Patent Litigation 2022

Last Updated February 15, 2022

UK

Trends and Developments


Authors



Kirkland & Ellis International LLP has a patent litigation practice comprised of approximately 220 attorneys in London, Chicago, Los Angeles, New York, Palo Alto, San Francisco, Washington, DC, Austin, Houston and Salt Lake City. Nearly 80% of Kirkland’s patent litigation attorneys are engineers and scientists, who are trained and experienced in a variety of technical disciplines. With decades of experience, Kirkland’s IP litigation attorneys have achieved extraordinary results in patent, copyright, trade mark, trade secret misappropriation and advertising matters. They represent clients across a broad range of industries, including life sciences, technology, consumer products manufacturing, financial services, automotive, and food and beverage. Other areas of practice are pharmaceutical and biologics patent litigation, co-ordinating global IP enforcement/defence cases, SEPs and FRAND disputes, post-grant proceedings before the US Patent and Trademark Office’s Patent Trial and Appeal Board, and appeals of high-stakes cases in the US Court of Appeals for the Federal Circuit and the US Supreme Court, as well as the Court of Appeal of England and Wales and the UK Supreme Court.

2021 UK Patent Litigation

The UK patent litigation market continued apace in 2021, notwithstanding the ongoing COVID-19 pandemic which entered its second year. A variety of patent cases were heard and judgments delivered, in particular across the technology and life science sectors, resulting in a number of important legal and practice-related trends and developments. While the pandemic has presented its fair share of challenges to the UK as a whole, patent litigation in the UK has proceeded largely unaffected, with the Patents Court of England & Wales adopting a mixture of in-person, hybrid, and fully remote hearings to determine disputes expeditiously. Looking forward to 2022, there is a heavy pipeline of patent trials that is set to keep the Court and patent litigators busy throughout the year, and indeed well into 2023.

Life Sciences

As set out below, key developments in the life science sector included pronouncements from the Court on the tests for obviousness (Teva v Bayer) and for insufficiency (Illumina v MGI), as well as attempts by the UK Government to claim compensation from pharmaceutical companies for what it alleges is improper enforcement of patents (Servier; Warner-Lambert). Further, and while not specific to life sciences, in Neurim v Mylan, the Court considered the implications of the European Patent Office (EPO) revoking a patent after the English Court had declared the patent to be valid and infringed in the UK. 

In terms of ongoing trends, it is expected that biologics patents will become an increasing focus of biopharmaceutical litigation as the patent terms of high-value biologics begin to reach maturity. Additionally, there has been an uptick in medical device and technology litigation (Advanced Bionics v Med-El; Abbott v Dexcom; Alcon v AMO Development; Insulet v Roche), a trend which looks set to continue into 2022.

Teva Pharmaceutical Industries Ltd & Anor v Bayer Healthcare LLC [2021] EWHC 2690

In Teva v Bayer, the Court continued to develop its jurisprudence on assessing the inventiveness of formulation patents, confirming that it is not necessary to establish that the skilled person would in all cases have actually arrived at the claimed invention. 

Teva had sought to invalidate a claim of Bayer’s patent directed to the tosylate salt of a drug called sorafenib on the basis that it was obvious. Bayer among other points argued that it was not sufficient that the skilled person could have taken certain steps to arrive at the invention; rather it must be shown that they would have done so. 

Mellor J concluded it was obvious for the skilled formulator to include the tosylate salt of sorafenib in his or her salt screen, citing Hospira v Genentech [2014] EWHC 3857. In reaching this conclusion, he noted that while some real teams might never have selected the tosylate salt for inclusion, most would have done so, and this would have been the result of standard and routine considerations. He further observed that such an approach is not in conflict with the UK Supreme Court’s (UKSC) decision in Actavis Group PTC EHF & Ors v ICOS Corporation & Anor [2019] UKSC 15 which considered the obviousness requirement in depth. 

Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57 

In Illumina v MGI, Birss J (as he then was) provided important clarification as to the test for determining the sufficiency of a patent claim involving a range, following on from the UKSC’s decision in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (Regeneron). In this decision, he held that certain claims of a number of Illumina patents directed to DNA sequencing technologies were valid and infringed by MGI’s DNA sequencing systems.

