INTELLECTUAL PROPERTY • SCIENCE AND TECHNOLOGY
MEDIA AND ENTERTAINMENT • COMPETITION
Whirlpool Corp. and another -v- Kenwood Limited
Represented by members of chambers on both sides, this action is of great importance in the context of the alleged infringement of three dimensional trade marks by the shape of goods. The action involved allegations of trade mark infringement and passing off in relation to a new Kenwood food mixer, the "kMix" brought by the manufacturers of the KitchenAid Artisan food mixer. The Community trade mark in issue was a three dimensional mark for the shape of a KitchenAid food mixer with the word 'KitchenAid' applied to it. Whirlpool alleged that the Kenwood kMix mixer infringed its community trade mark and that the sale of the kMix constituted passing off, relying on goodwill it claimed to own in the shape and get up of its KitchenAid Artisan mixer. Kenwood put forward a defence on all aspects of the claims and also counterclaimed for a declaration of invalidity of the CTM in issue. The 8 day trial was heard in May 2008 before Geoffrey Hobbs QC sitting as a Deputy Judge of the Chancery Division of the High Court. James Mellor QC and Tom Moody-Stuart appeared for the Claimant, Whirlpool Corp. Andrew Lykiardopoulos and Iona Berkeley appeared as Junior Counsel for the Defendant, Kenwood. Judgment was delivered on 4th July 2008.
Lucas Films -and- Andrew Ainsworth
George Hamer represented Andrew Ainsworth in this action brought by Lucas Films. In 1976, the shooting of the film “Star Wars” was imminent, but the studio had not managed to produce the armour and helmets for the Stormtroopers. Andrew Ainsworth, an artist with special skills in thermoforming materials, came to the rescue. He produced the iconic costumes for the Stormtroopers in time, plus a number of other helmets used by characters in the film. Over 25 years later Mr. Ainsworth, using the original moulds, started producing these items for dedicated Star Wars fans. He was sued in the USA for selling about £8,000 of goods, the claim being based, inter alia, on infringement of copyright. Having spent all he could afford on an unsuccessful challenge to the jurisdiction of the US courts, he was unable to defend and the film company obtained judgment in default for $20 million. Proceedings then followed in the UK. The issues included whether a UK court should entertain a claim for infringement of US copyright and breach of the Lanham Act, whether it would enforce the US judgment, as well as who owned the rights in the designs relied upon and whether they still existed. The trial, at which George was led by Alistair Wilson QC, was heard by Mr. Justice Mann in April 2008 with judgment delivered at the end of July.
Actavis -v- Merck
Peter Prescott QC was leading counsel in the landmark case of Actavis v. Merck which aligned UK practice as regards Swiss-claims with that of the EPO. He persuaded the Court of Appeal to establish a new exception to the long-standing rule in Young v. Bristol Aeroplane (that a later court of appeal is bound by the decision of an earlier court of appeal) so as to conform with a settled interpretation given by the Boards of Appeal of the EPO. The judgment enabled Merck to obtain otherwise excluded patent protection for a Swiss-style claim for dosage form of finasteride.
esure -v- Direct Line
In July 2008, the Court of Appeal gave judgment in esure v. Direct Line. The judgment addressed the issue of how structured an approach was required to assessing confusing similarity and the extent to which a tribunal was able to rely on its own assessment of a likelihood of confusion. James Mellor QC and James Whyte appeared for the appellants.
Actavis -v- Janssen
Daniel Alexander QC and James Whyte acted for J&J group company, Janssen, in defence of a patent in the field of chiral chemistry relating to beta-blocking agents for hypertension. The judgment of Floyd J addressed the scope of application of the Mobil approach to second medical uses and obviousness, where a research programme was required.
