28 October 2012

Medimmune v Novartis - Obviousness

In Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Another [2011] EWHC 1669 (Pat) (05 July 2011), Mr. Justice Arnold dismissed a claim for infringement of  European Patents (UK) numbers. 0,774,511 and 2,055,777 by selling a product called ranibizumab which is used for the treatment of wet age-related macular degeneration of the eye on the grounds that the patents were invalid for obviousness and that even if the claims relied upon were valid the process used by the defendants to make the product did not infringe.   In Novartis Pharmaceuticals UK Ltd v Medimmune Ltd and Another [2012] EWHC 181 (Pat) (10 Feb 2012) the same judge declared that a supplementary protection certificate granted in respect of European patent number 2,055,777 was invalid not only in the light of his earlier finding but because the certificate was was granted in respect of a product that had not been identified in the wording of the relevant claim as a product deriving from the process in question.

Medimmune appealed against both judgments and Novartis cross-appealed on the ground that the judge should also have found that European patent number 2,055,777 was invalid for insufficiency and that in any case  it would not have been infringed because ranibizumab was not "obtained directly" by means of the claimed process.   Both appeals came on before the Court of Appeal (Lords Justices Moore-Bick, Lewison and Kitchin) in  Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Others [2012] EWCA Civ 1234 (10 Oct 2012).   At the start of the appeal their lordships requested argument from counsel on obviousness and priority.   Having heard their submissions they indicated that they would uphold the judge's finding on obviousness and that they did not consider it to be in the interests of justice to consider anything else.   The parties agreed and the rest of this note is a discussion of their lordships' decision on whether or not the invention involved an inventive step.

As this is a long and complicated case it is convenient to begin by considering what is meant by "obviousness" and why it is important.   Article 52 (1) of the European Patent Convention ("EPC") provides that European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.  The meaning of "inventive step" is explained in art 56 EPC:
"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art......"
The "state of the art" is defined by art 54 (2) EPC as "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."   In considering whether an invention was "obvious to a person skilled in the art" Lord Justice Jacob suggested in Pozzoli Spa v BDMO SA and Another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 at paragraph [23] the following four point test:
"(1) (a) Identify the notional "person skilled in the art"
      (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
At trial, Medimmune contended that "the person skilled in the art" or "skilled addressee" would in fact be a team consisting of an immunologist and a molecular biologist, perhaps assisted by a chemist.  Novartis agreed that such the skilled addressee would be a team but argued that it would consist of scientists with differing backgrounds in areas such as immunology, in particular antibody structural biology, molecular biology and protein chemistry, but with a common interest in antibody engineering. Mr. Justice Arnold favoured Novartis's contention on the basis that teams carrying out research in antibody engineering actually consisted of such specialists.  Medimmune criticized the judge's preference on the ground that the invention had a broad application and was not confined to antibody engineering and complained that it had led him into error.   The Court of Appeal had no doubt that Mr. Justice Arnold had been right. Lord Justice Kitchin explained at paragraph [76] that
"As Jacob LJ explained in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, [2010] RPC 33 at [42], the court will have regard to the reality of the position at the time and the combined skills of real research teams in the art. A little later, at [53], he continued that where the invention involves the use of more than one skill, if it is obvious to a person skilled in the art of any one of those skills, then the invention is obvious. Finally, at [65], he explained that in the case of obviousness in view of the state of the art, a key question is generally "what problem was the patentee trying to solve?" That leads one in turn to consider the art in which the problem in fact lay. It is the notional team in that art which is the relevant team making up the person skilled in the art."
The next step was to identify the common general knowledge of the skilled addressee as at the priority date.   Lord Justice Kitchin explained at paragraph [78] that:
"[t]he common general knowledge of the notional skilled addressee is all that knowledge which is generally known and generally regarded as a good basis for further action by the bulk of those engaged in a particular art: Beloit Technologies Inc v Valmet Paper Machinery Inc [1997] RPC 489 at 494-495. It also includes all that material in the field in which the skilled addressee is working which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work Raychem Corporation's Patent [1998] RPC 31 at 40; [1999] RPC 497 at 503-504."
As the patent in suit had been granted for a technique of antibody phage display it was common ground that skilled adressees would be familiar with the latest advances in antibody engineering.  The only dispute was whether phage display which was known but had never been used as at the date of the invention was common general knowledge.   The judge had held that it was and the Court of Appeal upheld his finding on the ground that the fact that a technique had not been used did not prevent it from being known.