In response to insufficiency arguments raised by MGI, Birss J clarified what must be enabled within the scope of a claim for the relevant patent disclosure to be sufficient. In so doing, he distinguished between the scope of a claim denominated by a “relevant range”, and a range denominated by a “wholly irrelevant factor”. In particular, “the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product or process in achieving the purpose for which it is to be performed”. For instance, in Regeneron, the fact that the patent-in-suit had not enabled how to do what it taught with mice with all possible lengths of tail did not matter, because tail length (cf, the number of gene segments) was not a relevant range. For claims with ranges not relevant in the Regeneron sense, the skilled person must at the priority date be able to make a suitable selection, without undue burden, in order for the claim to be sufficiently disclosed.  However, such a claim feature will not be insufficient simply because it is capable of also covering within its scope things which had not been invented at that relevant date. 

MGI appealed against this judgment on the questions of obviousness and priority, but its appeal was dismissed in Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWCA Civ 1924.

Secretary of State for Health & Anor v Servier Laboratories Ltd & Ors [2021] UKSC 24

In Secretary of State for Health v Servier, the UKSC rejected the English government’s attempt as appellant to rely on the tort of unlawful means in order to claim damages from Servier arising out of certain patent prosecution and enforcement activities.

In its decision, the UKSC rejected the appellants’ appeal against the English Court of Appeal’s affirmation of Roth J’s strikeout of the English government’s argument that by obtaining, defending and enforcing the patent-in-suit, Servier had engaged in this tort by practising deceit on the EPO and/or the courts, with the intention of profiting at the expense of the appellants.

The essential issue in the appeal was whether a necessary element of the unlawful means tort is that the unlawful means should have affected the third party’s freedom to deal with the party alleging commission of the tort. It was not in dispute that the relevant third parties in this case (being the EPO and the English courts) had no dealings with the appellants, and that if this "dealing" requirement is a necessary element of the unlawful means tort, then the claim was properly struck out by the primary judge. By its decision, the UKSC concluded that this requirement is a part of the tort, and there was no sufficient reason to depart from this approach. 

While this was not a patent law decision as such, it nevertheless has important implications for patent practice in the UK, in particular that third parties (whether government entities or generic competitors) who have suffered relevant loss cannot claim relief from patentees pursuant to this cause of action in the absence of direct dealings. That being the case, it should be noted that the Secretary of State for Health is still separately pursuing Servier in the English courts for alleged breaches of competition law.

Dr Reddy's Laboratories (UK) Ltd & Ors v Warner-Lambert Company LLC & Anor [2021] EWHC 2182

Following the UKSC’s decision in Warner-Lambert Company LLC v Generics (UK) Ltd (t/a Mylan) & Anor [2018] UKSC 56 holding that certain claims of Pfizer subsidiary Warner-Lambert’s second medical use patent concerning pregabalin (marketed at the time by Pfizer Ltd as Lyrica®) were invalid and not infringed, claims for compensation were brought against Warner-Lambert and Pfizer Ltd pursuant to cross-undertakings in damages given by Warner-Lambert to the Court in return for obtaining various interim orders. Those orders included an order for the issuing of prescribing and dispensing guidance, and the grant of an injunction. The claimants included the National Health Services (NHS) of England, Wales, Northern Ireland and Scotland, and a number of generic parties, certain of whom also brought claims for unjustified threats.

In advance of a substantive legal trial which is now scheduled for 2023, the English Patents Court ordered a preliminary issues trial in order for the Court to determine the legal assumptions by which it should reconstruct the counterfactual world in which the relevant interim orders and threats were not made. 

In his judgment, Zacaroli J firstly held that the various claimants’ claims should be determined on a single, consistent counterfactual basis, since the alternative would be liable to result in one or more parties being overcompensated, and Pfizer being overburdened. 

