This article originally appeared in the IAM Yearbook 2015 and can be accessed at www.iam-media.com/Intelligence/IAM-Yearbook/2016.
This has already proven to be a fascinating year for intellectual property in the United Kingdom. Life sciences patent litigation came to the fore as the Court of Appeal considered whether the prosecution history of a patent can be used when construing its claims. The Court of Appeal looked at the use of celebrity images. In copyright, the High Court handed down website blocking orders, which have become increasingly common. This chapter looks back at the first half of the year to review a selection of cases and legal developments of interest to a variety of industries.
Unified Patent Court Agreement: United Kingdom ambles towards ratification
The United Kingdom is one of the three essential signatories that are required to ratify the Unified Patent Court Agreement, the intergovernmental agreement created to bring about the Unified Patent Court (UPC). Rumours earlier this year suggested that the United Kingdom might ratify the UPC Agreement before the May 2015 general election, despite the Conservative Party’s election platform to hold a referendum to determine whether the United Kingdom should remain part of the European Union. Now in government, the Conservatives intend to hold the referendum before the end of 2017, leaving unresolved the question of when ratification might take place.
In a recent statement made by the UK Intellectual Property Office (UKIPO), it appears that the government is “pressing ahead” and intends to have all “domestic preparations” completed by Spring 2016. This may or may not mean that the government intends to ratify then, but it appears likely that the United Kingdom will not wait to ratify until after the referendum.
UK courts making changes
The Intellectual Property Enterprise Court (the United Kingdom’s specialty court focused on resolving IP issues for small to medium-sized enterprises) was expected to relieve some of the increasing pressure on the High Court by providing a different route of access to the justice system for smaller cases and litigants. While the court has proven popular, no corresponding drop in the number of claims filed at the High Court has occurred. This has led to some concern about the gradually increasing length of time to trial before the High Court. In a recent statement, the court announced that more cases will be heard by deputy IP judges and the court will use its case management powers “in a more active manner”, with the intention of getting trials heard more quickly – within a year from commencement “where possible”. Further, a new High Court IP judge, Justice Henry Carr QC, has recently been appointed. This commitment will be welcomed by parties looking to litigate in the United Kingdom.
“Selection patents” and technical contribution: In Idenix v Gilead, a lengthy judgment handed down at the end of 2014, the court considered and crystallised the legal approach when considering whether patents that claim a selection of compounds are obvious and therefore invalid.
Idenix’s patent concerned certain compounds for the treatment of flaviviridae, the family of viruses that causes many diseases, including hepatitis C. The court held that the selection of compounds was “stupendously broad” and it was not plausible that substantially all the compounds covered by the patent would be effective against flaviviridae.
The court therefore held that the patent claims were obvious because the claimed inventions made no technical contribution to the art. Interestingly, this was the first time that a UK judge considered the European Patent Office (EPO) Board of Appeal decision AgrEvo (T 939/92) in the context of obviousness, as opposed to rolling it up into insufficiency (eg, Regeneron v Genentech).
Patent claim construction – use of the prosecution file: One of the developing areas of patent law over the last few years has been whether a party is entitled to rely on the prosecution history of a patent to aid claim construction. The question has been: in order to understand the meaning of the claims of the patent, is it permissible to look behind the patent itself and consider the correspondence and arguments put forward by the patentee to justify the grant of the patent at the UKIPO or EPO?
Last year in Actavis v Eli Lilly the first-instance court held that it was appropriate to refer to the prosecution history of the patent. The patent covered Eli Lilly’s compound pemetrexed disodium. The question was whether the compounds in Actavis’ products infringed the patent on the basis that they were equivalent to the patented compound. The court held that the prosecution history provided evidence that Eli Lilly purposefully limited the claims to pemetrexed disodium in response to objections from the patent examiner and therefore went a considerable way to support the court’s view that Actavis’ product did not infringe.
However, the Court of Appeal overturned the decision and narrowed the positive reliance on the prosecution history as an aid to construction. As the leading appeal judge said: “In those circumstances, the light which the prosecution history sheds on the ultimate question of construction is likely to be extremely limited.”