Interdigital -and- Nokia
A number of members of chambers have been involved in the multi-faceted litigation between telecoms companies Interdigital and Nokia concerning the licensing of essential patents for 3G mobile telephony. Together, the cases were set to be the longest UK patent dispute in recent history. Richard Meade QC, Adrian Speck and James Abrahams acted for Nokia, Daniel Alexander QC and Michael Tappin acted for Interdigital in various aspects of the cases, which settled at the beginning of July 2008.
Symbian Appeal
In July 2008, Peter Prescott QC and Charlotte May acted for the Comptroller in the Symbian patent appeal relating to computer implemented inventions. This is the first case to reach the Court of Appeal on this aspect of the law since Aerotel and is intended to provide further guidance as to the applicability of the exceptions to patentability under Article 52 EPC. Daniel Alexander QC appeared as leading counsel for Symbian.
Novartis AG -and- Dexcel Pharma Limited
In June 2008, Daniel Alexander QC and Mark Chacksfield acted for Novartis in obtaining an interim injunction in a patent dispute concerning one of Novartis’ leading products, NEORAL®, a cyclosporin formulation. The case involved the question of the extent to which the court was bound by an earlier court’s approach to interpretation of the claims.
Markem -v- Zipher
Adrian Speck and Jonathan Hill appeared in the trial of infringement and validity in the long running dispute of Markem v. Zipher in which previous decisions dealt with issues of entitlement. Judgment was given in June 2008.
Intel -v- CPM
In June 2008, Advocate-General Sharpston gave her preliminary ruling in the ECJ in Intel v. CPM. The case concerns the extent to which well known marks can be protected against dilution. James Mellor QC acted for Intel.
Football Association Premier League -v- QC Leisure and Others
Mr Justice Kitchin has decided that a number of key issues in a dispute between the Football Association Premier League, and various suppliers of foreign satellite decoder cards and publicans who have installed foreign satellite systems, should be sent to the European Court of Justice for a ruling. The Premier League is alleging that these activities breach its rights under Part VII of the Copyright Designs and Patents Act 1988 over decoding devices which give unauthorised access to broadcasts containing Premiership football matches and that showing these matches in the United Kingdom involves infringement of a number of copyright works embedded in the match broadcasts. The defendants rely on the fact that the cards they are importing and using are not pirate devices but are genuine cards issued by the foreign broadcasters, and invoke the provisions of the Treaty of Rome on free movement of goods and services as well as EC competition law.
Mr Justice Kitchin stated that the issues in the case "are so fundamental that they should be considered by the ECJ at the earliest opportunity." From within 8 New Square, James Mellor QC, Charlotte May and James Whyte acted for The FAPL, and the defendants were represented by Martin Howe QC and Stephen Vousden. In addition, Nicholas Green QC and Aidan Robertson from Brick Court Chambers represented FAPL and Andrew Norris and Tom St Quintin from Hogarth Chambers represented the defendants. Judgment was handed down on the 24th June.
Conor -v- Angiotech
In Conor v. Angiotech, the House of Lords had to consider the validity of a patent claim to a device (a stent coated with taxol) said to be useful in treatment of a certain medical condition (restenosis). The description of the patent did not show that the device was in fact useful in treatment of that condition, but contained assay data showing that taxol had a certain physiological property (preventing growth of blood vessels) which the patent claimed was linked to utility in treating restenosis. The High Court and the Court of Appeal had both held the claim to be obvious, essentially because the teaching of the patent was, in their view, no more than a suggestion that a taxol-coated stent might be useful to treat restenosis. The House of Lords disagreed, saying that so long as a patent contains enough information to make the claimed invention plausible, the obviousness of the claimed invention should not depend on the amount of evidence presented to indicate that the invention will work. This was, like Halliburton v. Smith, a case where the patentee had settled with its opponent but wished to have its patent restored on appeal. At the invitation of the House of Lords, the Comptroller General of Patents instructed Michael Tappin and Jessie Bowhill to make submissions to counter those of the patentee.
