judge said such testing “was entirely routine” but that does not alter the expectation. It was not even proved that there was a good expectation that if you did try 20 one of them would work. "
The Solution

The solution was Arlamol E, which was disclosed in Turi as a solvent for a corticosteriod back in 1978.  In the real world, although it had been used for cosmetics, it had not been significantly used for topical pharmaceuticals and did not thus form part of the common general knowledge of the formulator.  However, Mr Justice Birss held it would have been obvious to use it at the priority date, despite it not being one of the 10-20 solvents which a real formulator would have tried.

At paragraph 79 of his judgment, Mr Justice Birss stated:
"The notional skilled formulator would test some familiar compounds but, subject to the regulatory point considered below, would not be put off from including unfamiliar compounds merely because of their unfamiliarity. The question is primarily a technical one and would be decided based on consideration of the known properties and desired characteristics of the compound."
This, the Court of Appeal stated, was rather odd in that the judge is saying that the notional skilled persons are different from the real skilled persons.  The law of obviousness attributes the real prejudices and practices of persons skilled in the art to the notional person (see Dyson v Hoover [2002]).

Birss J had concluded that, since Arlamol E had the desired characteristics, there were grounds to include the compound in pre-formulation tests.  The Court of Appeal did not agree.  There were many non-aqueous solvents that may have had the desired characteristics, including the ill-fated propylene glycol.  But the Turi disclosure did not say anything about Arlamol E that made it "anything like an outstanding candidate".    Birss J also held that there was "sufficient prospect of a positive result" to make Arlamol E worth testing.   The Court of Appeal commented that this would have been equally true with any non-aqueous solvent, but that would not mean it would have necessarily solved the pH problem.

The Court of Appeal held:
"In effect the Judge was saying that the idea of including this solvent as part of a research project amounted to obviousness. The “obvious to try” standard requires a higher expectation of success than that. Otherwise, as I observed in St Gobain at [35]: 
"Mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough. If it were otherwise there would be few inventions which were patentable. The only research which would be worthwhile (because of the prospect of protection) would be in areas totally devoid of prospect.” 
Putting this point into a Pozzoli structured analysis, the difference between the prior art (Turi) and the invention was that Turi was a mono active product using Arlamol E. The invention is a double active product. Turi would be seen as using one of a large number of possible non-aqueous solvents. It might provide stability for the two actives, just as any of the others might. But there was no reasonably optimistic expectation that it would. Finding that it really did was an invention and an advance in human knowledge. 
So I think the judge did err in principle and we are obliged and entitled to revisit the question of obviousness de novo."
To find comfort in this conclusion Sir Robin turned to the fact that although the active ingredients, the fact that clinicians wanted a dual active product to solve the patient compliance problem and the pH issue were all known well before and at the priority date, no solution had ever been achieved.  No-one found a way to put the actives together in an an ointment until LEO did it with the present invention.  As the Court concluded at [36] to [38]:
"When the dual active product came onto the market in 2002 it was a success. The experts on both sides were agreed that it was a significant advance in the treatment of patients. That was not because of a synergistic effect (at least the Judge did not find there was one) but because of the much better patient compliance – something desired since at least 1995. 
Mr Alexander suggested that there was no long-felt want, that the combination product came about exactly when you would expect, especially from LEO. They were really only undertaking a brand extension of their still patented calcipotriol. That simply does not square up with the dates and the facts that a combination product was wanted from at least the mid-1990s and, when achieved, was a real advance.  
So we have here the classic sort of case where the courts have found invention over the years, a long-felt want, the desired solution and no explanation of why that solution was not done before when it could have been. The Judge’s failure to consider this seems to me to be another error of principle – he missed a relevant circumstance. "
The Court of Appeal reversed the first instance decision on obviousness.

