The top UK patent cases of 2011

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Ltd & Anor

This case concerned the effect of an amendment to a patent after infringement proceedings have concluded. The UK Court of Appeal found Virgin’s patent for aircraft seating to be valid and infringed during the case in 2010. The court ordered an injunction and an inquiry into the level of damages that should be awarded.

Premium wanted the order to be stayed on the ground that there was a pending appeal with the Technical Board of Appeal of the European Patent Office concerning an opposition to Virgin’s patent. However, Premium’s request for a stay was refused by the court. At the appeal hearing, Virgin agreed to delete some of its patent’s claims and amend others. This amendment has a retrospective effect under English law, so Premium applied to the court to vary the order that it made during the infringement proceedings.

The court discharged the injunction but held that the judgment for damages should remain. The court said that a permanent injunction has a prospective effect—its purpose is to prevent future infringements— but once the patent was amended there was nothing for the injunction to protect. An attempt to enforce the injunction on the patent’s amended claims would have been an attempt to enforce a new claim.

A patentee who wished to prevent an infringement of amended claims must sue in new proceedings and obtain a fresh injunction. An inquiry into damages, on the other hand, was held not be an attempt to enforce a new claim. It was merely the quantification of the amount that was payable and the order for an inquiry into damages could not, therefore, be discharged. For the same reason, Premium’s argument that it should be repaid the £3.6 million it deposited on account of damages also failed.

Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Anor

The importance of expert evidence in patent proceedings in English courts was highlighted by Mr Justice Richard Arnold in this decision, which was handed down in July 2011.

A fundamental feature of English litigation is that an expert’s primary duty is to the court, not to the party that retains him or her. Th e judge said that an expert’s opinion must be independent and impartial, and the responsibility for impartiality is shared between the expert and the lawyers who instruct the expert. In practice, lawyers often draft expert reports on the basis of what an expert has told them, and it was stated that the responsibility to ensure that a report is objective falls squarely on the lawyer’s shoulders.

To show impartiality, an expert’s report should give a balanced interpretation of all the relevant documents. If an expert has given evidence on the same or similar subject matter before other hearings, this should be disclosed, together with any publications the expert has authored in the field.

The judge also said that selected experts should reflect an averagely skilled person or, as it may be, a skilled team, in the art. For a court to attach any weight to the evidence of an expert in patent matters, the expert should be typical of a skilled person in the art, with knowledge of, and preferably experience in, the relevant field at the relevant date.

In this case, Justice Arnold concluded that the experts relied on by Medimmune were not a skilled team and so could off er only limited assistance in relation to common general knowledge in the field at the priority date. In contrast, Novartis’s expert was too skilled, leading the judge to view the expert’s evidence in the context that the expert was inventive, something that the hypothetical skilled person is not.

Ranbaxy (UK) Ltd v AstraZeneca AB

This case considered the scope of second medical use claims. AstraZeneca’s patent claimed a magnesium salt of the proton pump inhibitor esomeprazole with a particular optical purity. Th e patent also contained a Swiss form (second medical use) claim for the use of the magnesium salt in the manufacture of a medicament to inhibit gastric acid secretion.

Ranbaxy’s product was manufactured by a process that began with the magnesium salt in question. However, another substance was added and this meant that the final product did not contain any magnesium salt with the requisite optical purity.

AstraZeneca argued that, because Ranbaxy’s product was a direct product of a process in which magnesium esomeprazole, with the requisite optical purity, was used to manufacture a medicament, its patent was infringed. Ranbaxy countered that the patent claim required the final product to contain magnesium esomeprazole of the specified optical purity.

The judge agreed with Ranbaxy, finding that a skilled person would believe the patent to be directed to the production of optically pure magnesium esomeprazole and its use in particular therapies. The person would understand the patent claim’s teaching to be towards the use of this new compound for the manufacture of a medicament containing that compound.

This claim construction appears to read a limitation in the claim that would not otherwise be present in a strict literal interpretation. The claim specifies only the use of esomeprazole salt for the manufacture of a medicament for a specific purpose; there is no limitation in the claim regarding the composition of the final medicament.

However, this judgment is not as controversial as it seems. It recognises that Swiss form claims do not provide wider protection than standard second medical use claims in the direct form of “use of X for the treatment of Y”. Broader protection should not be granted to an invention simply because a claim is framed in a Swiss form as opposed to a direct form.