‘Swiss form’ claims – requisite knowledge: Warner-Lambert v Actavis has been one of the most complex cases of 2015, involving four High Court and one Court of Appeal decisions. One of the interesting issues to emerge concerns the scope of protection afforded to ‘Swiss form’ claims: to infringe such a patent, does a drug manufacturer require subjective intent or simply constructive knowledge that the drug will be used for the patented therapeutic indication?
The patent concerned the use of pregabalin (marketed as Lyrica) in the manufacture of a medicine for the treatment of neuropathic pain. The patent claim was written in Swiss form, a drafting method used to overcome patentability issues where a known active ingredient is used for a new therapeutic use (the previous patent concerned the molecule only and protection expired in 2013). Importantly, Lyrica was also prescribed (but not patented) for the treatment of epilepsy and anxiety. Actavis’ generic pregabalin, Lecaent, was approved for epilepsy and anxiety, but not the treatment of neuropathic pain (a so-called ‘skinny label’). Warner-Lambert argued that, regardless of the skinny label, doctors would still prescribe Lecaent for neuropathic pain and therefore the product would be used in a way that infringed the patent.
The first-instance court, on an application for an interim injunction, held that for the product to infringe, Actavis required a subjective intention on its part that Lecaent was suitable for, was intended for and would be used for the treatment of pain. The Court of Appeal disagreed and held instead that where a manufacturer of drugs has constructive knowledge that its drug will be used for the patented indication or where it is reasonably foreseeable that it will be used for the patented indication this lower threshold would be enough. After a detailed review, the trial judge reluctantly followed and applied the reasoning of the higher court but nevertheless found that Actavis did not have the requisite knowledge to infringe on either basis.
Following swiftly in the wake of the interim Warner-Lambert decision, the High Court again considered Swiss form claims in Hospira v Genentech, a path-clearing action brought by biosimilar hopeful Hospira against a Genentech patent concerning Herceptin. The court held that the mental element was important for the purposes of validity. In order for the Swiss form claim to be anticipated, the judge held that the skilled addressee had to know that the combination therapy would achieve the claimed therapeutic purpose. On the facts, the judge was not satisfied that the cited prior art disclosed the therapeutic purpose – namely, an increased efficacy in the treatment of breast cancer as compared to the monotherapy alone.
Software patents: In Lantana Ltd v Comptroller-General of Patents, Designs and Trade Marks, a patent application for a method of extracting and transferring data between two computers using email was held to be unpatentable as it was a computer program. The invention, intended to circumvent the problems of establishing and maintaining a continuous connection between two computers by using email, was held by the Court of Appeal to be a computer program ‘as such’, which is subject matter excluded from patentability. It may have involved novel and inventive processing, but was still excluded.
Pre-action disclosure: In The Big Bus Company v Ticketogo, an alleged infringer applied successfully for pre-action disclosure (discovery) against a non-practising patent licensing entity to find out whether the case was worth fighting or settling on the terms offered.
The court, in its discretion, allowed discovery of licences pertaining to the transport sector. The court followed earlier case law which held that limited disclosure as to quantum at an early stage is desirable, as it allows parties to make a realistic assessment of the value of the claim and prevents situations where likely costs exceed the quantum of the claim.
There remains a question over whether the judge was too ready to order pre-action disclosure. However, until the case is heard at appeal (listed for late 2015/early 2016), this remains a potential tactic for alleged infringers.
Use of celebrity images: Celebrities do not own the exclusive right over the use of their image in the United Kingdom. As a result, fashion designers and other manufacturers often believe that they are free to use celebrity images on their products. The Court of Appeal decision in Fenty v Arcadiais a reminder that care should be taken to ensure that such use does not amount to passing off.
Topshop used an image of Rihanna on a t-shirt. Last year the court held that such use amounted to passing off. In this appeal, the court confirmed that while it is possible for a celebrity to bring a passing off action to prevent the unauthorised use of his or her image, the use of an image on a garment is not, in itself, passing off. Factors of particular relevance in this case were Rihanna’s previous use of the image for publicity, her past public association with Topshop and the scope of the goodwill that she enjoyed due to wide-ranging merchandising and endorsements. The Court of Appeal therefore confirmed the earlier finding that Topshop’s actions amounted to passing off. While the law in this area has not changed, this case may make the fashion and retail industries more cautious about adding famous faces to their products in the future.