Added-Matter & Insufficiency

No "pick'n'mix" holds
the Court of Appeal
In relation to added-matter and insufficiency, the Court of Appeal had little to add.  Teva argued that the proposed amended claims formed a subset of the claims in the application as filed.  The technical narrowing from a very wide disclosure in the application amounted to a post-hoc "pick and mix" operation which added new information by discarding much that would not work or might not work.  The Court of Appeal dismissed the "pick and mix" argument as it cannot be said to be an intermediate generalisation that was not disclosed in the application:
"Betamethasone and calcipotriol are singled out as among the most appropriate actives, the solvent is said to be preferably non-aqueous, Arlamol E is the first example of a solvent in a specific list of solvents. Moreover Example 1 is an ointment with these two actives using Arlamol E as the solvent. True it is that it also includes an anti-oxidant but it is pushing one’s luck too far to say that omitting the necessity for this amounts to adding matter when the specification itself says “The composition may also contain other commonly used additives such as anti-oxidants.” 
So there is nothing in this point. As to insufficiency, it was but faintly argued and really only as some sort of support for the main obviousness argument. Clearly the patents contain instruction which would enable a person skilled in the art to make the ointment now claimed."
Merpel's mewsings

This decision is good news for Leo, says Merpel.  The main theme of the Court of Appeal's decision seems to be to caution against the hindsight explanation of the invention, especially where known matters have been well established before and by the priority date, but no solution had been advanced (see paragraph [38]).  Merpel also notes the Court of Appeal's comments on the skilled person -- or "nerd" as Sir Robin is fond of calling him (or her). On occasion, both the parties and the court can fall into a trap where the skilled person is suddenly emancipated from the constraints and prejudices with which the real skilled person would be imbued, with the effect that the notional skilled person has more scope for creativity (and perhaps invention in the extreme cases) than the legal construct actually permits.  With so many juicy points of law, Merpel will keep an eye out for Teva's potential appeal to the Supreme Court.

Letter from AmeriKat: Biologics data exclusivity tripping up TTP, Samsung wins CAFC Smartflash stay & USPTO IP Girl Scout Patch

The AmeriKat hypnotized by the calm,
peaceful air of a New England
summer's night
The AmeriKat is back in her motherland this week.  Having commenced this journey with a fleeting visit past the hallowed grounds of the USPTO in Alexandria, Virginia (like the Taj Mahal it was smaller than she expected), the AmeriKat is now perched in her upstairs study watching as a neighbor's American flag gently flaps against the pillars of their New England porch.  It is a peaceful and lazy Sunday night.  The warm summer air is cut only briefly by the salty breeze from the Atlantic Ocean a few blocks away.  Coast to coast tonight American families are undertaking their Sunday night routines - cleaning up after dinner, watching their Sunday night shows, organizing a week of carpool.  For the AmeriKat, her Sunday evening has included searching for the latest IP news and goings-on from across the nation.  This week's stories take us from sea to shining sea, starting first with Mountain View, California and ending up back in Boston via Hawaii and D.C.  
IP Girl Scout's patch

USPTO's Girl Scout IP patch:  Last Thursday, USPTO Director Michelle Lee announced that on 15 October 2015, the USPTO will have its grand opening of its permanent Silicon Valley satellite office in San Jose's City Hall.  The announcement came during Lee's attendance at a Churchill Club discussion in the Mountain View offices of Microsoft  (to watch the session click here).  Lee, a transplant from Santa Clara via Fenwick & West, stated that the USPTO also has an initiative underway in collaboration with the Intellectual Property Owners Education Foundation for an IP Girl Scout patch.  For those unfamiliar with the concept, Girl Scout patches are earned after a member completes certain tasks.  As a former Girl Scout herself (first as a Brownie and then as a Junior), Lee commented that her first badges were earned in first aid and sewing:  "In this day in age we have to do better and we can do better by getting girls to enjoy invention and creation and entrepreneurialism." Girls will win an IP patch by learning about copyright, patents, trade marks and trade secrets.  The USPTO's Guide on the patch explains that:
"Girls at some levels of the patch are expected to develop the skills to conduct very rudimentary searches for patents and trademarks utilizing the USPTO databases and publicly available resource and research tools. Real world examples of girls and women who have received U.S. patents and registered Trademarks are provided as examples to demonstrate the potential of girls to invent, create, and go into business as well as the accessibility and value of IP protection. Girls are also encouraged to explore careers in intellectual property and STEM."
The AmeriKat loves this initiative and encourages those US IP enthusiasts and professionals to get involved by sharing their experience and stories with their local Girl Scout troop.  More information on how to get involved can be found here.  The only thing the AmeriKat wishes is that she could get a patch of her own...

