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Michael Tappin QC

 


Year of call: 1991
Year of silk: 2009

Michael Tappin QC is probably best known for his work on many of the leading patent cases of the last decade. Chambers & Partners 2016 said that he is “Widely acclaimed as one of the leading silks for biotech and pharmaceuticals patent cases, although he is also a powerful performer in telecoms disputes. He is noted for his sparkling intelligence, capacity for hard work and the collegiate approach he takes to working with instructing solicitors.” However, he has experience across the range of IP and has been involved in a series of trade mark and SPC references to the Court of Justice of the European Union. He has also conducted two trials in the High Court of Ireland and was responsible for handling the clinical evidence at a major international arbitration in The Hague.

Chambers & Partners 2018 says that "He has a great command of the law, and his analysis is exceptional both technically and legally" and that "He is very bright, very creative, very thorough and doesn't miss a trick." In previous years, he has been described in Chambers & Partners as being “a highly effective and persuasive advocate with a no-nonsense but user-friendly attitude”, “a very clear and effective advocate, who is calm, thoughtful and confident”, as having “great intellect, exceptional advocacy skills and impressive paperwork” and as being “a thorough thinker, technically brilliant and a purveyor of sound advice”. It was also said that he “always does a first-class job: he runs cases in a calm, efficient manner and is fully engaged with the litigation process”, that he “offers a strong mix of technical brilliance and practical advice, and is equally outstanding on his feet and on paper” and that “his advocacy style is fantastic”.

Michael obtained a first class degree in chemistry and a doctorate in biochemistry from the University of Oxford and was called to the Bar in 1991. Between 2003 and 2008 he was Standing Counsel to the Comptroller General of Patents, Designs and Trade Marks and in 2008 he was named Chambers & Partners’ Intellectual Property Junior of the Year. Michael took silk in 2009. He is a co-author of the 4th edition of Laddie, Prescott and Vitoria’s Modern Law of Copyright and Designs, published in 2011.

Patents and SPCs

Michael has a particular interest in chemical, pharmaceutical and biotechnological patents and SPCs, and has taken part in many of the leading cases of recent years. These include Eli Lilly v Human Genome Sciences, Generics v Lundbeck and Conor v Angiotech in the House of Lords / Supreme Court, as well as Regeneron & Bayer v Genentech, Regeneron v Kymab & Novo Nordisk, Fujifilm v AbbVie, Hospira v Genentech, Hospira & Mylan v Novartis and Napp v ratiopharm & Sandoz, . In the fields of engineering and related technologies Michael's highlights include Unilin v Berry, the long-running dispute on snap-together flooring, HTC v Apple, HTC v Gemalto, HTC v Nokia and Nokia v IPCom on various aspects of mobile phone technology, Halliburton v Smith on oil well drill bit design and KCI v Smith & Nephew on wound healing devices. Michael has also conducted two patent trials in the High Court of Ireland (Ivax v Glaxo and Ranbaxy v Warner-Lambert).

Cases in the House of Lords / Supreme Court

Eli Lilly v Human Genome Sciences [2012] RPC 6 (Supreme Court), [2010] RPC 14 (Court of Appeal).

Whether a patent relating to a human protein and antibodies thereto was invalid as not being “susceptible of industrial application”. Acted for the patentee in persuading the Supreme Court to reverse the decisions of the Court of Appeal and of Kitchin J. The outstanding issues (esp. sufficiency and extension of protection of the antibody claim) were remitted to the Court of Appeal which upheld the validity of all claims [2013] RPC 22

Generics [UK] & ors v Lundbeck [2009] RPC 13 (House of Lords), [2008] RPC 19 (Court of Appeal).

Whether a patent disclosing a method of making an obviously desirable product (escitalopram), but claiming that product however made, was insufficient.

Conor v Angiotech [2008] RPC 28 (House of Lords).

Approach to be taken to assessing obviousness, in context of patent for taxol-coated stents for treating restenosis.