Pan-European relief: In Enterprise v Europcar earlier this year, Enterprise succeeded in an infringement claim against Europcar relating to its use of a stylised ‘e’ logo on a green background.
An interesting issue then arose as to the scope of relief – should Enterprise be entitled to pan-European relief or should relief be limited to the United Kingdom? Referring to DHL v Chronopost, the court held that once an applicant has established infringement of a Community trademark, it will generally be entitled to pan-European relief, except where:
- the applicant itself has restricted the territorial scope of its action; or
- the defendant proves that the use of the sign has not affected the functions of the trademark.
At trial, Enterprise relied solely upon infringing acts committed in the United Kingdom. Further, the finding of acquired distinctiveness and the evidence of actual confusion related to the United Kingdom only. Therefore, the injunction and inquiry as to damages were limited to the United Kingdom. From a practical point of view, this litigation highlights that pan-European relief will not be granted as of right.
Co-existence and descriptive trademarks: In Supreme Petfoods v Henry Bell & Co, the claimant produced animal feed labelled with various cartoon characters together with the word ‘Supreme’ in a banner. Henry Bell also used the word on animal feed, but not in a banner, as had been agreed with trademark owner Supreme Petfoods. The dispute arose when Henry Bell redesigned its packaging and extended its range to other products.
The High Court found that the SUPREME word marks were descriptive (the cartoon characters were better known than SUPREME), but had acquired a slender degree of distinctive character in relation to food for small animals. Therefore, the marks were invalid, except in relation to small animal food. Further, the High Court concluded that Henry Bell’s actions amounted to honest concurrent use – it had used the sign for over 20 years without causing confusion, which demonstrated that the use had no adverse effect on the functions of the marks. Even if there had been infringement, Henry Bell could have successfully defended on the basis that it was using the sign as an indication of the quality of the feed.
The case is a reminder of the importance of choosing a distinctive brand name and of using that name in a trademark sense (ie, as a bridge of origin) and consistently. It also highlights that co-existence can present issues as brands and product lines evolve – arrangements should therefore be reviewed periodically.
Internet streaming: Earlier this year, the Court of Appeal once again referred the long-running ITV v TVCatchup dispute to the European Court of Justice (ECJ). TVCatchup provides an internet streaming service offering live television broadcasts to members. TVCatchup was previously held to have infringed copyright through streaming to mobile devices via a mobile telephone network, but had a defence against infringement when transmitting via the Internet. The ECJ has been asked to interpret the EU Copyright Directive regarding the meaning of the term ‘cable’ and whether wired internet services fall within that meaning. If so, it could provide TVCatchup, or any other streaming service that has not licensed content from broadcasters, with a potential defence against copyright infringement.
Website blocking order: In Twentieth Century Fox Film Corp v Sky UK Ltd, the court ordered the United Kingdom’s major internet service providers to place a website block on a number of websites, including Popcorn Time, which offer streaming and BitTorrent file sharing of films and television programmes. The defendant internet service providers did not oppose the application, so the issue that the court considered was whether it had jurisdiction to make such an order. Once satisfied that the target websites had been properly identified, and armed with a technical understanding of how they worked, the court had no trouble finding that copyright had been infringed. Ultimately, jurisdiction was engaged and the blocking order was granted.
Equitable ownership: Fresh Trading Ltd v Deepend Fresh Recovery Ltd concerned ownership of the recognisable ‘dude’ logo used on packs of the Innocent brand of smoothies. The facts and payment provisions were complicated, particularly because the signed contract expressly transferring ownership of copyright could not be found. However, the court held that the parties were acting in accordance with the unsigned heads of terms and Fresh Trading had equitable ownership of the logo that it had commissioned. Ultimately, this decision should be used as a reminder that companies should keep accurate design records and all IP assignments should be made expressly and clearly.