The inventive concept was set out in claim 1 which Lord Justice Kitchin expressed in integers at paragraph [71]:
"[1] A method for producing a molecule with binding specificity for a particular target, which method comprises:
[2] producing a population of filamentous bacteriophage particles displaying at their surface a population of binding molecules having a range of binding properties,
[3] wherein the binding molecules comprise antibody antigen binding domains for complementary specific binding pair members,
[4] wherein the binding molecules are displayed at the surface of the filamentous bacteriophage particles by fusion with a gene III protein of the filamentous bacteriophage particles,
[5] and wherein each filamentous bacteriophage particle contains nucleic acid encoding the binding molecule expressed from the nucleic acid and displayed by the particle at its surface;
[6] selecting for a filamentous bacteriophage particle displaying a binding molecule with a desired binding property by contacting the population of filamentous bacteriophage particles with a particular target
[7] so that individual binding molecules displayed on filamentous bacteriophage particles with the desired binding property bind to said target;
[8] separating bound filamentous bacteriophage particles from the target;
[9] recovering separated filamentous bacteriophage particles displaying a binding molecule with the desired binding property;
[10] isolating nucleic acid encoding the binding molecule from separated filamentous bacteriophage particles;
[11] inserting nucleic acid encoding the binding molecule, or a fragment or derivative thereof with binding specificity for the target, in a recombinant system; and
[12] producing in the recombinant system separate from filamentous bacteriophage particles a molecule with binding specificity for the target,
[13] wherein the molecule is said binding molecule or a fragment or derivative thereof with binding specificity for the target."
That boiled down to
"(i) producing a population of phage particles displaying at their surface binding molecules having a range of binding specificities wherein each particle contains nucleic acid encoding the binding molecule; (ii) selecting particles displaying a binding molecule with a desired specificity by contacting the population of particles with a target epitope or antigen to which the binding molecule of interest binds."
At trial, Mr. Justice Arnold had considered the contents of a talk entitled "Vectors for the Cloning Immune Response" given by Professor George Smith of the University of Missouri,  one of the leading scientists in the field, to a conference at the Banbury Center of the Cold Harbor Laboratory in New York on 26 April 1990 shortly before the filing date of the patent in suit.  In that talk Professor Smith had set the stage for an experiment that would have performed the invention.   His lordship concluded at paragraph [411] of his judgment that there could be no serious doubt that Professor Smith's talk made it obvious to try phage display of antibodies provided that there was a sufficient expectation of success.  The only question was whether it would have given a skilled addressee a reasonable expectation of success within a reasonable time and after considering the evidence before him the judge decided that it would.   Having formed that view, he had no choice but to find that the invention was obvious.

On appeal, Medimmune contended that the judge had fallen into error on four grounds.   The first was that Professor Smith's paper at the Banbury conference did not go beyond other work that Mr. Justice Arnold had already said did not render the patent invalid for obviousness.  The Court of Appeal rejected that contention on the ground that the science had moved on from the previous work and that in any case Professor Smith's paper did disclose significant differences.   Secondly, Medimmune referred to a grant application by Professor Smith that implied that the work that would have included the experiment he had proposed in his paper would take 5 years and that the prospects of success  of such work were too uncertain to justify giving it to a doctoral student.  The Lords Justices found that Medimmune had taken Professor Smith's words out of context in that he was referring to a much broader project and in any case he later revised his grant application.   Thirdly, Medimmune argued that the fact that Professor Smith thought that the experiment was worth trying did not mean that the skilled addressee would have been of the same opinion.   In focusing on Professor Smith rather than skilled addressees in particular it was said that the trial judge had applied the wrong standard.  The Court of Appeal rejected that submission on the ground that Professor Smith was just as much a skilled addressee as the other scientists working in the field at the time and his opinion on the feasibility of the experiment could not be ignored.   Fourthly, it was submitted that the immunologist in the team would have been deterred from conducting the experiment by concerns over whether antibody fragments would fold, non-specific binding and the fusion phage losing its infectivity.  The Court rejected that argument on the ground that the concerns of one member of the team would not have overridden the curiosity of the others in ascertaining whether Professor Smith's experiment would work.   For all these reasons, their lordships concluded that the trial judge had arrived at the right conclusion.

