These decisions were discussed at a CIPA event on 27 November 2013, and the following points are based on the cases selected by the speakers.
1. UK Patent cases in 2013: there were 32 High Court cases, 13 Court of Appeal, 2 Supreme Court and 12 PCC (now Intellectual Property Enterprise Court). Of these Birss handled 15 (9 at the PCC, 6 at the High Court), Arnold handled 8, Floyd handled 7 and Mann handled 4.
2. Virgin v Zodiac concerned res judicata and the end of the Unilin principles. Previous case law based on Unilin was that estoppel protects damages findings even if the patent is subsequently revoked. The Supreme Court decided in Virgin v Zodiac that action estoppel was not ‘absolute generally’, and though Zodiac could not challenge the Court of Appeal’s findings on validity it was able to rely on the fact that subsequent amendments at the EPO meant that infringement did not occur. Therefore the damages were not now payable. This case changed res judicata principles.
3. In IPCom v HTC the Court of Appeal revised the Glaxo guidelines for whether UK proceedings should be stayed if EPO proceedings are continuing, bringing commercial impact and certainty into the decision.
4. In Schutz v Werit the Supreme Court disagreed with the Court of Appeal on the test for ‘making’ in a repair context, and provided a new test which focused on replacing a subsidiary part.
5. In Nestec v Dualit the High Court had to decide on ‘making’ in the case of capsules for a coffee machine. However more seriously Arnold decided that one’s own published priority case could be section 2(3) prior art and held that claim 1 was not novel over the priority application. Claim 1 was held to not have clearly defined alternatives as discussed in G2/98. Loss of priority has been a key issue in at least 5 cases in the last year and so it becoming important in UK proceedings.
6. In HTC v Apple the Court of Appeal overturned the High Court and found that multi-touch control on a screen did have technical effect and was patentable. The fact the device was improved as result was key point.
7. In Novartis v Generics the Court of Appeal agreed that an enantiomer was obvious, dismissing analysing inventive step ‘by chopping it up into a series of sub-questions’ and not allowing unpredictability to contribute.
8. In Generics v Yeda and Teva the Court of Appeal disagreed with the High Court which had found that when looking at whether the specification makes it plausible that the invention solves the technical problem it is not possible to rely on post-dated evidence. The Court of Appeal felt there could be no objection to admission of evidence on the true nature of the advance by the invention.
9. In Sudarshan v Clariant the Court of Appeal held that a threat to sue customers was an actionable action.
10. The change of name of the Patents County Court to the Intellectual Property Enterprise Court was noted. Richard David Hacon is the new judge. Case breakdown is: 40% trade marks and passing off, 25% copyright, 20% patents and 13% designs.
Suleman Ali 6 December 2013