Cases in the Court of Appeal 

Regeneron v Kymab & Novo Nordisk [2016] EWHC 87 (Henry Carr J)

Acted for Kymab in trial of case relating to antibody-producing transgenic mice, described by the judge as being of great technical complexity. In essence, the patent related to transgenic mice in which variable regions of the endogenous immunoglobulin gene loci had been subject to “in situ replacement” by human variable region gene loci, but in which the murine constant regions were retained, so that hybrid antibodies were produced. The judge held that Kymab’s mice would have infringed the patent, had it been valid, but that it was invalid for insufficiency. He held that the central aspect of the patent’s disclosure, namely the replacement of the whole of the murine variable region gene loci with human variable region gene loci, could not have been performed at the priority date without undue burden and invention. Appeal heard in October 2017, judgment awaited.

Hospira v Genentech (1) [2014] EWHC 1094 (Birss J), [2015] EWCA Civ 57; (2) [2014] EWHC 3857 (Birss J), [2016] EWCA Civ 780; (3) [2015] EWHC 1796 (Arnold J). [2016] EWCA Civ 1185.

Trials and appeals concerning a series of patents relating to the production, formulation and use of trastuzumab (Herceptin®). In particular the second judgment of Birss J is notable for its consideration of product-by-process claims and the judgment of Arnold J for its discussion of the requirements for novelty and inventive step of a medical use claim in the light of a prior disclosure of a pending clinical trial.

HTC v Gemalto 
[2015] RPC 7 (Court of Appeal), [2014] RPC 9 (Birss J).

Acted for successful claimant in case relating to patents concerned with (1) programming microcontrollers using high-level languages (especially Java) and (2) smart card / reader communication protocols, both said to be infringed by HTC’s smartphones. At trial, patent (2) revoked and patent (1) held to be partially valid but not infringed. On appeal on patent (1), decision of lower court upheld.  

Hospira & Mylan v Novartis [2015] RPC1 (Court of Appeal), [2013] EWHC 516 (Arnold J).

Proceedings for revocation of patents relating to infrequent intravenous use of zoledronate for treatment of osteoporosis. Successfully contended, at trial and on appeal, that claims were not entitled to priority and hence invalid.

Resolution v Lundbeck [2014] RPC 5 (Court of Appeal), [2013] EWHC 739 (Arnold J).

Acted for claimant seeking revocation of SPC based on Lundbeck’s escitalopram patent. Application by Lundbeck for summary judgment on grounds that (a) claimant estopped from bringing claim by reason of connection with unsuccessful litigants in previous proceedings (b) claimant’s case on the merits had no real prospect of success. Application and appeal dismissed.

Mylan v Yeda & Teva [2014] RPC 4 (Court of Appeal), [2012] EWHC 1848 (Arnold J).

Trial and appeal in claim for revocation and declaration of non-infringement of patent relating to copolymer-1 (treatment for multiple sclerosis).

Regeneron & Bayer v Genentech [2013] RPC 28 (Court of Appeal), [2012] EWHC 657 (Floyd J).

Acted for successful patentee at trial and on appeal in claim for revocation and declaration of non-infringement of patent relating to inhibitors of VEGF for treatment of, inter alia, age-related macular degeneration. Patent held valid despite attacks of lack of novelty / inventive step and wide-ranging insufficiency attacks; declaration of non-infringement refused.

Fresenius v Carefusion [2012] RPC 8 (Court of Appeal).

The case in which the Court of Appeal abolished See v Scott-Paine / Earth Closet orders

KCI v Smith & Nephew [2011] FSR 8 (Court of Appeal), [2010] FSR 31 (Arnold J)

Patents relating to apparatus for negative pressure wound therapy; whether applicant entitled to claim priority, whether claims inventive and infringed (including whether indirect infringement under s.60(2)).

Generics [UK] v Daiichi [2009] RPC 23 (Court of Appeal), [2009] RPC 4 (Kitchin J)

Claim for revocation of patent and SPC for enantiomer (levofloxacin) of known racemic antimicrobial agent, raising the question of whether a marketing authorisation for the racemate was the first authorisation to market the enantiomer.

