INTELLECTUAL PROPERTY • SCIENCE AND TECHNOLOGY
MEDIA AND ENTERTAINMENT • COMPETITION
SAS Institute Inc v World Programming Limited
The Claimant (S) had developed an integrated set of analytical software programs (SAS) which enabled users to carry out a wide range of data processing and analysis tasks, by writing their own application programs in the SAS language. S's customers over the years developed thousands of application programs written in the SAS language but they required a licence to use the SAS system in order to run their existing SAS language application programs and in order to create new ones. The Defendant (W), repesented by Martin Howe QC, Robert Onslow and Isabel Jamal, decided to create an alternative software package that would execute application programs written in the SAS language, by studying the SAS system and writing its own program (WPS) to emulate the its functionality. It was accepted by S that at no point had W had access to or copied the text or structural design of the source code of the SAS components.
S claimed (a) that WPS infringed S's copyright in the user manuals for the SAS system (b) that by copying the SAS manuals W had indirectly copied the computer programs comprising the SAS components and as such that WPS infringed the copyright in the SAS components (c) that W had used a version of the SAS system known as the Leaning Edition in a way that was not permitted by the licence and as such W had breached the licence terms and infringed the copyright in the learning edition; (d) that W's own manuals called the WPS manual and the Quick Reference Guide infringed the copyright in S's manuals.
S challenged the existing view of the English courts, in Navitaire Inc v EasyJet Airline Co Ltd (No3) (2004) EWHC 1725 (Ch), (2005) ECC 30 and Nova Productions Ltd v Mazooma Games Ltd (2007) EWCA Civ 219, (2007) Bus LR 1032, that, pursuant to Council Directive 91/250, it was not an infringement of copyright in the source code of a computer program for a competitor of the copyright owner to study how the program functioned and then to write its own program to emulate that functionality. Even if that was correct, however, S contended that W had nevertheless committed copyright infringement and breach of contract in creating WPS and its accompanying documentation as a result of the way it had gone about those tasks. Arnold J held as follows:
(1) He was not persuaded that the judge in Navitaire had been wrong to conclude that, on the true interpretation of art.1(2) of Directive 91/250, copyright in computer programs did not protect (i) programming languages from being copied; (ii) program interfaces from being copied where that could be achieved without decompiling the object code; (iii) the functions of the programs from being copied (and that this had been upheld by the Court of Appeal in Nova). However he concluded that none of these points were acte claire and as such a reference to the ECJ was needed.
(2) The reasoning which supported the decision in Navitaire on art.1(2) also applied to Directive 2001/29 art.2. That, again, was a question on which guidance from the European Court was required. On the assumption that the Court was right as regards its interpretation of art.1(2) of Directive 91/250 and art.2 of Directive 2001/29 W had not infringed S's copyright in the SAS manuals by producing or testing WPS.
(3) W's use of the learning edition fell outside the scope of the terms of the relevant licenses. Its use of the learning edition was within art.5(3) of Directive 91/250, and to the extent that the licence terms prevented that they were null and void, with the result that none of W's acts complained of was a breach of contract or an infringement of copyright. The interpretation of art.5(3) was, however, another question on which guidance from the European Court was required.
(4) W had infringed copyright in the SAS manuals by substantially producing them in the WPL manual, but had not infringed copyrights in the SAS manuals by producing the WPS reference guides.
Donvand Limited -and- Ozaltun Otelcilik Turizm Ve Ticaret Ltd Sti and Others
Daniel Alexander QC acted for the claimant, one of the leading UK travel intermediary companies and Mark Platts Mills QC and Jessie Bowhill acted for the defendants in a substantial international trade mark dispute principally relating to the gta brand in the travel industry. The case came to trial before Floyd J in the High Court in July 2010 and the parties reached a world-wide settlement after several days hearing.
