AIPPI UK Event Report: Roundup of 2022's Patent Cases

The AmeriKat hunkering down to a belated
Christmas meal of kibble

Back in the dark depths of January, the great, the good and the cold of patents practitioners were invited to gather at Hogan Lovells’ London office to attend the AIPPI’s annual patent round-up. Andrew Lykiardopoulous KC and Henry Edwards of 8 New Square presented the patent case highlights of 2022 in the form of a delayed Christmas menu, ranging from Neo crackers to Optis turkey with secret sauce. Sam Krips from Hogan Lovells was on hand to report on the proceedings.

Over to Sam:

"Ahead of the starters, some statistics appetisers were served. There were 17 Patents Court judgments in 2022, eight of which were written by Meade J. Moreover, of the 18 patents litigated only six were held to be valid.  Appealing patents also remains a tough game with only one successful appeal in 2022.

The starters

1) Neo crackers

Anan Kasei v Neo [2022] EWHC 708 (Ch) was a damages inquiry that considered whether the territoriality of a patent can prevent foreign loss being claimed. Bacon J ruled that while the Patents Act is limited to the UK, this does not mean that the patentee should be unable in principle to recover damages in respect of losses arising from sales outside of the UK. This is provided that there is a sufficiently direct causal nexus between the patent infringement and those losses, and the losses are not regarded as too remote to be recoverable.

However, in this case, Bacon J determined that the infringing supply was not the common sense cause of the customer’s decision to purchase the non-infringing product and no damages were awarded.

The appeal judgment was handed down in January 2023 in which Arnold LJ endorsed the principles of Bacon J’s approach.

2) Neurim surprise

This kicked off in 2021 when Neurim applied for a preliminary injunction (PI) in Neurim v Generics UK Limited (t/a Mylan) [2021] EWHC 530 (Pat). This was refused by Marcus Smith J, who held that damages would be an adequate remedy. This raised some questions as to when PIs should be granted as previously it was considered that it was highly likely that irreparable harm would follow if a PI was not granted. Marcus Smith J disagreed and kept in mind the shortness of the period to trial.

The CA upheld this in Neurim v Generics UK Limited (t/a Mylan) [2022] EWCA Civ 370. The Supreme Court rejected taking the case as by the time it arrived to the Supreme Court it would be too late to grant a PI. However, the Supreme Court noted that there is a point of law of public general importance touching on the question of whether the four-stage test for PIs outlined in American Cyanamid should be applied in a rigid and strictly sequential manner or whether a more overarching and flexible approach would be more appropriate.

In Neurim Pharmaceuticals (1991) Ltd and another company v Generics UK Ltd and another [2020] EWHC 3270 (Pat), Neurim was successful on all issues. After, at the form of order hearing, all costs went to them, but a few days later, the EPO revoked the patent. This raised the question- who pays the costs? Mr Justice Marcus Smith went on to reverse his costs order and awarded all costs to Mylan.

Subsequently, the Court of Appeal split the costs in Neurim Pharmaceuticals (1991) Ltd and another company v Generics UK Ltd and another [2022] EWCA Civ 359 on the basis that neither side had informed the Court how close the Technical Board of Appeal hearing was to trial.  

Neurim then amended their divisional patent application in Neurim v Generics (UK) Ltd (t/a Viatris) [2022] EWHC 109 (Pat) to have the same claims as the revoked patent and applied for an injunction on this basis. Meade J asserted that this was not an abuse of process and allowed the amendment. However Meade J also found that the case needed to go back to Marcus Smith J on the question of validity. Marcus Smith upheld his earlier finding that the patent was valid and therefore granted an injunction in Neurim v Generics (UK) Ltd (t/a Viatris) [2022] EWHC 512 (Pat). Marcus Smith looked at it as a final injunction and refused to stay it until appeal as there was no chance of success. Permission to appeal was refused by the Court of Appeal, but Birss LJ did note that he was surprised the Judge did not see fit to grant Mylan a stay of 14 or 21 days to enable Mylan to make an orderly application to the court.

3) Feedback request

In Shenzhen Carku Technology Co v The Noco Company [2022] EWHC 2034 (Pat), Noco’s patent relating to battery powered car jump starters was revoked for lack of novelty and inventive step. Moreover, Noco’s communications to Amazon relating to threats of patent infringement if it did not delist Carku’s products were considered unjustified threats. Consequently, Meade J ordered a damages inquiry based on these unjustified threats.

The main course

4) Optis turkey with secret sauce

In Optis Cellular Technology LLC and others v Apple Retail UK Ltd and others [2022] EWCA Civ 1411 (27 October 2022) Meade J’s approach at the High Court was upheld by Arnold LJ. The defendants’ appeal failed and Arnold LJ held that Apple either had to give an undertaking for a license on terms that the court determined to be FRAND or be subject to an injunction.

Optis’ cross-appeal was also dismissed. The court found that an infringing implementer that does not commit to a court-determined licence is not permanently prevented from relying on the patentee’s ETSI undertaking nor are they subject to an unqualified injunction.

