Category : UK patent litigation

The patent fight between can hardly been escaped to anyone’s attention. The patent disputes involve both Standard Essential Patents as well as Implementation Patents. It involves FRAND and arguments about what qualifies as “fair and reasonable”. It involves the thorny question of whether the ASP of the product should be the starting point for any FRAND calculation. It involves Qualcomm’s refusal to license its IP to other chip-set manufacturers (including other chip set suppliers to Apple) and only license to handset manufacturers further up the  value chain, plus much more. This patent dispute is global in nature involving litigation in China, USA, the UK and elsewhere

Well this heavy weight fight now enters new territory as Qualcomm now accuses Apple of trade secret theft.

This is an interesting new development but not entirely unexpected given that the US now has a powerful Federal trade secret law in place, the Defend Trade Secret Act, a law that packs some punch thanks to being tied to Racketeering and the RICO Act.

In fact I was asked recently about when I thought trade secrets would become an issue in this dispute

Will this be a game changer in this particular fight? It may or may not be.  However, it shows that just like in the Google vs Uber IP dispute, trade secrets are now one form of IP that needs to be seriously considered.

That’s why IPEG organizes a Deep Dive Workshop at Philips HQ in January 2018. The date has yet to be established. If you are interested to receive an invitation email us at

Donal O’Connell
photo: Ines Ferreira (Unsplash)
Author: 11 months ago

In Generics (UK) Limited v. Novartis AG, the UK Patents Court (Mr Justice Floyd), in a challenge by Mylan (Generics UK), invalidated claims to an enantiomer of a known racemate[1].

The action came to trial very quickly, as the initial action started on 3rd March 2011. Following an application for an interim injunction, an expedited trial of the action was ordered on 30th June 2011. The action was tried over three days from September 5th to 7th, just over six months from the issue of the claim. Expedition was justified because Mylan intended to launch a product prior to the expiry of the SPC, which will occur on 30th July 2012.

Rivastigmine is the modern name for the (-)-enantiomer (…). In around 1985 a team of scientists led by Marta Weinstock, working at the Hebrew University of Jerusalem, made and tested a compound named RA7, which is the unresolved racemic compound of which rivastigmine is the (-) enantiomer. RA7 was one of a number of compounds proposed by Weinstock for the treatment of AD, but her publications made no mention of resolving it into its individual enantiomers. The sole question which arises in this action is whether a relevantly skilled pharmaceutical development team, in ignorance of the patent in suit, would find it obvious in the light of the Weinstock publications to resolve the racemic mixture of RA7 into its individual enantiomers.

As framed by the Court, “the sole question … is whether a relevantly skilled pharmaceutical development team, in ignorance of the patent in suit, would find it obvious …to resolve the [prior art] racemic mixture … into its individual [claimed] enantiomer[ ].” (¶ 3)

The only ground of attack on the patent was lack of inventive step. The Court:

“I think the correct analysis is that a pharmaceutical composition for treatment of AD comprising rivastigmine was conceptually obvious in the light of Weinstock and would immediately occur to the skilled team. The team would consider that resolving RA7 would be a worthwhile step to take for good technical reasons. The team would find that the chemistry involved is trivial. Applying the principles outlined above I have no doubt that the inventive concept is obvious in the light of Weinstock.

I believe that conclusion to be consistent with the “problem and solution approach” employed by the Boards of Appeal. The objective technical effect demonstrated by the patent in comparison with the Weinstock prior art is simply that which one would expect from resolution of a chiral compound. The skilled person would know how to solve the problem of achieving those effects by an application of the common general knowledge about chiral compounds.

In the result all the claims relied on are invalid, and the SPC is accordingly invalid as well. It follows that the action succeeds and the counterclaim will be dismissed.”

