Bringing you regular news of key developments in intellectual property law.
PATENTS
Warner-Lambert v Teva and others, 22 July 2011, High
Court
Mr Justice Floyd has granted an application for an
expedited trial in favour of Teva, in circumstances in which, if
Teva succeeds in invalidating Warner-Lambert's patent, Teva may
obtain an advantage over other generic manufacturers of the drug
atorvastatin, marketed by Warner-Lambert as Lipitor, one of the
world's most successful drugs with an annual turnover exceeding
£350 million. However, Teva has had to accept as a condition
of the order that there would be no disclosure.
Teva launched generic atorvastatin, without notice to
Warner-Lambert, on 20 June 2011. They launched in this
manner, rather than seeking the revocation of Warner-Lambert's
patent in advance, in order to obtain an advantage over other
generic companies. The judge accepted that during the period
of so-called duopoly, in which the patented product plus only one
generic competitor are on the market, the original price of the
drug can be maintained. However, when further generic
competitors enter the market, the price drops more rapidly.
Floyd J granted an interim injunction restraining Teva from making
further sales of generic atorvastatin on 21 June 2011 and Teva
sought an expedited trial, to come on in November 2011.
Floyd J gave a helpful summary of the principles to be applied in
considering whether to grant an application for expedition. To name
a few, he stated that the grant of expedition is a matter for the
discretion of the judge, there must be an objective urgency to
deciding the claim, and "urgency" does not necessarily
mean the need for the case to be heard in the immediate future; a
case may be urgent in that a decision is needed by some deadline,
which may be months away.
For the full text of the decision, click here
Premium Aircraft Interiors Group Ltd BL O/281/11, 10 August 2011
An IPO hearing officer has refused to remove Virgin's
European patent covering aircraft seats, from the UK patents
register. Premium Aircraft Interiors Group Limited
("Premium") had argued that the patent should not have
been issued because Virgin had attempted to exclude the GB
designation in its original application.
Virgin had checked the box on the application form stating that
"All states which are contracting states to the EPO at the
time of filing of this application are hereby designated"
but in a separate section of the form a note had been added to
state "GB is expressly NOT designated in this
application".
Premium had already taken this argument to the EPO where it was
held that it was not necessary to correct the decision because
although there was an ambiguity, there was no explicit withdrawal
of the GB designation, the designation fee for GB had been paid and
the EPO was bound by good faith having accepted the GB designation
through examination proceedings.
The IPO hearing officer refused to remove the patent from the register. He concluded that Premium was essentially asking the IPO to review the procedural decision of the EPO at a national level. If this were possible, it would defeat the object of having a centralized patent application system.
For the full text of the decision, click here
Schutz (UK) Ltd v Werit UK Ltd and another [2011] Court of Appeal, 29 July 2011
The Court of Appeal has ruled on the interpretation of section
68 of the Patents Act 1977 following an appeal from the recent High
Court decision where it was held that Werit UK Ltd was infringing
Schutz (UK) Ltd's patent rights.
The Court of Appeal held that section 68 should be read to mean
that, in so far as a claim covered compensation for a period in
which the transaction was not registered when it should have been,
any costs relating to that period (where it was not registered)
were not recoverable. All other costs were recoverable in the usual
way. This construction was consistent with Article 14 of the
Enforcement Directive.
This decision further reduces the impact of a recently weakened
section 68. This decision demonstrates that one will still be able
to claim damages for all infringements regardless of registration
of an exclusive licence and recover costs from the date of
registration. Nevertheless there is still value in registering
licences and assignments in order to put third parties on
notice.
DATABASE RIGHTS
Beechwood House Publishing Ltd v Guardian Products Ltd
and Precision Direct Marketing Limited, 20 June 2011, Patents
County Court
The Patents County Court have found that database right was
infringed in a database of 43,000 doctors and nurses when a
competitor sent a mail shot to 6,000 nurses using 4,783 records
which were identical to those contained in the claimants'
database.
From 1994, the claimant had published a database of individuals
associated with GPs' practices, known as the Binley
database. The Binley database contained "seeds",
being fictitious entries with addresses linked to the publisher,
planted with the intention of catching infringers. The
claimant became aware from one of its seeded addresses, and later
from a second seed, that the first defendant had sent a mass
mailshot to GPs and nurses, which must have relied on the fifth
edition of the database.
In October 2010 the claimant applied for summary judgment which
was refused on the grounds that the claimant had not proved
substantial extraction, use of single seed being insufficient
proof. Summary judgment was given on the issues of title and
subsistence of database right.
Database right infringement was proved at trial. The claimant
proved satisfactorily that there was sufficient investment in the
obtaining, verifying and presentation of database contents. This
proved a sensible decision with some practical pointers in
assessing the meaning of "substantial part".
For the full text of the decision, click here
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 30/09/2011.