5) Hotel California Vegetables

In the case of Nokia Technologies OY v Oneplus Technology (Shenzhen) Co Ltd [2022] EWCA Civ 947 Arnold LJ dismissed OPPO’s appeal and refused to stay the English proceedings. Two key issues were decided. The first was whether the English Court was the forum conveniens for this dispute, given that Oppo had asserted that the dispute was really about the terms of a global licence. On this point, Arnold LJ disagreed, citing Conversant to highlight that the focus of the trial can be correctly categorised as a claim to enforce UK patents.

The second issue related to whether the English Court should stay the FRAND case on case management grounds, pending the outcome of the Chongqing courts. The court determined that both England and Chongqing were appropriate forums but as Chongqing is “at best no more appropriate a forum”, there was no reason not to proceed. The court identified that the reality was that OPPO were not concerned with time or legal costs, and that they wanted the trial to happen in the forum of their choice, given they started the Chongqing proceedings after the commencement of the English claim.

Additionally, the judgment suggested in obiter that arbitration may be a more effective way of dealing with global FRAND disputes than through national courts.

6) Wines by Otsuka

In Otsuka Pharmaceutical Co Ltd v GW Pharma Ltd [2022] EWHC 1012 (Pat), Deputy High Court Judge Ian Karet rejected a challenge to the court’s jurisdiction to determine a claim for royalties under a research collaboration and licence agreement between Otsuka, a Japanese pharmaceutical company, and two English companies.

Although the Mocambique principle means that British courts can’t decide validity of foreign patents, the principle did not apply in this case. This case dealt with infringement and as such, there was not a direct challenge to validity. Birrs LJ also ventured further than this and asserted that the court can determine the validity of a foreign patent if it is relevant to the enforcement of the contract in Otsuka Pharmaceutical Co Ltd v GW Pharma Ltd [2022] EWCA Civ 1462.

Desserts

7) Arrow Meringue

In Teva v Novartis [2022] EWHC 2779 (Ch) questions arose as to whether Arrow declarations are appropriate if a party has de-designated its patent in the UK. A similar situation arose a few years in Pfizer v Roche [2019] EWHC 1520 (Pat). In Pfizer, Birss LJ declined to give a declaration because there were not any UK rights.

Teva requested an Arrow declaration. Meade J refused to strike out the claim. The issue then came before Bacon J who refused to grant the Arrow declaration. This then came before Arnold LJ in the Teva UK Limited and anor v Novartis AG [2022] EWCA Civ 1617 who agreed that no Arrow declaration should be made. This was because the declaration had the sole purpose of influencing a decision by a foreign court and allowing this would promote forum shopping.

8) Expert’s Melange

This year, comments have been made by both Mellor J and HHJ Hacon about how to treat experts as part of a skilled team.

In Alcon Eye Care UK Ltd v AMO Development LLC [2022] EWHC 955 (Pat), Mellor J criticised AMO’s approach to their experts, noting that:

“Since the two men never had a discussion about any of their evidence… their combined approach left, in my view, a significant gap… This enabled them (and AMO) simply to ignore teaching which the proper Skilled Team would’ve found significant and interesting”.

Similarly, Hacon HHJ stated in Teva v Novartis [2022] EWHC 2847 (Pat):

“It seems that there was little or no interaction between Novartis’ three experts during the preparation of their evidence. That should have happened.”

These cases have clarified that when instructing experts who are members of a skilled team, the correct approach is to pass information between them to mimic real life as closely as possible.

For afters

9) Something green

The case of Siemens Gamesa Renewable Energy A/S v GE Energy (UK) Ltd [2022] EWHC 3034 (Pat) has highlighted an interesting point on territoriality. Dogger Bank Wind Farm, which is situated 125 to 290 kilometres off of the east coast of Yorkshire, was found not to be in the territorial reach of the Patents Act 1977. The Patents Act only applies to areas under the Continental Shelf Act 1964 in accordance with s132(4) of the Patents Act or specified by order under the Petroleum Act 1998 Pt II s.10(8) in connection with any activity falling within s.11(2)(a) of that Act. These are activities connected with the exploration of, or the exploitation of the natural resources of, the shore or bed of waters or the subsoil beneath it. Installation of wind turbines on the seabed was not considered exploitation of the natural resources as described in the Petroleum Act and therefore the wind turbines were outside of the reach of the Patents Act at Dogger Bank.

(10) Amendment- if you think your card will be declined please say before ordering

A patent owned by 3M for “Dish-shaped abrasive particles with a recessed surface” was revoked for insufficiency in Saint-Gobain Adfors SAS v 3M Innovative Properties Co [2022] EWHC 1018 (Pat). Subsequently 3M applied to amend the patent but in Saint-Gobain Adfors SAS v 3M Innovative Properties Co [2022] EWHC 1666 (Pat) Michael Tappin KC rejected this, deciding that 3M should have made this application before trial and allowing it now would be prejudicial and unfair to Saint-Gobain.

Similarly, in CommScope Technologies LLC v SOLiD Technologies Inc [2022] EWHC 769 (Pat) it was ruled that the Court had no jurisdiction to amend a patent after proceedings where the validity of the patent was in issue were discontinued."