Napp v ratiopharm & Sandoz [2009] RPC 18 (Court of Appeal), [2009] RPC 11 (Floyd J)

Acted for successful patentee at trial and on appeal concerning patents relating to controlled release formulations of the opioid oxycodone; issues included whether the inclusion of a disclaimer added matter.

Unilin v Berry [2007] FSR 25 (Court of Appeal)

Appeared for successful patentee on further appeal in long-running litigation relating to snap-together flooring (see below), concerned with whether a defendant who has lost on the issues of infringement and validity in the UK and against whom financial relief has been ordered can rely on a later revocation or amendment of the patent by the EPO to avoid payment of damages / profits and costs.

Ranbaxy v Warner-Lambert [2007] RPC 4 (Court of Appeal), [2006] FSR 14 (Pumfrey J)

Claim concerning two patents said to protect the cholesterol-lowering agent atorvastatin. The claim sought a declaration of non-infringement of one patent (in which the issue was whether the claims related only to racemates or also covered enantiomers) and revocation of a second patent.

Yeda v Rhône-Poulenc Rorer & ImClone [2007] RPC 9 (Court of Appeal), [2006] RPC 24 (Lewison J)

Whether amendments to statement of case in patent entitlement proceedings made outside the two year time limit imposed by s.37(5) were allowable.

Halliburton v Smith [2006] EWCA Civ 1715 (Court of Appeal)

Represented the Comptroller on this unsuccessful appeal by the patentee against revocation of its patent for a method of designing a force-balanced roller-cone drill bit. See also [2007] RPC 17 (role of scientific adviser) and [2006] RPC 26 (procedure on unopposed appeals against revocation).

Unilin v Berry [2006] FSR 26 (Court of Appeal)

Successfully resisted appeal on issue of reasonable skill and knowledge, following trial and appeal on infringement and validity (see below).

Nikken v Pioneer [2006] FSR 4 (Court of Appeal), [2005] FSR 15 (Mann J)

Claim for revocation of patent concerning machine tool chucks.

Celltech v MedImmune [2005] FSR 21 (Court of Appeal)

Application by defendant for stay of proceedings pending determination of validity of patent by US court; whether the agreement conferred jurisdiction on English courts; whether there was a risk of inconsistent decisions and thereby strong reasons to displace the choice of jurisdiction.

Unilin v Berry [2005] FSR 6 (Court of Appeal)

Acted for successful patentee in claim for infringement, with counterclaim for invalidity, of patent relating to snap-together laminate MDF flooring. The decision of the Court of Appeal represents its most recent summary of the law of priority.

Teva, Arrow Generics & Generics [UK] v Merck & Gentili [2004] FSR 16 (Court of Appeal), [2003] FSR 29 (Jacob J)

Acted for successful claimant for revocation of two patents relating to alendronate, the active ingredient in Merck’s Fosamax® product used for the treatment of osteoporosis. The CA decision gives general guidance as to the identification, in the Grounds of Appeal, of errors of principle contended to have been made by a first instance judge. See also EPO case below.

BASF v SmithKline Beecham [2003] RPC 49 (Court of Appeal), [2002] EWHC 1373 (Pumfrey J)

Claim for revocation of a patent for the anhydrate form of paroxetine hydrochloride, the active component in SKB’s Seroxat® (Paxil) anti-depressant, on the grounds of lack of novelty or obviousness over a prior disclosure by SKB and obviousness over common general knowledge of polymorph screening.

Cairnstores v Hässle [2003] FSR 23 (Court of Appeal), [2002] EWHC 309 (Laddie J)

Claim for revocation of patents for the oral formulation of the anti-ulcer agent omeprazole, covering AstraZeneca’s Losec® product, primarily on the grounds of obviousness. The appeal was concerned solely with the patentee’s allegation that it had not received a fair trial or that the trial judge had given an appearance of bias. Application to strike out action as an abuse of process on the ground that the claimant was a “straw man” reported at [2002] FSR 35.