Biologics data exclusivity argument puts pressure on TTP negotiations:  A few weeks ago, the AmeriKat wrote about the ongoing negotiations in the Trans-Pacific Partnership deal and the IP issues that were causing some turmoil for the parties on the matter of pharmaceutical IP protection (see post here).  Given that it would be the largest regional trade deal if concluded, it is no surprise that there are some bumps in the road especially in relation to an industry that contributes almost $800 billion to the US economy.  However, a recent article in the AmeriKat's favorite of paper - the New York Times - reported that US officials were finding themselves between a rock (activists aiming to secure access to low-cost pharmaceutical products) and a hard place (Republicans who threaten to vote down the deal if it doesn't provide for strong IP protection).
Senator Hatch

During last week's meeting in Hawai, it was this issue that was reported to elicit the most fevered debate.  Utah Republican Senator Orrin Hatch claimed that “a strong intellectual-property chapter - including strong patent and regulatory data protections for biologics- is vital to securing congressional support for this trade deal.”  Biologics are reported to account for 900 of the 3,372 drugs in development in the US.  Whats the beef with biologics?  US data exclusivity protects biologics for 12 years before a generic can piggyback, whereas other countries provide for far less such as 8 years, or in the case of Australia, 5 years.   In a statement, Doctors Without Borders' US manager and legal policy advisor, Judit Rius Sanjauan, argued that:
"Eight years of data exclusivity is still an exceedingly long and unnecessary time to block access to price-lowering competition for this important class of lifesaving medicines and vaccines.   
Pharmaceutical companies already enjoy some of the longest monopoly protections of any industry, and granting them extended and additional exclusivity terms is just another way to delay competition and keep medicines out of reach of MSF medical operations and millions of people. Government representatives meeting this week in Hawaii have an obligation to protect access to affordable medicines."
Samsung lucking out before the CAFC
in staying Smartflash patent dispute
CAFC stays Smartflash's Samsung infringement action pending USPTO decision:  A few weeks ago the AmeriKat reported about Apple's win against Smartflish after US District Judge Gilstrap ordered that a February jury damages award of $532.9 billion be vacated.   Last week, Smartflash was again defeated (albeit perhaps temporarily), this time by Samsung.  Last Thursdays, the US Court of Appeals for the Federal Circuit (CAFC) held that the patent infringement action Smartflash brought against Samsung should be stayed pending the Patent Trial and Appeal Board's determination of the validity of Smartflash's patents at issue.  Last spring, the PTAB instituted a Covered Business Method review on Smartflash's patents in suit on the basis that it was "more likely than not" that they were directed to ineligible subject matter.  Apple had also requested a stay of its litigation, but were refused on the basis that their trial had already commenced.  Samsung's trial has not.  Writing the lead opinion, Judge O'Malley wrote that "[d]espite the substantial time and effort already spent in this case, the most burdensome task is yet to come."  Judge Newman dissented arguing that the distinction was not correct given that Apple and Samsung were in the same position with respect to Smartflash's patents:
"The only difference between Apple and Samsung as defendants is that the Samsung case was placed on a later calendar, as the district court reasonably chose to proceed with one case at a time, moving the cases against Google and Amazon even further into the future. But the landscape changed after the Court decided Alice Corporation, and even more so after experience was gained with the CBM section of the America Invents Act. In view of the PTO’s institution of post-grant review of all of the claims in suit, it is fair and just that all of the defendants be treated equally, and thus that the stay be granted to all. From my colleagues’ contrary decision as to Apple, I respectfully dissent."
Judge Newman's dissent continued:
"On continuing with the Apple litigation in the district court, as the panel majority today orders, it is far from clear how the appellate process will proceed. What happens to possibly conflicting rulings? Are we creating another race-to-the-courthouse, where the interests of justice succumb to the fleet of foot, or the deepness of the pocket? This court is already burdened with irregular precedent, as in Fresenius, where a panel sustained the district court’s final judgment of validity and infringement, and then held that since post-judgment damages remained for determination, the Federal Circuit’s affirmance of the district court’s judgment gave way to the Federal Circuit’s sustenance of the PTO’s later determination of invalidity. Fresenius USA, Inc. v. Baxter Int’l,Inc. 721 F.3d 1330, 1344, 1347 (Fed. Cir. 2013) (Newman, J., dissenting)."
For more information, see the articles from The Recorder and Reuters.