He further rejected the argument put forward by the NHS that it should be assumed that the patent-in-suit (or the relevant claims thereof) was always known to be invalid, such that generic entry would have occurred en masse in 2015 at the first available opportunity – notwithstanding that this was only determined by the UKSC in 2018 following its expiry. Rather, it accepted Warner-Lambert’s argument that to do so would be tantamount to impermissibly awarding compensation for the existence of Warner-Lambert’s patent and its defence of it in the litigation. This outcome is significant, because this NHS proposition, if accepted, would have represented a radical departure from traditional English patent law doctrine.

Neurim Pharmaceuticals (1991) Ltd & Anor v Generics UK Ltd (t/a Mylan) & Anor [2021] EWHC 530; EWHC 2198; EWHC 2897

In Neurim v Mylan, the Court considered a scenario in which the EPO has revoked a patent after the Court had found the UK designation thereof to be valid and infringed, as well as the subsequent assertion of a divisional thereof. 

Following the 4 December 2020 judgment of Marcus Smith J which held Neurim’s EP 702 patent to be valid and infringed by Mylan, on 18 December 2020 Neurim withdrew its appeal of a decision of the Opposition Division of the EPO which found this patent insufficient. As a consequence, the earlier decision of the Opposition Division to revoke the patent became final, with effect ab initio, including in the UK. 

In his decision of 12 March 2021, Marcus Smith J considered various consequential matters following these developments, ordering that (i) Neurim’s application for permission to appeal on a point of law should be refused, and (ii) Mylan is entitled to costs of and arising out of the UK proceedings, to the extent prior costs orders were not inconsistent. 

Thereafter, and shortly after its grant in June 2021, Neurim asserted against Mylan a divisional of EP 702, namely EP 443. Neurim contended that the parties had already litigated all issues of infringement and validity in the EP 702 proceedings, and that Mylan was prevented from asserting otherwise. Neurim therefore sought an expedited trial of preliminary issues including on this point, given that EP 443 is due to expire in August 2022. On 2 August 2021, Marcus Smith J ordered such a trial for December 2021, as this was the only realistic way in which Neurim could hope to secure injunctive relief before expiry of EP 443. Thereafter, Mylan applied to stay the UK EP 443 proceedings, pending final determination of opposition proceedings before the EPO. This application was rejected by the Court on 28 October 2021, on the basis that this hearing would give the parties some commercial certainty within a relatively short time, and relevantly, during the life of the patent. 

Following the trial of preliminary issues, the Court in January 2022, among other points: (i) rejected Neurim’s argument that Mylan was prevented from challenging the validity of EP 443 by virtue of the judgment on EP 702; and (ii) rejected Mylan’s argument that Neurim’s application to amend the claims of EP 443 so as to track those of EP 702 constituted an abuse of process. 

Technology

The key development in the technology sector (considered separately from standard essential patent (SEP)/fair, reasonable and non-discriminatory (FRAND) licensing developments) was the Court of Appeal’s dismissal of Dr Thaler’s appeal against the decision that his artificial intelligence machine named "DABUS" could not formally be designated as an "inventor" under the Patents Act 1977. Automation continues to be a trend more broadly, as evidenced by the AutoStore v Ocado dispute concerning automated warehousing technology. However, and as noted below, legal developments in relation to artificial technology may well arrive by way of legislative reform rather than through judicial pronouncements. 

Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374

In Thaler v Comptroller, the English Court of Appeal by majority dismissed Dr Thaler’s (second) appeal against a decision that his artificial intelligence machine named "DABUS" could not formally be designated as an inventor in respect of two patent applications under the Patents Act 1977. Arnold LJ (Laing LJ agreeing) held that under the Act, only a person can be an "inventor". The Court further considered whether Dr Thaler was entitled to apply for patents in respect of the inventions, given his position that he is not an inventor of either of the inventions, and nor was he a successor in title to DABUS. Dr Thaler argued that at the time of the making of the inventions he was entitled to “the whole of the property” in them by virtue of a rule of law, specifically the common law doctrine of “accession”.