The difficulties in this case had arisen from the application of the fourth stage of the Pozzoli test, that is to say:
"(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
Lord Justice Kitchin addressed the problem between paragraphs [89] and [91] of his judgment:
"[89] It is step (4) which is key and requires the court to consider whether the claimed invention was obvious to the skilled but unimaginative addressee at the priority date. He is equipped with the common general knowledge; he is deemed to have read or listened to the prior disclosure properly and in that sense with interest; he has the prejudices, preferences and attitudes of those in the field; and he has no knowledge of the invention.
[90] One of the matters which it may be appropriate to take into account is whether it was obvious to try a particular route to an improved product or process. There may be no certainty of success but the skilled person might nevertheless assess the prospects of success as being sufficient to warrant a trial. In some circumstances this may be sufficient to render an invention obvious. On the other hand, there are areas of technology such as pharmaceuticals and biotechnology which are heavily dependent on research, and where workers are faced with many possible avenues to explore but have little idea if any one of them will prove fruitful. Nevertheless they do pursue them in the hope that they will find new and useful products. They plainly would not carry out this work if the prospects of success were so low as not to make them worthwhile. But denial of patent protection in all such cases would act as a significant deterrent to research.
[91] For these reasons, the judgments of the courts in England and Wales and of the Boards of Appeal of the EPO often reveal an enquiry by the tribunal into whether it was obvious to pursue a particular approach with a reasonable or fair expectation of success as opposed to a hope to succeed. Whether a route has a reasonable or fair prospect of success will depend upon all the circumstances including an ability rationally to predict a successful outcome, how long the project may take, the extent to which the field is unexplored, the complexity or otherwise of any necessary experiments, whether such experiments can be performed by routine means and whether the skilled person will have to make a series of correct decisions along the way."
He concluded at paragraph [93] that 
"[u]ltimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim."
In his concurring judgment, Lord Justice Lewison agreed.  He referred to dicta of Lord Justice Jacob in Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82, [2010] FSR 18 and Lords Justices Diplock and Wilmer in Johns-Manville Corporation's Patent [1967] RPC 479 that the question of whether or not an invention involves an inventive step is whether the invention is obvious and that any paraphrase or other test is only an aid to answering that question.  He added at paragraph [181] that those sentiments seem to have been largely ignored by the profession and emphasized that the statutory question is: "was the invention obvious at the priority date?" and not: "was it obvious to try?" In his lordship's judgment 
"too much elaboration of the statutory question has been attached to it. The questions of the degree of expectation of success and the length of time thought to be needed to undertake a trial have taken on lives of their own." 
His lordship thought that that has happened in this case.   Having said that, he conceded at paragraph [184] that there are some inventions where the idea of trying an experiment has constituted the inventive step.

Though this case turned very much on its own facts it is likely to be cited frequently as an aid to understanding the Pozzoli test.  Obviousness is often the most promising ground upon which one can defend an infringement action especially since the explosion of prior art in most technologies from North Asia and the advent of the internet which has greatly extended the scope of common general knowledge that can be expected of a skilled addressee.  Although this particular case went against the patentee, the emphasis on the need to return to first principles in the judgments of both Lord Justice Kitchin and Lord Justice Lewison may turn out to be good news for inventors.

