The UK Supreme Court, somewhat unusually, issued two patents decisions in 2013.
The first of these was Virgin v Zodiac ( UKSC 46). This case was highly significant as it overturned the longstanding ‘Unilin principle’, which effectively preserved a patentee’s right to collect damages awarded for infringement of a patent claim, even if that claim was subsequently found to be invalid (i.e. in EPO opposition proceedings)
Notably, in the context of this judgement, the Supreme Court invited future tribunals to reconsider whether the guidelines for awarding stays or procedure in cases where EPO opposition proceedings are pending (as established in Glaxo v. Genentech) were correct. This invitation was subsequently answered, IPCom v HTC ( EWCA Civ 1496). Rather than scrapping the Glaxo guidelines, however, the Court of Appeal recast them into a new thirteen-point test and, essentially, said that judges must maintain the ability to exercise their discretion to grant a stay, based on the facts of any particular case.
The second Supreme Court patent decision, Schütz v Werit ( UKSC 16), related to the existence or otherwise of a ‘right to repair’ and discussed the principles involved in deciding when ‘repairing’ becomes ‘making’ the product (and hence potentially infringing the patent for the product).
In their decision, the Court provided a five-part test to decide whether or not a person is ’making’ a product within the meaning of s.60 of the UK Patents Act. The factors to be considered are:
- Whether the replaced part is such a subsidiary part of the patented article that its replacement, when required, does not involve “making” the new article.
- Whether the replaced part includes any aspect of the inventive concept of the patent.
- Whether the replaced part is a free-standing item.
- The nature of the work in replacing the part (for example, whether demolition or other improvement is involved).
- A comparison of the value of the used article before and after replacement of the replaced part (to be used with caution).
This test was later followed by the High Court in Nestec v Dualit ( EWHC 923 (Pat)). That case, also illustrated how a priority document may become prior art against its own later application (the so-called ‘poisonous priority’ problem – see page XX of this newsletter).
Other significant UK cases in 2013 included HTC v. Apple ( EWCA Civ 451), where the exclusion from patentability of computer programs was considered. The Court in this case confirmed that an increase in the speed or reliability of the computer can be a valid “technical effect” for the purposes of determining whether the invention relates to a computer program as such.
The Court of Appeal also considered obviousness: in Novartis v Generics ( EWCA Civ 1623), which confirmed that, in the absence of any difficulties or uncertainties involved in doing so, it was obvious to investigate and resolve the enantiomers of a (known) racemic drug in the expectation of producing a more active form of the drug; and in Generics v Yeda and Teva ( EWCA Civ 925) it was confirmed that post-published experimental evidence has a role in confirming whether or not the patent makes it plausible that the relevant ‘technical problem’ has been solved - a party may therefore challenge the existence of a technical effect relied on by the patentee with post-published evidence.
Finally, in Sudarshan v. Clarian ( EWCA Civ 919) the issue of unjustified threats was considered by the Court of Appeal, which confirmed that an unjustified threat to sue a manufacturer’s customers was actionable, even when that threat had not been communicated directly to those customers but only to the manufacturer.