Daniel Alexander's review of the year for AIPPI

PatLit thanks Freshfields Bruckhaus Deringer trainee Mari Brennan for preparing the note, below, on Daniel Alexander QC's review of the year's patent law developments in England and Wales.  This review, hosted in the London office of Hogan Lovells, was organised by the UK cell of AIPPI.

AIPPI meeting, 18 December: Patent law developments in 2012 -- a brief overview

Tuesday evening saw Daniel Alexander QC present a round-up of 2012’s important developments in patent case-law to an audience of over 100 professional IP enthusiasts, aided (in Mr Alexander’s words) by an “unbelievably long and boring” handout.

1.      Substantive law developments 

Construction: Schenck Rotec GmbH v Universal Balancing Limited [2012] EWHC 1920 (Pat) saw HHJ Birss  adopt a contextual approach in the construction of “suitable for”, emphasising that interpretation in the context of a use claim will be different from interpretation in a method claim. the difference between “for” and “suitable for”.  This approach was commended by Mr Alexander, who commented that judges should not unduly disregard the context in which a patent operates and forget what the patent is about.  

Common general knowledge: BOS GmbH & Co KG v Cobra UK Automative Products Division Ltd [2012] EWPCC 38 and HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat) highlighted that a skilled person’s knowledge of a product’s existence is to be distinguished from a skilled person’s knowledge of the internal workings of the product.  The question is one of fact.  For example, if a product’s workings can be easily found out by a skilled person looking at a piece of prior art, then it may be considered to be common general knowledge. 

Examples of obviousness reversals: Apimed Medical Honey Ltd v Brightwake Ltd [2012] EWCA Civ demonstrates that decisions of obviousness may be reversed,  although appeals are not easy. 

Obvious to try/expectation of success: Mr Alexander suggested watching this space for future developments.  There is currently tension in judicial thinking.  

On one hand, there was general further elaboration of what level of expectation of success is required to render something “obvious to try”.  For example, in Regeneron Pharmaceuticals Inc v Genetech Inc [2012] EWHC 657 (Pat) it was explained that this means a “fair expectation of success”.  However, Lewison LJ in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Ors [2012] EWCA Civ 1234 retreated from the “obvious to try” approach altogether, seemingly rejecting the doctrines and sub-doctrines that have developed around the statutory question.  He asserted that “too much elaboration” had been given to the simple statutory question of whether an invention was obvious as at the priority date.  

Lack of technical contribution: A sub-body of jurisprudence is developing out of Agrevo.  It is open to review as to whether this is appropriate.  The concept is extremely complicated as regards burden of proof etc. as demonstrated by Generics v Yeda Research and Development Co Ltd [2012] EWHC 1848 (Pat).  Mr Alexander recommended watching this space for further development… 

Excluded subject-matter: This is also an area that Mr Alexander considers ripe for further consideration.  The Court of Appeal in Symbian said that you have to identify the technical contribution made and decide if the contribution lies solely in excluded subject matter.  But what is the baseline for determining the contribution?  Floyd J’s opinion in HTC Europe Co Ltd v Apple Inc is that the question of determining the contribution should be same as the principles involved in determining the difference between prior art and the inventive concept for the purposes of obviousness, but the baseline remains unclear. 

Added matter: Liversidge v Owen Mumford [2012] EWPCC 33 emphasised the importance of not stretching disclosure away from its original context.  Third parties are entitled to legal security; they should be able to rely on the disclosure as presented on the face of things, and not worry about it any further than its original context. 

2. Supplementary Protection Certificates 

Meaning of Article 3(a) “protected by the patent”: There is confusion over whether a product is “specified in the patent” as per the principle laid down by the CJEU in Medeva.  The confusion was highlighted in Novartis Pharmaceuticals UK Ltd v Medimmune Ltd & Amor [2012] EWHC 181, Medeva BV v Comptroller General of Patent [2012] EWCA Civ 523 and Lilly & Company v Human Genome Sciences Inc [2012] EWHC 2290. 

The CJEU’s stance is that a principle has been laid down, and that it is not the Court’s place to micro-manage the application of the principle.  Mr Alexander commented that this approach will lead to differences in application in each of the Member State national courts, causing confusion contrary to the principle of harmonisation.  

Meaning of Article 3(c) – multiple applications based on the same patent: 2012 saw a divergence in opinion between the British and Dutch Patent Offices.  The UK IPO’s interpretion of the CJEU in Medeva is that SPCs can be granted in respect of multiple applications based on the same patent, where the SPCs relate to different products.  The Dutch approach prohibits the grant of more than one SPC per patent regardless of the number of products claimed in the basic patent.  A referral was therefore made in Actavis Group v Sanofi Pharma Bristol-Meyers Squibb SNC [2012] EWHC 2454 (Pat). 

2.      Procedural developments and Remedies 

Negative declarations: In Lilly & Company v Human genome Sciences Inc [2012] EWHC 2290, Lilly sought a declaration that once a market authorisation has been granted, a third party cannot obtain an SPC at all.  This was denied, but there is an inconsistent approach towards negative declarations, demonstrated for example, by Arnold J’s approach favouring negative declarations in Actavis v Eli Lilly.  The area is therefore ripe for CJEU consideration. 

Costs and costs capping: Syngenta Ltd & Ors v Chemsource Ltd [2012] EWHC 1507 (Pat) represented the first ever cost capping decision in the context of patent claims.  However, the Court was cautious, highlighting that in the wrong hands, such orders can be used to work injustice.  For example a party benefitting from a costs order may act so that the other party incurs large irrevocable costs and will be induced to settle on more attractive terms. 

Costs where the winner runs many losing points: The Court gave no order as to costs in MMI Research Ltd v Cellxion Ltd & Ors [2012] EWCA Civ 139, reasoning that a strict costs regime should make a party concentrate on his best arguments. 

Publicity of judgments:  Mr Alexander approved of HHR Birss QC’s judgment in BOS GmbH & Co KG v Cobra UK Automative Products Division [2012] EWPCC 44, in which he highlighted that the Court’s discretion as to whether to grant a remedy such as a declaration will be considered on the facts in every case, including the fact that both sides have the ability to publicise a judgment. 

3.       The Patents County Court 

Search and seizure and freezing orders: Suh & Anor v Ryu [2012] EWPCC 20 reiterated that Recorders cannot make such orders.