On Point address the copyright
of jokes this week
Conan copyright one liners:  As she is currently in Boston, the AmeriKat has been listening to WBUR - Boston's NPR station.  On Thursday, a great little piece on one of her favorite shows, On Point, was aired regarding the copyright position of jokes.  The show came after late night television host, Conan O'Brien (made even more famous by Leno-gate  - see Vanity Fair article here for a fascinating read about that particular incident), was sued by comic Robert Kaseberg alleging that the show had used four of his jokes posted on the Internet during the opening monologue.  See Elmeownora's recent post on similar issues facing Twitter here and to listen to the On Point episode, click here.

Never too late: if you missed the IPKat last week ...

What better blogpost is there to start the week with than Katfriend Alberto Bellan's famous round-up of the previous week's Katposts?  This is our 57th weekly round-up, ideal for anyone returning from a vacation, a business trip, a stretch in prison or some other exciting adventure that took them away from the late July IP blogosphere.  

Anyway, here is Alberto's summary of last week's substantive features:
In 2012, France adopted a law allowing the digital exploitation of out-of-print 20th century books. Being unsure whether allowing exploitation of works without prior permission from the relevant rightholder is permitted, the French Council of State has just sought guidance from the CJEU. Eleonora tells all.

Mark writes up a Swiss Supreme Court decision on one of the hottest topics of the moment, private copying. This case relates to the Federal Institute of Technology in Zurich (ETH) offering a document delivery service for scientific articles which includes scanning and online forwarding.

The unsatisfying U.S. Supreme Court decision in Brulotte v Thys Co. (379 U.S. 29 (1964)) fixed a bright-line rule that a patentee cannot charge royalties for the use of its invention after the expiry of the patent. In delivering Kimble v Marvel Entertainment, LLC (as reported by the AmeriKat on 30 June), the very same Supreme Court has missed a chance to provide some more clarity on the issue, Neil says.

Gama Healthcare Ltd v Pal International Ltd in a decision from Judge Richard Hacon in the Intellectual Property Enterprise Court (IPEC), England and Wales addressing look-alike between packages of wet wipe products. Jeremy explains the decision and launches a poll.

Here’s this week’s letter on exciting US IP issues from Annsley, whose contents are well described in the title.

Twitter has begun to comply with DMCA takedown requests relating to tweets, notably jokes, lifted in their entirety from someone's own account and re-tweeted without any attribution as to their original author. Eleonora analyses the social network’s decision in light of EU and US’ originality criteria, as well as moral rights. 

The Toronto 2015 Pan Am and Parapan Am Games’ Terms of Use provide bizarre guidelines as regards linking to and from the Games’ website. How could this occur, wonders Eleonora?

With recent changes to IP crime laws, Nicola casts her gaze criminalisation and the economics of crime.  

Former guest Kat Darren Meale has blown the dust off his abacus and actually totted up how many websites British browsers aren't supposed to be able to reach any more, due to blocking injunctions.

