Blog Post
English court makes a call on jurisdiction for global FRAND licence
Are the English Courts the right forum for claims of patent infringement when the relief sought is the determination of a global FRAND licence? This was the question that Mr Justice Carr recently had to consider in Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd.
Blog Post
Why forego an entitlement to costs? - The effects of failing to register a transaction in a patent
Although the adverse consequences were perhaps less than they otherwise might have been, the recent decision in L'Oréal Société Anonyme & L'Oréal (UK) Limited v RN Ventures Limited underlines the benefits of registering transactions in a patent at the Intellectual Property Office.
Blog Post
The Advocate General's clarification of the 'Specific Mechanism' in Pfizer Ireland Pharmaceuticals v Orifarm
Advocate General Tanchev recently gave his opinion in Pfizer Ireland Pharmaceuticals v Orifarm concerning parallel imports of etanercept (a drug used for treating arthritis) from new member states into Germany. The Regional Court in Düsseldorf referred questions to the CJEU seeking guidance on the scope of the so-called 'specific mechanism' exception.
Blog Post
Article published on the Supreme Court's decision in Actavis v Eli Lilly
Last month the Journal of Intellectual Property Law & Practice published an article written by three members of our team analysing the key points of the landmark UK Supreme Court decision in Actavis v Eli Lilly.
Blog Post
UK Supreme Court hearing reveals Law Lords' initial thoughts on pregablin patent case
The patent battle between Warner-Lambert (Pfizer) and Actavis and Mylan reached the Supreme Court in February 2018. Members of Fieldfisher's patent litigation team were in court to hear the judges' initial reaction to the arguments which can shed light on where the court's reasoned judgment will end up. The issues are of huge significance to users of the patent system. They include whether a patentable invention needs to be made "plausible" at the filing date and, if so, the level of information the patent application must include, and the correct approach to enforcing second medical use claims.
Blog Post
Supreme Court poised to hear another landmark patent case – with an ever increasing number of interveners
Hot on the heels of its ground breaking decision last summer in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, which introduced a doctrine of equivalents into English law, the Supreme Court is poised to hear another very significant patent case, Warner-Lambert v Actavis, this month, as we report in this blog.
Blog Post
Actavis v ICOS: a routine or surprising application of the "obvious to try" test by the Court of Appeal?
The Court of Appeal has declared obvious a patent claiming a particular dosage regimen of a known drug on the basis that the skilled team would have arrived at the alleged invention, inevitably, during routine dose-ranging steps in clinical trials (Actavis v ICOS [2017] EWCA Civ 1671).
Blog Post
High Court tackles the thorny issue of confidentiality in earlier FRAND judgment
We previously reported on the judgment in the FRAND trial ("the 711 judgment"), the sixth in the series of judgments in the Unwired Planet v Huawei patent battle. We now look at the High Court's judgment concerning the controversial issue of confidential information and redaction
Blog Post
Patent novelty and infringement: smashing the mirror
A well-established principle of English patent law was that construction for the purposes of validity should mirror that in respect of infringement. Risking seven years bad luck, Arnold J smashed that mirror when he held that it is no longer good law that a patent claim will lack novelty simply because a prior publication discloses subject matter which, if performed, will necessarily infringe the claim. In particular, subject-matter that would infringe a claim applying the doctrine of equivalents will not suffice to deprive that claim of novelty. This decision – in Generics (UK) Ltd and others v Yeda Research and Development Company Limited and others [2017] EWHC 2629 (Pat) - marks the first patent court case to consider the impact on novelty of the UK doctrine of equivalents which was recently introduced into UK patent law by the Supreme Court in Actavis v Lilly [2017] UKSC 48.
Blog Post
The great debate: revisiting Actavis v Lilly and the UK doctrine of equivalents
Yesterday evening, Fieldfisher joined some 800 other members of the patent community to listen to a panel of European and US judges debate the recent UK Supreme Court decision in Actavis UK Ltd v. Eli Lilly & Co which introduced a doctrine of equivalents into UK law. The panel included two of the judges who decided the case in the Supreme Court, Lords Neuberger and Sumption, as well as Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice , Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague and Judge Kate O’Malley, US Court of Appeals for the Federal Circuit. The panel was chaired by Professor Sir Robin Jacob who explained that Lord Hoffman was unable to join the panel. Here is a note of the key issues.