American Home Products v Novartis [2001] RPC 159 (Court of Appeal), [2000] RPC 547 (Laddie J)

Case concerning the scope of a claim to the use of rapamycin for the preparation of a medicament for inhibiting transplant rejection, and the sufficiency of the patent if construed to cover derivatives of rapamycin.

Cartonneries de Thulin v White Knight [2001] RPC 107 (Court of Appeal)

Patent concerning CD jewel case adapted to hold two CDs; construction of claims, obviousness, added matter.

Kirin-Amgen v Boehringer Mannheim [1997] FSR 289 (Court of Appeal)

Whether an issue estoppel arose from decisions of US courts in proceedings relating to counterpart US patents in the field of biotechnology.


Trials and significant matters in the High Court

Illumina & ors v Premaitha & TDL / Ariosa (Henry Carr J, judgment awaited)

Trial of infringement and validity claims in respect of patents relating to non-invasive prenatal testing.

Fujifilm & Samsung Bioepis / Biogen Idec v AbbVie Biotechnology [2016] EWHC 3383, [2017] EWHC 395 (Henry Carr J)


Litigation seeking so-called Arrow declarations to the effect that acts in respect of the claimants’ proposed biosimilar adalimumab products for the treatment of rheumatoid arthritis and psoriasis would have been obvious as at specified dates. Whether such acts would have been obvious; whether such declarations would serve a useful purpose and should be granted.

Glaxo SmithKline v Wyeth [2016] EWHC 1045 (Henry Carr J)

Trial of claim for revocation, with counterclaim for infringement, of patent relating to meningitis B vaccines, raising numerous issues of entitlement to priority, anticipation, insufficiency, added matter and obviousness. Successful in establishing that patent was valid and infringed.
 

Actavis v Eli Lilly [2015] EWHC 3294 (Henry Carr J)

Trial of claim for revocation of patent for the use of atomoxetine to treat ADHD, where the patent contained no data to support the claimed therapeutic use. The case raised the issue of whether there is a gap between the standard of plausibility for the purpose of sufficiency and expectation of success for the purpose of obviousness. 

Eli Lilly v Human Genome Sciences [2015] RPC 8 (Warren J)

Hearing to determine application of judgment of CJEU regarding interpretation of Article 3(a) of the SPC Regulation (see below).

Actavis v Pharmacia [2014] EWHC 2265 & 2611 (Arnold J)

First decisions to consider applications of approach to stays pending EPO proceedings following IPCom v HTC.

Hospira v Genentech [2014] EWHC 1094 (Birss J).

Trial of claim for revocation of patents relating to trastuzumab (Herceptin®). Appeal dismissed [2015] EWCA Civ 57.

HTC v Nokia [2014] RPC 19 & 30 (Arnold J).

Acted for patentee in claim for revocation of patent relating to modulator in transmission path of mobile phone, with counterclaim for infringement (including consent / exhaustion defence). Patent held valid and infringed. Further judgment considers approach to granting injunctive relief or damages in lieu following the Enforcement Directive.

HTC v Apple [2012] EWHC 1789 (Floyd J).

Apple alleged that HTC’s smartphones infringed various Apple patents; including an allegation of infringement by the use of a flag in the Android operating system. One of a team of counsel acting for HTC in successfully resisting Apple’s claims at trial; responsible for the flags patent which Floyd J held invalid and not infringed.

Nokia v IPCom [2012] EWHC 225 (Floyd J).

Acted for Nokia in this aspect of its long-running litigation with IPCom, concerned with a patent relating to a method of handover of mobile phones between base stations. Invalidity attacks succeeded, forcing IPCom to amend to a claim set of no commercial interest; further, all claim sets sought held to be inessential to a range of mobile telephony standards.

Cephalon v Orchid & Generics (UK) [2011] EWHC 1591 (Floyd J).

Acted for defendants at trial of infringement and validity claim concerning patent relating to small particle size formulation of modafinil; patent held invalid and not infringed. Also [2010] EWHC 2945 (Floyd J): successfully resisted application for interim injunction to prevent launch of generic product.