Motorola -v- Research In Motion
Daniel Alexander QC and James Abrahams were part of a team acting for Motorola in substantial multijurisdictional patent litigation with Blackberry manufacturers, Research in Motion, concerning their respective telecoms patents. Three trials were listed between the parties. One was heard in January 2010 and the case settled worldwide on the eve of the second trial due to be heard in April 2010.
Lucasfilm -v- Andrew Ainsworth
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. Not only did he manage to produce the iconic costumes for the Stormtroopers, in accordance with the paintings of Ralph McQuarrie, but, in conjunction with the costume designer, John Mollo, also produced a number of other helmets and articles for characters in the film. He charged a relatively modest amount per item. Over 25 years later, coming across his old moulds, he began to produce, in small quantities, armour and helmets for aficionados. He was sued in the USA for selling about £8,000 of goods, the claim being based on infringement of copyright and breach of the Lanham Act (trade marks). 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 the staggering sum of $20 million.
The film company then brought proceedings in the UK under a number of heads, including (i) infringement of UK and US copyright (ii) breach of contract (iii) infringement of trade mark, passing off and breach of the US Lanham Act and (iv) enforcement of the US Order for damages, limited to $10 million, being what the US Court had ordered in respect of "compensatory" damages (the remainder being in the nature of exemplary damages). George Hamer acted for the defence and, at trial, was led by Alastair Wilson Q.C. In the High Court, the claim was defeated, save in two respects: the Court decided that (i) it could entertain a claim for infringement of US rights and found infringement of US copyright and (ii) that the copyrights in the articles made by Mr Ainsworth were vested in Lucasfilm. The Judge awarded no costs. The Court of appeal rejected Lucasfilm's appeal in relation to the two issues of infringement of UK copyright and enforcement of the US Judgment and rejected Mr Ainsworth's appeal on the ownership of copyrights, but allowed his appeal on the justiciability of the claims under US law. It awarded Mr Ainsworth his costs of the appeals and 60% of the costs in the High Court.
Napp Pharmaceutical Holdings Ltd v Ratiopharm GMBH & Sandoz Ltd [2009] EWCA Civ 252
In March 2009 Michael Tappin appeared as junior counsel for Napp at the first instance hearing and as lead counsel in the Court of Appeal. The patent in suit was for a controlled release formulation of an analgesic called Oxycodone, a drug that had commonly known for many years. Napp brought a claim against Sandoz and Ratiopharm for infringement of its patent in relation to controlled release formulations of Oxycodone which they had put on the market. Sandoz and Ratiopharm brought a counterclaim against Napp claiming that the patent was invalid for obviousness, lack of novelty and added matter. Napp successfully defended the invalidity attacks however the Judge at first instance held that the patent was not infringed by the Sandoz/Ratiopharm products. Both sides appealed to the Court of Appeal. Napp brought appealed the Judge's findings on construction of the patent and Sandoz and Ratiopharm brought a cross appeal in relation to added matter and obviousness. The primary issue in relation to added matter was the extent to which the case of PPG/Disclaimer (G1/03) laid down a further test for establishing whether a disclaimer added subject matter. The Court of Appeal held that G1/03 did not add any extra criterion in relation to disclaimers and added matter and as such that the disclaimer in the patent in suit did not add matter. The appeal on construction was allowed and the cross appeal dismissed, and as such the patent was held to be valid and infringed.
Novartis AG v Dexcel-Pharma Ltd [2009] EWHC 336
In Feburary 2009 Novartis AG brought a claim against Dexcel-Pharma Ltd for infringement of its patent for isolated cyclosporins, a naturally occurring peptide produced by fungi which produces immunosuppression that is useful in recipients of organ transplants. Dexcel-Pharma had not yet marketed its product, Deximune, in the UK. The validity of the patent had already been established in the case of Novartis AG v Ivax Pharmaceuticals UK Ltd [2006] EWHC 2506. The primary issues before the court were firstly, on construction, whether the Deximune comprised a hydrophilic phase and a lipophilic phase within the meaning of the patent, and secondly whether Deximune was a 'microemulsion preconcentrate'. The Judge held that the marketing of Deximune in the UK would constitute an infringement of the patent. Daniel Alexander QC and Mark Chacksfield represented the successful Claimant.