Arnold LJ rejected this, stating that there is no rule of English law that new intangible property produced by existing tangible property is the property of the owner of the tangible property, or that the property in an invention created by a machine is owned by the owner of the machine. Further, by virtue of Dr Thaler identifying a non-person as an inventor in the patent applications, and by failing to identify the derivation of his right to be granted the patent, it was held that he did not comply with the relevant statutory requirements, such that the applications were deemed to have been withdrawn. By contrast, Birss LJ held that he would have allowed Dr Thaler’s appeal.

It is understood that Dr Thaler may intend to seek permission to appeal to the UKSC. Given the divergent views on the interpretation of the Patents Act 1977 expressed by eminent Court of Appeal judges, the grant of permission to appeal remains a possibility. However, it may also be the case that the question of whether inventions or copyright works created by artificial intelligence should similarly benefit from IP protection may be resolved legislatively. In particular, between 29 October 2021 and 7 January 2022, the UK Intellectual Property Office conducted a public consultation on "Artificial Intelligence and Intellectual Property: copyright and patents" dealing with these points among others. The UK government is in the process of considering the responses it received, which may inform its legislative response going forward.

AutoStore Technology AS v Ocado Group Plc & Ors [2021] EWCA Civ 1003

In this decision made in the context of multijurisdictional patent litigation concerning automated warehousing technology, the English Court of Appeal considered the interaction between without prejudice rules under English and US law.

By majority, it dismissed an appeal by Ocado against a first instance interlocutory decision of Judge Hacon rejecting Ocado's application for an injunction to restrain AutoStore from using without prejudice information in any proceedings, whether in the UK or elsewhere. The dispute centred on a single confidential document that AutoStore produced in without prejudice negotiations between it and Ocado in London, and which it wished to deploy in parallel ITC proceedings in the USA to rebut an equitable estoppel defence raised by Ocado. During those negotiations, the parties had agreed that any US law discussions were to be governed by rule 408 of the US Federal Rules of Evidence (FRE 408).  The parties’ agreement was not subject to any exclusive jurisdiction clause.

The question for the Court was whether, as Ocado contended, the protection of FRE 408 would apply in addition to the protection conferred by the "without prejudice" rule, or, as AutoStore contended, in place of the "without prejudice" protection. If the latter, then the document could potentially be deployed in the parallel US ITC proceedings. 

Sir Geoffrey Vos for the majority held that this was a clear qualification to the overall without prejudice blanket covering the discussions. As such, it would be a breach of comity for the English Court to interfere with those US proceedings by imposing English without prejudice rules when Ocado had expressly stipulated FRE 408 should apply. Moreover, if the injunction were not granted, the ITC would be able to decide the admissibility of the document on the basis of FRE 408. 

FRAND/SEP

FRAND/SEP disputes continued to keep the English Court occupied in 2021. Beyond numerous technical trials, key matters considered by the Court included the undertaking that an implementer should be required to give in advance of a UK FRAND trial to avoid a finding that it is an “unwilling licensee” (Optis v Apple; Interdigital v Lenovo), as well as attempts to stay UK proceedings in favour of foreign FRAND proceedings (Philips v Xiaomi; Nokia v OnePlus) in circumstances where a number of foreign courts have determined that they have jurisdiction to determine the terms of a worldwide FRAND licence. On this topic, it also bears mentioning that in December 2021, the UK Intellectual Property Office commenced an open consultation into SEPs and innovation, the responses to which will inform the government’s decision on any next steps on potential intervention that is required in this space going forward.

Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2021] EWHC 2564

In the ongoing Optis v Apple proceedings, Optis seeks the determination of a global FRAND licence in respect of a portfolio of telecommunications patents, certain of which are alleged to have been infringed by Apple.

In the course of the proceedings, and in advance of the forthcoming FRAND trial scheduled for mid-2022, Optis sought to argue that Apple was an “unwilling licensee”, on the basis that Apple had indicated that it was not prepared at that stage to unconditionally commit to taking a licence on FRAND terms determined by the Court, such that it sought to take the benefit of Optis’s FRAND undertakings without accepting the burden. Accordingly, Optis said Apple was not entitled to rely on the FRAND undertaking as a defence to an injunction, or in the context of any competition law issues. Meanwhile, Apple, which disputed Optis’s application, had provided a contingent undertaking by which it had undertaken to take the UK FRAND trial licence unless its undertaking was found to be unnecessary, or (as Optis had contended), Apple had already and irreversibly missed the chance to invoke its right to a FRAND licence under the European Telecommunications Standards Institute (ETSI) undertaking.