Intervet v Merial [2010] EWHC 294 (Arnold J)

Trial of claim concerning patent relating to diagnosis of porcine circovirus infection; acted for party successfully establishing invalidity and non-infringement.

Cranway v Playtech & the Tote [2010] FSR 3 (Lewison J)

Trial of claim concerning patent relating to online casino gaming systems.

Alza & Janssen-Cilag v ratiopharm & Sandoz [2009] EWHC 213 (Kitchin J)

Trial of claim concerning patent relating to transdermal patch for delivery of the opioid fentanyl.

AT&T’s Application / CVON’s Application [2009] EWHC 343 (Lewison J), Autonomy Corp’s Application [2008] RPC 16 (Lewison J), Cappellini’s Application / Bloomberg’s Application [2007] FSR 26 (Pumfrey J), Oneida Indian Nation’s Application [2007] EWHC 954 (C. Floyd QC), Crawford’s Application [2006] RPC 11 (Kitchin J)

Appeared for the Comptroller on various appeals against refusals of applications as being for computer programs and/or business methods and/or presentations of information as such.

Interdigital v Nokia (2008)

Instructed on, and conducted various hearings in, the UK3 litigation relating to 3G mobile phone technology.

Re: DLP [2008] RPC 11 (Kitchin J)

Appeared for the Comptroller on appeal concerned with the nature of appeals from UKIPO’s opinion system.

Monsanto v Cargill [2008] FSR 7 (Pumfrey J)

Claim for patent infringement, with counterclaim for revocation and defence of acquiescence, relating to soymeal imported from Argentina produced from soybeans containing gene conferring glyphosate resistance.

Univ. of Queensland v Siemens [2007] EWHC 2258 (Pumfrey J)

Appeared for successful defendants in patent infringement and validity claim relating to the design of magnets for use in magnetic resonance imaging.

Teva v Merrell & Sepracor [2007] EWHC 2276 (Warren J)

Appeared for successful claimants on claim for revocation of patents concerned with uses of the acid metabolite of terfenadine to make anti-histamine medicaments.

Roche v Chiron (2007)

Claims principally for declarations of invalidity of Chiron’s SPCs in respect of Roche’s products Herceptin® (humanised monoclonal antibody for treatment of breast cancer) and Fuzeon® (fusion inhibitor for treatment of AIDS). Claims settled shortly before the trial relating to Herceptin®.

Tamglass v Luoyang & Novaglaze [2006] EWHC 65 (Mann J)

Claim for infringement, with counterclaim for revocation, of patent relating to apparatus and method for bending and tempering glass – reported on issues of infringement at [2006] FSR 32 and various post-trial issues reported at [2006] FSR 33 & [2006] FSR 34.

Mayne v Teva [2005] EWHC 2141 (Pumfrey J)

Acted for successful defendant at trial of claim and counterclaim relating to formulation of the anti-cancer drug paclitaxel.

Tercica & Genentech v Avecia & Insmed [2005] EWHC 984 (Mann J)

Successfully resisted application by defendants for summary judgment of invalidity on grounds of anticipation and lack of industrial applicability of Swiss form claim.

Celltech v MedImmune (2005, Laddie J)

Whether defendant’s Synagis® humanized antibody product infringed US patent; numerous issues of construction under US law. Settled after trial but before judgment delivered.

Abbott v Ranbaxy & ors [2004] EWHC 2723 (Pumfrey J)

Application for interim injunction, with cross-application for summary judgment on invalidity, on patent relating to a crystal form of the antibiotic clarithromycin.

Sandoz v Roche Diagnostics [2004] EWHC 1313 (Patten J)

Acted for successful patentee in claim for revocation of patent relating to injectable formulations of erythropoietin containing a combination of certain preservatives.

Dendron v University of California [2004] FSR 42 (Laddie J)

Application concerning privilege in communications with witnesses and use of deposition evidence in other proceedings, in claim for revocation of patent relating to a marker system on a microcatheter system used for inserting coils in brain aneurysms.