After PETA  launched a petition against the use by Hermès of crocodile and alligator-skin accessories, Ms Birkin asked the fashion house to remove her name from one of the company’s bags. Does she have any legal ground to do so, wonders Eleonora?

In a decision of 26 February 2015 (published in May), the German Bundesgerichtshof addresses the extent to which innovations in user interface design are patentable. Marks tells all.

After many posts on Smith & Nephew v Convatec (Court of Appeal judgment here, here, and here; first instance judgment of Mr Justice Birss here), Neil covers the last episodes of the series, both in the UK and in Eponia.

Jeremy presents a brand-new report, which Katfriend Luke McDonagh co-authored with two economists, Christian Helmers and Yassine Lefouili, and which examines the impact of the 2010­-2013 reforms undertaken at the former PCC, now the Intellectual Property Enterprise Court ("IPEC").

Neil’s question is simple: does Twitter have a long-term future? The answer, based on the words of the company’s senior management following the company’s earnings announcement the past week seems to be: at bes t—maybe.

The IPKat's weblog has just recorded its 15 millionth page view. Thank you, thank you, thank you!

Jeremy reviews Secrets: Managing Information Assets in the Age of Cyberespionage, by James Pooley, Andrea Stazi’s Biotechnological Inventions and Patentability of Life: The US and European Experience, and The New European Patent, by Alfredo Ilardi.



Never too late 56 [week ending on Sunday 19 July] - Private copy in the UK | IP statistics | India and TK | Copyright enforcement in Australia | Wobben Properties GmbH v Siemens PLC & Others Blue Gentian v Tristar Products | EU Copyright reform: IP or competition law?  

Never too late 55 [week ending on Sunday 12 July] - Traditional Knowledge and indigenous people | Traditional Knowledge in Canada | Traditional Knowledge and unbalanced dialogues | E-mail addresses as trade secrets | CJEU on essential patents in Case C-170/13 Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH | CJEU on disclosure of infringers’ bank data in Coty Germany GmbH v Stadtsparkasse Magdeburg Infocit - Prestação de Serviços, Comércio Geral e Indústria, Lda v OHIM | Moral ambiguity of trade secrets | CJEU on limits of TM exclusive right in TOP Logistics BV, Van Caem International BV v Bacardi & Company Ltd, Bacardi International Ltd | Non-traditional trade marks in Japan.

Never too late 54 [week ending on Sunday 5 July] - Google v Oracle and Microsoft/Kyocera settlement | GC and Nagoya | Life Science IP Summit 2015 | (Kat)onomics of patents | Case T-15/13 Group Nivelles v OHIM | Case T‑521/13 Alpinestars Research Srl v OHIM v Kean Tung Cho and Ling-Yuan Wang Yu | Smith & Nephew Plc v ConvaTec Technologies Inc | Multi Time Machine, Inc., v, Inc.; Amazon Services, LLC | EU reform on freedom of panorama and (Google) News ancillary right | 3-D Printing choked by IP? | Pro-Football Inc v Amanda Blackhorse et al. | Condoms made in Germany | the Beckhams’ IP.

Never too late 53 [week ending on Sunday 28 June] - EU trade marks in Arabic in Case C 147/14 | Is UberPop a transport service? The floor goes to the CJEU | Is Michael Jordan’s ”Jumpman” logo a copyright infringement? | Plant variety in Case C‑242/14 | US Supreme Court on Spiderman patent | Hospira v Genentech saga | Are EU policy-makers fighting the right copyright battles? | The IPKat and his friends | GO Outdoors Ltd v Skechers USA Inc II | Allfiled UK Ltd v Eltis & 16 Others | OAEE 'victims' mark in Greece | Icons, flags and the Hazzards of intellectual property toxicity | Why Finland is not Silicon Valley | The Sofa Workshop Ltd v Sofaworks Ltd The Ukulele Orchestra of Great Britain v Clausen & Another (t/a the United Kingdom Ukulele Orchestra) | Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another | The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Ecotive Ltd.

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