Rolawn -v- Turfmech
Daniel Alexander QC and Robert Onslow acted for the claimant and Andrew Lykiardopoulos acted for the defendant in Rolawn v. Turfmech in a trial before Mann J concerning the scope of design rights in giant lawn mowers for turf growing raising issues of the nature of the aspects of shape and configuration protected by design right.
The Gola Wing Flash Logo
John Baldwin QC led Robert Onslow in the successful protection of the iconic Gola logo against a threat from encroachment by a rival footwear manufacturer in December 2007. The case involved the tension between marks which are mere designs and those which are genuine badges of origin. The heritage, of which the likes of Bill Shankly and David Bedford formed part, lives on.
Cinpres Gas Injection Limited -v- Melea Limited
One of the country's longest running patent cases concerning ownership of a gas assisted plastic injection moulding patent has been decided by the Court of Appeal. The appeal followed earlier litigation between the same parties that was commenced in the early 1990s and ultimately dismissed some 8 years later, due largely to the evidence given by one of the Defendant's witnesses, the inventor. Years later the inventor confessed to having given perjured evidence and new proceedings were brought. The Claimant lost at trial but was successful on appeal. Peter Prescott QC and Jessie Bowhill acted for the Appellant.
Appeal Court reverse decision concerning 'A Whiter Shade of Pale'
John Baldwin QC led Jessie Bowhill in the successful appeal in October 2007 over the copyright interests in the music of Procol Harum's iconic hit 'A Whiter Shade of Pale'. The first instance decision had led to serious consternation within the music industry. However the appeal court accepted the argument that acquiescence and laches prevented organist Mathew Fisher from asserting his claim.
GlaxoSmithKline -and- Genentech
Daniel Alexander QC is acting for GSK in a claim to revoke Genentech’s patent relating to the use of anti-CD20 antibodies for RA therapy. The trial is due to be heard in early 2008. Genentech applied to stay the UK claim pending determination of opposition proceedings in the EPO. GSK successfully resisted that application before Lewison J and the Court of Appeal heard Genentech's appeal in early August 2007.
Univ. of Queensland -v- Siemens Magnet Technology
This patent trial, heard by Pumfrey J in late July 2007, concerned superconducting magnets for use in magnetic resonance imaging scanners. The University of Queensland, represented by Peter Prescott QC and Henry Ward, alleged that Siemens' MRI magnets infringed its patent. Siemens, represented by Michael Tappin (led by Christopher Floyd QC) denied infringement and alleged that the patent was invalid. Judgment is expected before Pumfrey J's elevation to the Court of Appeal this autumn.
Source Code Delivery Up
James St.Ville has just completed a speedy trial in the last of three actions he has dealt with this year to do with source code delivery up. The first, Duffy v. TIARC, related to the source code for web pages. The second, EGroup v. Baker, related to the source code for search engine software. The third, Meridian International v. IP Enterprises, began with a successful application for interim delivery up of the source code of integrated forecasting software. Proceedings were issued in March this year and the 7 day trial took place in July.
Yeda -v- ImClone/Rorer
Members of Chambers acted in an appeal in the House of Lords in July in the matter of Yeda -v- ImClone/Rorer. The case concerns the anti-cancer threrapy Erbitux® and the approach to time limits in patent entitlement cases under s.37(5) of the Act and the CPC. Peter Prescott QC, Daniel Alexander QC and Andrew Lykiardopoulos acted for the respondents.
IDEX ASA -v- STMicroelectronics and UPEK
In this two-week High Court trial in late June, IDEX a Norwegian technology company sued STMicroelectronics for royalties arising from a product development and patent licensing agreement relating to electronic capacitive fingerprint swipe-scanners. UPEK, a spun-out former division of ST and the purchaser of products from ST, applied to be joined as a defendant and counterclaimed for a declaration of non-infingement and for revocation of 4 IDEX patents on grounds of obviousness, anticipation, added matter and insufficiency. Among other points, the case raised questions of alleged Biogen insufficiency. Daniel Alexander QC acted for the Claimant and judgment is expected in the autumn.