MMI Research Limited v Cellxion Limited and Others [2009] EWHC 418 (Pat)
Martin Howe QC and Henry Ward appeared on behalf of the Claimants in this patent infringement action heard in January 2009. The patent in suit was entitled "Method for identifying a mobile phone user or for eavesdropping on outgoing calls". The Claimant sued the Defendants for patent infringement in relation to a product called a DX918. The patent was found to be valid and infringed by the Dx918.
Belvac Production Machinery Inc -v-Carnaudmetalbox Engineering UK
John Baldwin QC, sitting as a deputy judge, in the Patents Court heard this case in January 2009 involving a patent for a 'necking machine' used to manufacture drinks cans. Belvac brought an infringement claim against the Carnaudmetalbox in relation to two of its necking machines. Carnaudmetal challenged the infringement claim, arguing that its machines did not fall within the true construction of the claims. It also brought a counterclaim claiming that the patent was invalid for obviousness and anticipation. Carnaudmetal's construction of the claims was found to be correct and as such its machines did not infringe. The patent was also held to be invalid for obviousness but not for lack of novelty. James Mellor QC represented Carnaudmetal.
Zipher Ltd v Markem Systems Ltd, Markem Technologies Ltd [2009] EWCA Civ 44
In January 2009 Adrian Speck appeared as junior counsel for the appellant and Richard Meade QC appeared as leading counsel for the respondents. The trial at first instance was a claim for infringement brought by Zipher against Markem in which Markem brought a counter claim for invalidity of a number of Zipher's patents. Floyd J held that Zipher's patents were invalid. However, another point raised at trial was an argument made by Markem that Zipher had given an undertaking at a hearing in 2003 in front of Judge Fysh QC such that it was precluded from alleging that any claim wider than claim 5 of a particular UK Patent and its international equivalents (the PCTs) were valid or infringed. Floyd held that such an undertaking had been given in relation to the UK Patent and then held, in a subsequent judgment, that the undertakings also extended to the PCTs. The issue for the Court of Appeal was whether there was binding undertaking given to the High Court even though it was never committed to writing, and, if so, whether it was binding even though the case subsequently went to the Court of Appeal. The Court allowed the appeal and held that the statements in the hearing in front of Fysh J constituted an offer to give undertakings which the Judge did not accept, and that, without a statement to the contrary, the undertakings were not be revivable at the appeal stage.
Generics (UK) Ltd, Arrow Generics Ltd & Teva UK Ltd & Teva Pharmaceuticals Ltd v H. Lundbeck A/S [2009] UKHL 12
In January 2009 Michael Tappin and Mark Chacksfield appeared as junior counsel for the appellant, Lundbeck, in the appeal to the House of Lords. The primary issue before the House of Lords was whether the ratio given by Lord Hoffmann in Biogen Inc v Medeva Plc (1997) RPC 1 HL meant that a product claim should be held to be insufficient if the product was an obvious desideratum and the only inventive step in the patent was one method of making the product. The House concluded that Biogen insufficiency was limited to the very specific facts of that case, namely where the invention was defined partly by what the product did and partly how the product was made. The claims in Biogen were to a class of products and as such the patent was insufficient because it did not teach the skilled person how to make all the products in the class. The reasoning in Biogen was not relevant to 'normal product claims', because for product claims, a patent is sufficient if it teaches the skilled person one way of making the product. The patent in suit disclosed a way of making the enantiomer and so was held to be valid.
Conor -v- Angiotech [2008] UKHL 49
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 during the hearing in January 2009.