The Court concluded, among other points, that Apple was not entitled to rely on Optis’s undertaking to ETSI under clause 6.1 of the ETSI Intellectual Property Rights Policy, and that it could only do so if it provided an unconditional undertaking to commit to enter into a FRAND licence to be determined at the UK FRAND trial. Given that Apple had been found to infringe a valid patent in a previous technical trial, it was liable to be injuncted from infringing that patent. Apple subsequently gave an undertaking to the Court to enter into a licence in the form that is determined to be FRAND at the upcoming UK FRAND trial or, to the extent that there are any appeals of the resulting judgment, a licence that is finally determined to be FRAND on appeal – such that no injunction was ordered. 

Interdigital Technology Corporation & Ors v Lenovo Group Ltd & Ors [2021] EWHC 3401 

Interdigital has alleged infringement by Lenovo of certain patents said to be SEPs, and seeks for the Court to determine a global FRAND licence. Two technical trials were held in 2021, the first of which resulted in findings of infringement and essentiality in respect of EP 558, whereas the latter resulted in a finding of invalidity in respect of EP 537. The FRAND trial commenced as scheduled in mid-January 2022. 

In November 2021, shortly before its commencement, following on from Optis v Apple (see above), Interdigital sought a declaration consequent upon the EP 558 infringement finding, to the effect that by refusing or failing to unconditionally undertake to take the licence the subject of the English Court’s FRAND determination in advance of the FRAND trial, Lenovo was not entitled to rely on Interdigital’s FRAND undertaking to ETSI. It further sought a UK injunction against Lenovo to apply unless Lenovo unconditionally undertook to take an English Court-determined licence. 

The Court declined to grant the requested declaration or injunction in advance of the FRAND trial, in large part due to factual differences between the facts in that case and Optis v Apple. The finding in Optis v Apple that there was an obligation on the part of an implementer found to have infringed a SEP to commit to take a FRAND terms settled by the Court was made against the backdrop of a scenario whereby the English Court was the only tribunal under consideration for the settlement of the terms. However, in Interdigital v Lenovo, the Court was not prepared to rule that Lenovo’s qualified undertaking to take a licence where there were extant FRAND proceedings in the USA and China necessarily disqualified it under the governing French law from relying as a third-party beneficiary on Interdigital’s irrevocable FRAND undertaking to ETSI and under the ETSI Intellectual Property Rights Policy – this was a matter for determination at the FRAND trial. 

Koninklijke Philips N.V. v Xiaomi Inc [2021] EWHC 2170

In Philips v Xiaomi, the issue of how to address competing FRAND actions continued to occupy the Court’s attention. In this decision, Mellor J dismissed two applications brought by Xiaomi: (i) challenging the jurisdiction of the English Court on forum non conveniens grounds to hear Philips’s standard essential patent infringement claim for the determination of a worldwide FRAND licence, and/or (ii) seeking a case management stay of Philips’s action in favour of a parallel contractual action brought by Xiaomi in France for the determination of a FRAND licence.

The Court rejected Xiaomi’s jurisdiction argument on the basis that France was not a realistic alternative forum for Philips to bring its patent claim, and that in reality, England was the only such forum. This was, among other reasons, because of the uncertain prospects of such a claim, and the likelihood that jurisdictional disputes and appeals might serve to delay ruling on substantive issues for many years.

The Court further rejected the application for a case management stay of the UK proceedings. This was consequent upon its jurisdictional finding, and because there was said to be no case management benefit in doing so. Further, the outcome of the parallel French proceedings was said to be highly uncertain, may not resolve matters, and may therefore simply cause considerable delay to the UK proceedings.

