Legal context
In 2008, the validity of more than 25 patents was considered by the Patents County Court, Patents Court, Court of Appeal, and House of Lords. Unsurprisingly, given such activity, the law is constantly evolving and being refined; in the past 5 years, an unprecedented six patent cases have been considered by the House of Lords, four of which were concerned with validity. This article considers whether recent case law developments have led to the courts becoming more ‘patentee-friendly’, both by considering the case law itself and by an analysis of the outcome of patent cases over the past 5 years
Key points
There have been major developments in the law of novelty, inventive step, and sufficiency. In respect of novelty, the requirements of disclosure and enablement have been distinguished, meaning that attacks on novelty must be tightly focused and rely on prior art which ‘plants a flag’ on the invention disclosed by the patent. When considering inventive step, it is now clear that the issue of obviousness is to be assessed on the basis of what is claimed, rather than what is disclosed in the patent specification. Furthermore, if a revocation action is based on an ‘obvious to try’ argument, the court is required to decide, on the facts, what level of success the skilled person would need to foresee in order to render the patent in question invalid for obviousness. In some circumstances, the fact that a skilled person would consider the alleged invention ‘obvious to try with a reasonable expectation of a beneficial result’ (the old test) may no longer be sufficient to revoke the patent. Finally, the scope of ‘Biogen insufficiency’ has been circumscribed, and the doctrine is inapplicable to straightforward patent claims.
Practical significance
The above developments are all to the advantage of patentees. Over time, this ought to mean that a greater proportion of patents which are contested in the English courts will be upheld as [...]
Legal context
There has been a perception in recent years that the courts of England and Wales have been unfriendly territory for patentees. This reputation may not simply be put down to an attitude of the courts. It may stem from the forensic nature of the analysis of infringement and validity in these courts making it hard to hide a weak patent, it may stem from opponents only seeking to attack what they perceive to be weak patents. However, whatever the reason, this reputation has arisen, and has in some cases led patentees to avoid litigating their patents in these courts at all costs. Recently, the authors have detected a swing in this perception and to test this notion they analysed the validity and infringement decisions given by these courts over the last 19 months.
Key points
Fifty-five judgments were analysed, involving the consideration of 47 cases and 61 patents. It was found that the overall success rate for the patentee was around 38 per cent, or just over two in five.
Practical significance
Although the sample size is not large enough for a full statistical analysis, the result appears to indicate that the courts of England and Wales are either becoming more friendly to the patentee, opponents are becoming more adventurous, or the reputation was unfounded in the first place. It will be interesting to see how the statistics develop, but it would appear that the UK is becoming less of a jurisdiction to fear if you are defending a [...]
In a case that attempts to extrapolate the meaning of ‘use’ used in an anti-counterfeiting statute, the Third Circuit decided that ‘to use’ counterfeit goods as contemplated by the Pennsylvania statute simply required the defendant to place the good in the ‘stream of commerce’. In other words, a sales transaction is not necessary to complete the criminal act. This decision broadens the scope of behaviour deemed criminal in counterfeiting and more strenuously protects the IP rights of trademark-holders. U.S. v Diallo, 575 F.3d 252 (3rd Cir. [...]
The federal Ninth Circuit Court of Appeals, rejecting the reasoning of the Seventh Circuit Court of Appeals, joined a growing number of federal courts that have limited the use of the federal Computer Fraud and Abuse Act, 18 USC §1030 (‘CFAA’), in suits brought against former employees accused of wrongfully taking electronic data from a company’s computer system before leaving the company. Rather than focusing on the employee’s intent in taking the former employer’s electronic data, the Ninth Circuit held that the employer is responsible for defining what constitutes ‘unauthorized access’ in violation of the CFAA. Without a showing that the employee exceeded the employer’s prescribed access, employers at least in the Ninth Circuit (Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, and Washington) cannot maintain CFAA claims against former employees in such factual scenarios. Employers who commonly asserted such CFAA claims may now be faced with pursuing solely state claims in state rather than federal [...]
By delaying too long, Etihad Airways and Aldar Properties had waived their right to terminate a sponsorship agreement with Formula One team Force India, so their purported termination amounted to wrongful repudiation and they were liable in [...]
A copyright infringement claim must plead the originality of the plaintiff’s work if it is to state a cause of [...]
The Sixth Circuit upheld the District Court’s grant of summary judgment in favour of plaintiff-licensor on its copyright infringement claim, holding that the defendant-licensee’s merger resulted in an unauthorized transfer of the software [...]
Daimler was unsuccessful in its trade mark infringement and passing off action against Sany, whose counterclaim for partial revocation of the registered trade marks relied on by Daimler was also [...]
The Court of Appeal for England and Wales provides the first clear guidance on the timing and substantive requirements for applying for and obtaining a paediatric extension to an existing Supplementary Protection Certificate [...]
This case highlights the difficulties for patentees in proving so-called ‘contributory infringement’ in the UK and the liability problems faced by company directors with regard to joint tortfeasance, in particular directors of small [...]