James Duncan Kelly & Kwok Wai Chiu v GE Healthcare Ltd [2009] EWHC 181 (Pat)
Andrew Lykiardopoulos appeared as junior counsel for the Defendant, GE Healthcare. The trial, in December 2008, was about whether two research scientists were entitled to compensation under s.40 of the Patents Act 19977 for the benefit that GE Healthcare had gained from the patented inventions which the researchers had developed whilst they were employees. The researchers needed to show that they were the actual devisers of the invention and that the patent (not just the invention) had been of outstanding benefit to their employer. The Judge held that the researchers were entitled to compensation under s.40 but that their share should only be 3% of the value of the benefit.
Laboratorios Almirall SA -and- Boehringer Ingelheim International GmbH [2009] EWHC 102 (Pat)
Andrew Lykiardopoulos appeared as junior counsel for the Defendant in this patent revocation dispute heard by His Honour Judge Fysh QC in December 2008. Each party sought a declaration of invalidity in relation to the other's patent. Both patents related to a substance called aclidinium, an anticholinergic used to treat respiratory disorders. The Judge held that both patents were invalid and should be revoked.
Ratiopharm GMBH & Sandoz Ltd v Alza [2009] EWHC 213 (Pat)
The patent in suit was for transdermal patches for administering fentanyl through the skin. Fentanyl is a potent opioid analgesic and the patent claimed that the patches would release the Fentanyl at a rate suitable to induce and maintain analgesia for 3 days. Alza brought a claim for infringement of its patent against Ratiopharm and Sandoz and they in turn brought a counter claim for invalidity on the grounds of obviousness and anticipation by a number of pieces of prior art. The Judge held that the Patent was obvious and that it was anticipated by some of the prior art. Mark Chacksfield appeared as junior counsel for Sandoz and Michael Tappin appeared as leading counsel for Alza during the trial in November 2008.
Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Premium Aircraft Interiors UK Ltd [2009] EWHC 26
Richard Meade QC, Henry Ward and Jessie Bowhill appeared for the claimants, Virgin Atlantic, in the trial before Mr. Justice Lewison in November 2008. Virgin brought a claim against Premium Aircraft alleging that that Premium Aircraft Interiors, the manufacturer of its patented flat-bed seat (called 'the UCS'), had manufactured other seats or kits for other seats that infringed its patent and its unregistered design rights in the UCS, and in particular that the Solar Eclipse chair made by Premium Aircraft was based on a copy of the UCS. The defendants' case was primarily that it had not infringed the patent or the unregistered design right, but that, if the patent was infringed by a reclining seat, then the patent was invalid on the grounds of anticipation, obviousness and added matter. The Judge held that the patent was valid but that neither the patent nor the unregistered design right was infringed by Premium Aircraft's other chairs.
Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032
The first claimant, the owner of the Cipriani Hotel in Venice successfully brought a claim against the first defendant for trademark infringement and passing off in relation to the London restaurant called 'Cipriani London'. The first defendant company was run by the sons of Guiseppe Cipriani, one of the founders of the Hotel Cipriani. The defendant argued that the goodwill in the name Cipriani was shared (both in Venice and in London) between the Hotel Cipriani, the defendants and the other Cipriani businesses in and around Venice. The defendants also argued that they were entitled to use the name Cipriani under Article 12(a) of the Council Regulation 40/94 (the 'own name' defence) and brought a counter claim for invalidity claiming that the claimant registered the trademarks in bad faith. The Judge found in favour of the Claimants. The Cipriani Group are appealing the decision; the appeal is expected to be in January 2010. James Mellor QC and Charlotte May appeared on behalf of the defendants in the October 2008 Trial.
Peer International Corporation & Southern Music Publishing Co Inc & Peermusic (UK) Ltd v Editoria Musical De Cuba [2007] EWCA Civ 1308
The first instance trial concerned the entitlement to the UK copyright in 14 songs written by Cuban composers. The trial Judge, Lindsay J, found in favour of the defendants, Editoria Musical De Cuba, but at the costs hearing he did not make an order as to costs in favour of the defendants on the aspects of the case in which the claimants were unsuccessful. Editoria Musical De Cuba, represented by James Mellor QC, appealed the decision on costs, claiming that the Judge erred in law in denying them the right to recover any of its costs from the unsuccessful claimants. Peer claimed that, if the Judge had erred, then the discretion as to costs should be reviewed in a way which was more favourable to them. The Court of Appeal dismissed the appeal in October 2008 and held that the Judge had not made any errors of law in using his discretion to make no order as to costs in favour of the successful party.