By way of follow-up, in December 2021, the Tribunal Judiciaire de Paris in a preliminary decision declared its jurisdiction to decide Xiaomi’s application to determine the terms of a global FRAND licence, and further rejected Philips’s request for a stay of the French proceedings.

Accordingly, and subject to any appeals, it would appear that the Xiaomi v Philips FRAND dispute is now a battle between jurisdictions as to which court will determine a FRAND licence first. 

Nokia Technologies OY & Anor v Oneplus Technology (Shenzhen) Co., Ltd & Ors [2021] EWHC 2952

In the Nokia v OnePlus proceedings, Nokia inter alia seeks a declaration that three of its UK patents are essential to the relevant standards, that they are valid and infringed by the defendants (OnePlus), and a declaration that the terms of a global licence it has offered are FRAND. In the above decision, the Court considered OnePlus’s arguments for a stay of the UK FRAND proceedings on jurisdictional and/or case management grounds. 

On jurisdiction, OnePlus argued that the landscape under English law concerning the jurisdiction of the English Court to settle FRAND terms of a patent licence covering foreign patents (as set out in the UK Supreme Court’s decision in Unwired Planet/Conversant v Huawei) had changed given that: (i) the Chinese Supreme Court in Oppo v Sharp ruled in August 2021 that courts in China have jurisdiction to settle global terms of a FRAND licence even in the absence of agreement between the parties as to the forum in which terms are to be determined; and (ii) that EU law, and in particular the Brussels Regulation Recast (No 1215/2012) no longer applies in the UK following Brexit. In particular, OnePlus argued that the English Court has no jurisdiction over the non-UK defendants, and that the claims against the UK defendants should be set aside. Further arguments were made by OnePlus in support of a case management stay.

OnePlus’ arguments on jurisdiction and for a case management stay were rejected at first instance by the High Court but are subject to appeal. 

Vestel Elektronik Sanayi Ve Ticaret A.S. & Anor v Access Advance LLC & Anor [2021] EWCA Civ 440 

In Vestel v Access Advance, the English Court of Appeal confirmed that a party cannot bring a “freestanding” FRAND claim. More specifically, it dismissed an appeal brought by Vestel against a first instance finding that Vestel’s request for declarations that Advance Access’s SEP licence offer was not FRAND (and that its counter-offer was) could not be determined as a freestanding claim, in the absence of a cause of action to which it could attach. This question arose once the Court determined that it did not have jurisdiction to determine Vestel’s competition law claim for abuse of dominance, to which this request was initially attached. Vestel’s attempt to invoke the court's declaratory jurisdiction was said to have no reasonable prospect of success because it was not based on the existence or nonexistence of a legal right.

Procedural Developments

COVID-19

While the COVID-19 pandemic presented its share of challenges in 2021, UK patent litigation remained largely unaffected, with the Court holding a mixture of in-person, hybrid and remote trials and hearings, depending on the circumstances. This flexible approach has allowed the Court to maintain its busy caseload with minimal interruption. Indeed it is expected that even after the pandemic subsides, shorter procedural hearings (eg, of less than half a day), as well as interlocutory hearings or appeals where there are no witnesses, will proceed as a matter of course remotely rather than in-person.

Judges

In 2021, James Mellor QC was appointed as a judge of the Patents Court, filling a gap caused by the elevation of Birss J to the Court of Appeal. As with Meade J who was appointed to the Patents Court in 2020, Mellor J has a technical background and is able to hear the full suite of patent cases, including those involving the most technically complex subject matter. He has been a welcome addition to the Court given its busy caseload, as are the group of deputy judges appointed in 2021 to hear patent cases on an ad hoc basis. 

Expedition

In 2021, parties had mixed success with applications to obtain expedited patent trials (ie, the scheduling of trials earlier than what the listing calendar would otherwise permit, and in any event earlier than 12 months from commencement of the claim). Such applications are often brought in the context of multijurisdictional disputes, for example where there are parallel German infringement proceedings underway.