Should any of my readers wish to discuss this fascinating case, they can call me on 0161 850 0080 or send a message through my contact form.  They can, of course, also follow me on Facebook, Linkedin, twitter or Xing,

26 October 2012

Apple v Samsung - the Appeal

On 9 July 2012 HH Judge Birss QC, sitting as a judge of the High Court, held in Samsung Electronics (UK) Ltd v Apple Inc. [2012] EWHC 1882 (Pat) that Samsung's Galaxy 10.1, 8.9 and 7.7 tablet computers did not infringe Apple Inc.'s Community design number 000181607-0001. I discussed that judgment in this blog in "Apple v Samsung - Compare and Contrast" on 28 Aug 2012. A few days afterwards in Samsung Electronics (UK) Ltd v Apple Inc (No. 2) [2012] EWHC 2049 (Pat) (18 July 2012) Judge Birss ordered Apple to display the following notice on the home page of their website and in advertisements in the national press:
"On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronics (UK) Limited's Galaxy Tablet computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design 000181607-0001. A copy of the full judgment of the High Court is available via the following link [insert hyperlink]."
I also commented about that judgment on 28 Aug 2012 in "Samsung v Apple - The Aftermath."

At the end of that second case note I observed:
"The notice was supposed to have been inserted within 7 days of the date of the Order but I could find no trace of it when I checked Apple's website just now. That could be because the judge or Court of Appeal have agreed to vary, suspend or vacate the order pending appeal or because the parties have agreed something. If that is the case we shall no doubt learn in time."
Apple was not best pleased with His Honour's order because it would have been forced it to grovel and ruin its home page so (as I had surmised in my case note) it applied to the Court of Appeal to suspend the order.   In  Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1223 (26 July 2012), Lord Justice Kitchin and Sir Robert Jacob acceded to Apple's application.  That was fair enough but Apple incredibly persisted in an appeal to the Oberlandesgericht (regional court of appeal) against the refusal of the Landgericht (district court) for Düsseldorf to grant an interim injunction to restrain Samsung Electronics Co. Ltd. of South Korea from selling the 7.7 Galaxy tablet throughout Europe even though Judge Birss QC sitting as a Community design court had already declared that the 7.7 did not infringe Apple' s registered Community design. Even more incredibly the Oberlandesgericht allowed the appeal notwithstanding that there were no proceedings in Germany or indeed anywhere else in Europe outside England on the substantive issue.

The decision of the Oberlandesgericht appears to have done enormous damage to Samsung.   As Sir Robin Jacob put it: 
"The decision of the Oberlandesgericht received much publicity. What was the ordinary consumer, or the marketing department of a potential Samsung customer to make of it? On the one hand the media said Samsung had won, on the other the media were saying that Apple had a German Europe-wide injunction. Real commercial uncertainty was thereby created. A consumer might well think "I had better not buy a Samsung - maybe it's illegal and if I buy one it may not be supported". A customer (and I include its legal department) might well wonder whether, if it bought Samsung's 7.7 it might be in trouble before the German courts. Safest thing to do either way is not to buy."
And so they didn't.  Again, in Sir Robin's words:
"Even though these injunctions as regards design infringement were later first limited to Germany and even later discharged altogether as regards the 8.9 and 10.1 Samsung says that its market share of tablets in the UK plummeted from 10% to 1% and has only recovered to 3%."
Sir Robin's words that I have quoted above were extracted from paragraphs [83] and [78] of his judgment in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339 (18 Oct 2012) which was the substantive appeal against both of Judge Birss's judgments.   In that appeal the Court of Appeal (Lord Justice Kitchin and Longmore and Sir Robin Jacob) upheld Judge Birss's declaration of non-infringement and ordered Apple to publicize their lordships' judgment though in somewhat less humiliating terms than His Honour had ordered. Though they varied his order, their lordships went out of their way to avoid criticism of His Honour. In so far as their order differed from that of the trial judge, they made clear that it was because they were dealing with different facts in different circumstances that required a different exercise of discretion.