Armour Group v Leisuretech Electronics [2008] EWHC 2797 (Pat)
Daniel Alexander QC and James Abrahams represented the Claimant Armour and Richard Meade QC and Robert Smith represented Leisuretech Electronics in the trial held in October 2008. Armour sought revocation of Leisuretech's patent for a system for the provision of stereo sound to different rooms from a single source using a particular type of 'Cat 5 cable'. Armour claimed that the patent was obvious over the common general knowledge. It was accepted by both parties that if the patent was valid then Leisuretech would be liable for infringement. The Judge held that the patent was invalid as it lacked an inventive step.
W L Gore & Associates Inc. v Geox SpA [2008] EWHC 2311 (Pat)
James Mellor QC and Andrew Lykiardopoulos appeared on behalf of the Claimant and Richard Meade and Tom Moody-Stuart appeared on behalf of the Defendant during this trial heard by Mr Justice Floyd in September 2008. The Claimant sought a declaration of non-infringement and revocation of two of the Defendant's patents, both relating to shoes with waterproof and breathable soles and methods for making such shoes. The Claimant's case was that the patents were invalid for obviousness but that if they were valid its own products did not infringe. The Judge held that the patents were not obvious and so were valid, and concluded that the Claimant was only entitled to a declaration of non-infringement in relation to one of the two patents.
British Sky Broadcasting Plc and Others v. Sky Home Services Limited and Others [2008] EWCA Civ 1101
Tom Moody-Stuart appeared for the Respondents in this Court of Appeal hearing in July 2008. BSkyB sued Sky Home Services in 2006 for passing off. The Court held that Sky Home Services had passed off their contracts as if they had been approved by BSkyB but that there was no passing off in relation to oral marketing and the Court found against BSkyB in relation to its claim that the Defendants had acted in common design. An order for costs was made against Sky Home Services following the trial and awarded BSkyB its costs with a 10% reduction due to the fact that it had not won in relation to the common design claim and that the split of costs should be 30-70 between Sky Home Services and the other Defendants. Sky Home Services appealed the costs decision, claiming that the Judge had not considered the fact that the Claimant had lost the oral marketing claim. The appeal was allowed and Sky Home Services was made to pay 13.5% of BSkyB's costs.
Dr Reddy's Laboratories (UK) Limited v. Eli Lilly and Company Limited [2008] EWHC 2345 (Pat)
The patent in suit was for a drug called olanzapine which is used in the treatment of schizophrenia. The Claimant sought to revoke the patent claiming that the patent was anticipated by and obvious in light of the Defendant's provisional patent as well as other prior art which it claimed disclosed the formula for olanzapine. The Judge held that although the general formula had been disclosed there had been no 'individualised disclosure' of the drug and it would not have been obvious to the skilled person to make olanzapine. Andrew Lykiardopoulos and James Whyte appeared as junior counsel for the Claimant in the trial heard in July 2008.
Actavis v Novartis [2009] EWHC 41 (Ch)
The trial, held in July 2008, was about a European Patent for a sustained release formulation of a drug called fluvastatin, a type of statin which reduces blood cholesterol. Actavis sought to revoke the patent on the grounds of obviousness and insufficiency. Novartis did not defend the claims as granted but applied to amend. The main issue in the trial was whether the invention was obvious in light of all the difficulties associated with attempting to make a controlled release formulation. The Judge held that, despite the problems associated with successfully formulating controlled release fluvastatin, the invention was still technically obvious and as such patent was obvious over the common general knowledge but allowed the amendments proposed by Novartis. Mark Chacksfield appeared as junior counsel for Novartis.
esure -v- Direct Line [2008] EWCA Civ 842
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.
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.
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