[1] [2011] EWHC 2403 (Patents Court Sept. 30, 2011



Author: 7 years ago

Part of any smart patent litigation strategy is to seek the right venue. This is true for Europe as well as for the US. Among practitioners it is known that Texas is a preferred venue for patent litigation in the US, as the judges are assumed to be patentee friendly and, important, not inclined to immediately bow to defendant’s strategies to unduly complicate and manipulate litigation by throwing in  litigation tactics with the (sole) intention to complicate the litigation, so as to gain time and to force the plaintiff to be “outlawyered”.  A preferred venue for NPE’s. Read more

Author: 8 years ago

Popular belief in patent litigation circles is that defendants, accused of a patent infringement like to turn to the UK courts to get the patent invalidated. The general presumption is that UK patent courts are skeptical of what comes out of the European Patent Office and are more receptive to invalidity arguments than their German, Dutch or French peers. Brian Whitehead, however,  is of the opinion that English courts appear to have relaxed the formerly strict requirements for obviousness.  He relies purely on the UK courts’ judgments from 2004-2008. Read more

Author: 8 years ago

Is “independent invention” a cure against trolls in that it can be argued that infringement cannot be established in case of an “independent invention”? No it is not. A  lot of confusion, misunderstandings, half-truths, nonsensical quasi-lawerly talk exists around the term “independent invention“. The term is often “spittered” about as means against patent infringement actions by NPEs or patent trolls, but has no basis in patent law and lacks a common understanding and agreement on what it means as it is often used in a nonsensical way. Read more

Author: 8 years ago

Swiss boy copyrighted iStock PhotoWe overlooked an interesting Note from Prof. Hal Wegner on UK Court of Appeal decision rendered in May 2008. In Actavis UK Ltd. v. Merck & Co. Inc., [2008] EWCA Civ 444 (Court of Appeal 2008) (Ward, Jacob, Rimer, JJ.), the Court of Appeal followed European Patent Office precedent in Genentech/method of administration of IFG-I, T1020/03 [2006] EPOR 9, approving a pharmaceutical use claim, departing from national precedent in favor of a rule following EPC patent precedent. Read more

Author: 10 years ago

When is a product claim in a patent insufficient? That is the core question in the judgement of April 10 by the UK Court of Appeal in Generics (UK) Limited v Lundbeck A/S in an appeal against the High Court Mr Justice Kitchin’s judgement in 2007. The issue is to which the extent of the monopoly given by a product claim in a patent. Kitchin J had extended the application of the Biogen test for patent insufficiency such that the scope of the monopoly for a product claim could be severely reduced. Lundbeck’s successful appeal, therefore, has significant commercial implications for the pharmaceutical industry as a whole.
Read more

Author: 10 years ago

There has been another development in the continuing saga of the UK’s interpretation of what is and is not patentable subject matter in relation to computer programs.In Symbian’s Patent Application (Patents Court, 18 March 2008), Patten J overturned a decision of the UK-IPO to refuse a patent application because it related to nothing more than a computer program. In his judgment Patten J observed that the UK-IPO’s decision illustrates the Read more

Author: 10 years ago

Today, the UK court (Mr. Justice Floyd) rendered its decision in the Qualcomm vs Nokia case. The case in the UK is slightly different than similar fights that take place in Netherlands and Germany in that Qualcomm is suing Nokia in the UK under 2 patents (EP 0,629,324 and EP 0,695,482) both related to power control. European Patent 0,629,324 (“’324”) relates to an apparatus for controlling the way in which the mobile telephone reduces power consumption by monitoring a channel for incoming messages intermittently. The second, European Patent 0,695,482 (“ ’482”) relates to a method and device for the correction and limitation of the transmitted power of a mobile telephone. Read more

Author: 10 years ago

As blogger just learned, on Christmas Eve, one of Europe’s great patent judges, Lord Justice Pumfrey, passed away quite unexpectedly at the much too young an age of 56. He was the author of many judgements that changed the patent landscape in the last years, not just for the UK but for many European patent professionals, who followed his learnings closely. He was admired and respected and we surely feel deeply sorry that we have to miss a great judge.see also Times Online, Jan. 3

Author: 10 years ago