Aloys Wobben -v- Vestas-Celtic Wind Technology Limited
This patent trial involved three separate patents, all of which were concerned with the control systems of wind energy systems i.e. wind turbines and the interaction between such turbines and the electrical grids to which they are connected. The requirements of the network operator in relation to the behaviour of various types of generation under fault conditions and under varying load conditions was central to the dispute. The case covered a multitude of construction issues, as well as issues of infringement, obviousness, anticipation, insufficiency, and added matter. James Mellor QC and Henry Ward acted for Mr Wobben, the Claimant. The trial was heard over June and July 2007.
Monsanto Technology LLC -v-Cargill International SA
A patent action in which Monsanto claimed infringement of a patent covering DNA sequences related to its RoundUp Ready® technology, which involves the genetic modification of a plant to express an enzyme that confers resistance to the herbicide glyphosate (RoundUp®). Cargill imported soymeal from Argentina made from RoundUp Ready soy beans. It raised defences of non-infringement and acquiescence, and counterclaimed for revocation of the patent on grounds of anticipation, obviousness and insufficiency. Michael Tappin and James Whyte acted for Monsanto. This trial was heard in June 2007.
Nichia -v- Argos
Daniel Alexander QC and James St.Ville acted for Argos in their appeal against the recent decision of the Patents Court (Mr Justice Pumfrey, 23 February 2007) that standard disclosure on obviousness should not normally be ordered in patent actions. Adrian Speck and James Whyte acted for Nichia. The claim is for infringement of patents relating to transparent electrodes and the layout of bond pads in gallium nitride LEDs with a counterclaim for invalidity. The Court of Appeal handed down judgment on 19 July 2007 allowing the appeal, ordering disclosure and setting out the principles upon which disclosure should be ordered in the future. In addition to the central issue of disclosure (which Lord Justice Jacob described as “significant”) the judgments handed down provide guidance as to (a) the approach to contemporary evidence in cases of obviousness and (b) whether privilege can be relied upon in withholding information concerning experiments undertaken for the purposes of the litigation.
Generics (UK) Ltd & Arrow Generics Limited -v- H. Lundbeck A/S
A pharmaceutical patent action concerning the single enantiomer of the successful anti-depressant citalopram (Cipramil®), namely escitalopram (Cipralex®). Attacks were brought on the basis of anticipation, obviousness and (Biogen) insufficiency. A broad range of defences were run, including commercial success, an alleged after-discovered benefit and an argument that the current UK approach to obviousness was out of line with the other major jurisdictions, and should be amended. The Claimants were successful on the two broadest, and therefore commercially most relevant, claims on the basis of the insufficiency attack. Mark Chacksfield acted for Arrow Generics. The trial in the Patents Court started in early March 2007.
Ranbaxy -v- Warner Lambert
A team from chambers (James Mellor QC, Michael Tappin and Jessie Bowhill) recently represented Ranbaxy at the trial in the High Court of Ireland of its claim for a declaration of non-infringement of one of Warner-Lambert's patents. The litigation concerns the cholesterol-lowering agent atorvastatin (sold by Warner-Lambert as Lipitor ®). Previously Michael Tappin had represented Ranbaxy in the UK litigation, with Richard Meade representing Warner-Lambert. The High Court in Dublin heard this case in January 2007 and gave judgment in July 2007.
The Da Vinci Code
Judgment was given by the Court of Appeal on the 28th of March 2007 in the copyright infringement case involving The Da Vinci Code, one of the most successful novels of all time. The Court dismissed the appeal and upheld the judge's finding that the author, Dan Brown, had not copied a substantial part of Holy Blood Holy Grail, a work of historical conjecture and the product of a significant research effort. The case is of interest in the context of copyright protection in ideas and in the expression of ideas. John Baldwin QC and James Abrahams were counsel for the successful party.