Cipla/Neolab, Generics [UK] & ors v Glaxo [2004] RPC 43 (Pumfrey J)

Acted for successful claimant in claim for revocation of the patent relating to Glaxo’s Seretide® product (a combination inhaler containing salmeterol and fluticasone propionate).

Fraser v Oystertec [2004] FSR 22 (Peter Prescott QC)

Application for summary judgment in action by (and on behalf of) companies claiming that transactions by which their patent rights have been purportedly assigned away are void and seeking declarations that they own the rights or compensation for their loss.

Kirin-Amgen v Roche Diagnostics [2002] RPC 1 (Neuberger J)

Six-week patent trial relating to the biotechnological production of erythropoietin, raising numerous issues including sufficiency, priority and s.2(3) anticipation and involving a variety of scientific disciplines including molecular biology, gene synthesis, protein chemistry and glycobiology.

Charlesworth v Relay Roads [2000] RPC 300 (Neuberger J)

The patent having been held to be infringed and (partially) valid, the defendants applied to adduce new evidence of prior uses. The decision concerns the principles applicable where an application is made to re-open a trial after judgment but before the order is sealed.


Cases in the CJEU / ECJ, the EPO and the High Court of Ireland

Hospira & ors v Novartis (EPO Technical Board of Appeal)

Successful opposition to Novartis’ patent for annual intravenous administration of zoledronate to treat osteoporosis (see also UK case above).

Hospira v Cubist (EPO Technical Board of Appeal)

Successful opposition to Cubist’s patent for daily dosing of daptomycin to treat bacterial infections.
 

Eli Lilly v HGS (CJEU, judgment 12/12/13)

Reference to the CJEU on the meaning of Art. 3(a) of the SPC Regulation (what is meant by “protected by a basic patent” following Medeva).

Generics [UK] v Synaptech (CJEU, judgment 28/8/11).

Whether an SPC could validly be granted in relation to a medicinal product which had previously been marketed in the EU under authorisations granted before implementation of Directive 65/65.

Ivax v Glaxo [2009] IEHC 277 (Charleton J – High Court of Ireland)

Acted for successful claimant in five week trial of claim for revocation of SPC based on the patent relating to Glaxo’s Seretide® product (a combination inhaler containing salmeterol and fluticasone propionate – see also UK case above).

G2/06 Wisconsin (EPO Enlarged Board of Appeal)

Drafted UK submissions on questions relating to whether invention contrary to morality.

Ranbaxy v Warner-Lambert [2007] IEHC 256 (Clarke J – High Court of Ireland)

Trial in the High Court of Ireland of claim for a declaration of non-infringement of a patent said to cover the cholesterol lowering agent atorvastatin (see also UK case above).

Roche Nederland v Primus & Goldenberg [2007] FSR 5 (ECJ)

Drafted the UK Government’s observations on this reference concerning the application of Article 6(1) of the Brussels Convention to cross-border patent disputes.

Teva & ors v Merck (EPO Technical Board of Appeal (T1138/04) and Opposition Division)

Successful opposition to Merck’s patent for once-weekly alendronate (see also UK case above).

 

  • What the Directories Say
  • "He is the complete package. He gets all over the detail and is really accessible." "His advocacy style is fantastic. It strikes the balance between confident and friendly, and judges respond well to the delivery"
    Chambers & Partners (Intellectual Property) 2017

    "He is technically excellent and a fine advocate."
    Legal 500 (Intellectual Property) 2017

    "An excellent advocate with super-effective court skills"
    Legal 500 (Intellectual Property) 2016

    "A formidable life sciences expert whose scientific skills win cases"
    Chambers & Partners (Intellectual Property) 2016

    "Always prepared to roll his sleeves up and get stuck into a case"
    Legal 500 (Intellectual Property) 2015

    "He offers a strong mix of technical brilliance and practical advice, and is equally outstanding on his feet and on paper" " A very clear and effective advocate, who is calm and thoughtful"
    Chambers & Partners (Intellectual Property) 2015