In Abbott Laboratories Ltd v Dexcom Incorporated [2021] EWHC 2246, Abbott was unsuccessful in its application for expedition of a UK patent action seeking to revoke four patents owned by Dexcom. Its application was rejected, among other reasons, because: (i) while a desire to schedule a UK action in such a way that the outcome relating to validity is likely to be available and public before a parallel German infringement decision is a factor to be taken into account, it is not a strong factor and cannot justify expedition on its own; and (ii) Abbott was not prepared to provide a certain undertaking to the Court without a reciprocal undertaking from Dexcom, such that if expedition were ordered Abbott would secure protection against the injunction gap in Germany, but Dexcom would not. 

By contrast, in Advanced Bionics AG & Anor v MED-El Elektromedizinische Gerate GmbH [2021] EWHC 2415, the Claimants (AB) succeeded in their application for expedition of a trial seeking revocation and a declaration of non-infringement in respect of the Defendant’s (Med-El) patent, against the backdrop of a parallel German infringement claim brought by MedEl. The Court indicated that while there may be many cases where the effect of a German injunction on the UK market is slight or even non-existent, in the circumstances of that case, the possibility of a German injunction (in advance of any German assessment of validity) presented a real risk that AB would suffer real and potentially irreparable damage in the UK market. This was among other reasons because: (i) the market for cochlear implant devices is a "sticky" one (ie, patients tend to stick with a particular brand throughout their lifetime), and (ii) there is a latent patient population forecast to soon undergo cochlear implantation due to delays caused by the COVID-19 pandemic. Suppliers of AB’s cochlear implant device may refuse to carry the product and/or potential new patients may choose a different brand for fear that if a German injunction were to be granted, a UK injunction may potentially follow. 

These decisions confirm that seeking to ensure that a UK decision can be delivered in advance of a parallel overseas infringement decision alone will be insufficient to obtain expedition, but the Court will be prepared to take account of the impact that an overseas decision is likely to have on the UK market.

Advance trial listing

In UK patent litigation it is typically the case that the listing of a patent trial occurs at the Case Management Conference (CMC), which occurs several months after proceedings have commenced, usually after the exchange of pleadings has closed. This has the potential to delay the listing of a patent trial, as the earliest dates that might have been available upon the commencement of proceedings are unlikely to still be available by the time of the CMC. This is particularly undesirable given that, as set out in its 2015 Practice Statement, the Court endeavours to deliver judgment within 12 months of the commencement of a claim. However, in 2021 a procedural development emerged, whereby the Court established a procedure so that parties can apply for trial listing in advance of the CMC. 

In Nokia Technologies OY v Oneplus Technology (Shenzhen) Co., Ltd & Ors [2021] EWHC 2746, Mellor J indicated that:

  • if the parties are able to agree the subject matter of a trial and a listing estimate, then the Court is likely to approve the obtaining of a trial listing even in advance of the CMC;
  • if there is a relatively confined dispute over the listing estimate that can be dealt with at a short, 30 minute hearing, then the parties can approach the Court for such a hearing in advance of the CMC; and
  • if there is more substantial disagreement or complexity, then the trial listing may have to be determined at the CMC. 
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Kirkland & Ellis International LLP has a patent litigation practice comprised of approximately 220 attorneys in London, Chicago, Los Angeles, New York, Palo Alto, San Francisco, Washington, DC, Austin, Houston and Salt Lake City. Nearly 80% of Kirkland’s patent litigation attorneys are engineers and scientists, who are trained and experienced in a variety of technical disciplines. With decades of experience, Kirkland’s IP litigation attorneys have achieved extraordinary results in patent, copyright, trade mark, trade secret misappropriation and advertising matters. They represent clients across a broad range of industries, including life sciences, technology, consumer products manufacturing, financial services, automotive, and food and beverage. Other areas of practice are pharmaceutical and biologics patent litigation, co-ordinating global IP enforcement/defence cases, SEPs and FRAND disputes, post-grant proceedings before the US Patent and Trademark Office’s Patent Trial and Appeal Board, and appeals of high-stakes cases in the US Court of Appeals for the Federal Circuit and the US Supreme Court, as well as the Court of Appeal of England and Wales and the UK Supreme Court.

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