IPcopy was fortunate enough to attend the ever entertaining annual patents seminar at Wragge Lawrence Graham & Co. last week. The event kicked off with Gordon Harris’ run through of some of the more interesting cases of 2014. So here, is part 1 of IPcopy’s recap of Gordon’s run through!
File Wrapper Estoppel
The UK, unlike the US, does not have a doctrine of file wrapper estoppel….or does it? In Actavis v Lilly Arnold J indicated that the prosecution history can be used to see if it sheds any light on the matter and stated that “there is no good reason why the court should shut its eyes to the story told by the prosecution file.” This case may be viewed as a continuation of the developments on this issue in the Virgin v Premium case but Gordon suggested that this might be viewed as file wrapper estoppel by the back door.
In the Virgin case Jacob LJ had indicated that reference numerals should not influence the construction of a claim at all. However, at first instance in front of Arnold J in Jarden Consumer Solutions v SEB, SEB construed limitations in the claims based on particular features identified via the reference numerals. Arnold J thought that this did not contravene the principles discussed in Virgin but the Court of Appeal reversed the decision from the High Court and said that the reference numerals had been used as more than a way to determine if the map was the right way up. In fact they’d been used to construe the claims and this was impermissible.
Construction of claim language
In William Mark v Gift House construction revolved around the meaning of the word “toy”. The judge concluded that the word should be given proper effect – “It limits the scope of the claims to products of a scale that a child might be expected to play with”. Other claim interpretations were viewed as “exotic”!. The toy in question was a flying fish toy with a flapping tail. Every home should have one….
Nampak v Alpa was a case involving plastic milk bottles. The Court of Appeal held summary judgment to be appropriate and effectively laid down some guidelines as part of the judgment. Summary judgment was appropriate because: (1) the technology was fairly simple to understand; (2) the specification & claim words were easy to understand; (3) neither side indicated there were any terms of the art to understand; and (4) there was no point arising from common general knowledge which had a bearing.
Brundle v Perry was a case heard in the IPEC where the aggregate costs award came to just below the £50,000 cost cap. This case was interesting because of the patentee’s “unwise behaviour”.
As noted in the judgment “Mr Perry’s unwise behaviour took another turn the day before the present hearing. On 26 March 2014 he sent an email to my clerk, to the chambers of counsel for Brundle and Betafence and to their respective instructing solicitors. In the email Mr Perry said he had received a letter, which he attached. The letter purported to come from me, was addressed to Mr Perry…”
The judgment continues “I think the best that can be said about this purported letter is that for several reasons no one would take it seriously.” and “A deliberate attempt to influence others by means of a forged letter from a judge would be an extremely serious matter. I think the purported letter circulated by Mr Perry, to my clerk among others, is better characterised as a further example of Mr Perry’s intemperate and eccentric behaviour in the conduct of these proceedings.”
Court proceedings at the IPEC allow the cost cap to be exceeded where there has been unreasonable behaviour by one of the parties. In this case Judge Hacon said that while My Perry’s conduct had been “strikingly unusual” it was not “truly exceptional on the scale of unsatisfactory behaviour”.
So the take home message from this case is that Judge Hacon is extremely tolerant and the IPEC really likes its costs cap!
In Hospira v Novartis, Novartis’ priority application was found to be both too general and too specific to support the priority claim. Too general because the claimed dosage range appeared in the priority document without any teaching of the particular method of administration and too specific because the example given for a specific dosage amount was to intravenous administration for postmenopausal osteoporosis and so this was too narrow.
HTC v Gemalto also considered priority and whether the common general knowledge of the skilled reader could be used when considering a priority claim. The case indicates that the CGK of the skilled reader is relevant from a contextual point of view, in other words you can take CGK into account but only before you read the priority document/patent application.
Part 2 of the review later in the week covers anticipation, obviousness and a little bit of EPO bashing with the (final?) return of the Virgin v Zodiac case.
Mark Richardson 27 January 2015