Re Halliburton Energy Services Inc

In October 2011, Judge Colin Birss sat as a UK High Court of Justice (patents court) judge and provided a decision in this appeal from the UK Intellectual Property Office (UKIPO). The case concerned patentability exclusions in s1(2) of the UK Patents Act 1977.

English courts have interpreted this section to mean that an invention has to make a “technical contribution” in order for it to be patentable. As a result, computer-implemented inventions (CIIs) have not been patentable because of the exclusion of “programs for a computer ... as such”.

Halliburton’s invention was a CII but it was found to be patentable. The court held that, when the task that is carried out by a computer program is not within the categories that are excluded from patentability, it is likely that there is a technical contribution and the invention will be patentable.

"FoR a CoURt to attaCH anY WeIgHt to tHe eVIDenCe oF an eXPeRt In Patent matteRs, tHe eXPeRt sHoULD Be tYPICaL oF a sKILLeD PeRson In tHe aRt, WItH KnoWLeDge oF, anD PReFeRaBLY eXPeRIenCe In, tHe ReLeVant FIeLD at tHe ReLeVant Date."

The judge considered the mental acts exclusion in some detail. He said that this patentability exclusion is intended to ensure that patent claims cannot be performed by purely mental means. Following this interpretation, a computerimplemented method of processing information, even if the method can be performed mentally, will not fall foul of the mental act exclusion.

This decision provides some welcome certainty on how future patents for CIIs will be treated by the UKIPO and English courts.

Human Genome Sciences Inc v Eli Lilly and Company

The UK Supreme Court handed down its judgment in this case in November 2011. It concerned the validity of a patent for a nucleotide sequence of a gene that encodes a novel protein. The case looked at whether a patent for a biological material could satisfy the need for a patentable invention to be “susceptible of industrial application”. This decision has far-reaching consequences for biological research.

Human Genome Sciences (HGS) was the patentee and appellant. Eli Lilly argued that HGS’s patent should be revoked because the patented protein’s use, as described in the patent, was speculative and contradictory. The UK High Court and UK Court of Appeal both agreed that this was the case and held that the protein could not be patented on the ground that it could not be industrially applied.

However, the Supreme Court disagreed with the lower courts and allowed HGS’s appeal. In his lead judgement, Lord David Neuberger said: “On policy, just as it was undesirable to let someone have a monopoly over a particular biological molecule too early, because it risks closing down competition, so it would be wrong to set the hurdle of patentability too high.”

If industrial applicability remains a hurdle to patentability, it is clearly a low one. It seems that the Supreme Court was influenced by arguments made by the UK BioIndustry Association, a third-party intervener in the case. The association argued that a relaxed standard of industrial applicability was needed, because a standard that was hard to satisfy would make it difficult for biotechnology companies to attract investment at an early stage in the research and development process.

The Patents County Court

After its ‘re-launch’ in the Autumn of 2010, the Patents County Court (PCC) has been hailed as an effective and efficient forum in which small and medium-sized enterprises (SMEs) can enforce and defend their intellectual property (IP) rights. Judge Colin Birss has delivered prompt judgments on trademark, passing off, copyright and design right cases but not, as yet, on any cases of alleged patent infringement or invalidity.

In 2011, a recoverable damages cap of £500,000 was imposed in the PCC. With costs awards limited to £50,000, it was thought that the PCC would be a better forum for smaller design, copyright and trademark disputes, than patent cases.

Recently, however, a number of patent cases have appeared in the PCC list and they include parties that are much too large to be described as SMEs. We may in future see companies large and small increase their use of the PCC as a forum for litigating patents. This could be when, for example, damages are minimal, such as in a revocation action, or when an action is started before an infringing product is launched.

First, the damages and costs caps are not necessarily set in stone. If industry demand for these to be increased is demonstrated, the caps could be reassessed. Second, as PCC procedures and the court’s speedy and efficient manner become common knowledge, and its decisions remain reliable, it may develop into a more popular forum for international litigants.

The PCC is a sort of hybrid of the traditional English justice system and those in Europe. It may serve as a useful prototype for the projected European patent court system. Cross-examination, expert evidence and disclosure, for example, are available in the PCC but they are closely controlled and restricted by the judge in order to limit costs.