Apple made a number of minor complaints about Judge Birss's judgment.   It argued first that an "informed user, noting that the design was from 2004, would know and expect that advances in technology would make thinner tablets possible" and that he or she would give little significance to the thickness of the design as registered. Sir Robin rejected that criticism for two reasons:
"First is that the scope of protection is for the design as registered, not some future, even if foreseeable, variant. Second is that Apple's point cuts both ways: if the informed user could foresee thinner tablets ere long so could Apple whom the informed user would take to have the same prevision. Thus the informed user would take the thickness to be a deliberate design choice by Apple."
Secondly, Apple complained that the judge took account of the fact that the Samsung products had the trade mark Samsung on both their fronts and backs. It submitted that the informed user would disregard the trade mark altogether as being a mere conventional addition to the design of the accused product. The Court of Appeal found no error there:
"If an important feature of a design is no ornamentation, as Apple contended and was undisputed, the Judge was right to say that a departure from no ornamentation would be taken into account by the informed user. Where you put a trade mark can influence the aesthetics of a design, particularly one whose virtue in part rests on simplicity and lack of ornamentation. The Judge was right to say that an informed user would give it appropriate weight - which in the overall assessment was slight."
Apple's main argument, however, was that the judge was wrong in his assessment of a different overall assessment to an informed user. It complained that His Honour had made a feature by feature comparison of the registered Community design and the Samsung tablets and failed to have regard to the overall design as compared with the items of prior art contained in the design corpus. The Court of Appeal found that the trial judge had done no such thing.  He did address the individual features that Apple had drawn to his attention - an exercise that Apple could hardly complain about since it had invited him to do just that - but the judge did "pull it all together and consider the overall impression of the Apple design on an informed user" as Sir Robin noted at paragraph [28].  The Court endorsed Judge Birss's assessment of design freedom which Sir Robin summarized as follows at paragraph [39]:
"In overall terms for a hand-held tablet (1) you need a flat transparent screen, (2) rounded corners are unremarkable (and have some obvious functional value in a hand-held device), and (3) you need a border of some sort for functional reasons. There is some design freedom as regards ornamentation, the rim, the overall shape (rectangular or with some curved sides) but not a lot. And the main thing, the screen itself was something with which the informed user would be familiar ......"
It also endorsed his approach to the design corpus and in particular to the Flatron handheld computer which appears below.
Overall the Court could find no material error by Judge Birss and added at paragraph [54] 
"if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons. If the registered design has a scope as wide as Apple contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled."
Because the Oberlandesgericht had entertained Apple's appeal against the Düsseldorf's court's refusal to grant a European wide injunction in respect of the 7.7 tablet notwithstanding a final decision of a Community design court, Sir Robin Jacob was scathing - and rightly so in my respectful submission:
"[56] Firstly I cannot understand on what basis the Court thought it had jurisdiction to grant interim relief. I do not think it did for several reasons.
[57] Firstly it is common ground that no German court was "first seized" of the claim for a declaration of non-infringement. Indeed given that Apple withdrew its claim for infringement in Germany, no German court appears even now to be seized of a claim for infringement. It is true that Samsung applied for declarations of non-infringement on the same day, 8th September 2011 in Spain, the Netherlands and England and Wales and there could be (but I think rather overtaken by events given that the trial and appeal are over here) a dispute about which case started first in point of time. After all there is now a Community-wide decision on the point, now affirmed on appeal. One would think that ought to put an end to all other litigation about it.
58. Secondly I cannot see any basis for an interim injunction. The UK court had already granted a final declaration. Moreover it was sitting not just as a UK court but as a Community Court. Interim injunctions are what you grant in urgent cases where there is not enough time to have a full trial on the merits. That was not this case. Lord Grabiner told us that the Oberlandesgericht had jurisdiction pursuant to Art. 31 of the Brussels Regulation EC/44/2001. But that relates to "provisional, including protective measures." There was no room for "provisional" measures once Judge Birss, sitting as a Community Court had granted a final declaration of non-infringement.
[59] Further Judge Birss was not sitting as a purely national court. He was sitting as a Community design court, see Arts. 80 and 81 of the Designs Regulation 44/2001. So his declaration of non-infringement was binding throughout the Community. It was not for a national court - particularly one not first seized - to interfere with this Community wide jurisdiction and declaration.
[60] The Oberlandesgericht apparently also thought it had jurisdiction because the party before it was SEC whereas the party before the English court was SEC's UK subsidiary. With great respect that is quite unrealistic commercially - especially as I shall recount below, Apple at least took the view that SEC would be liable for the subsidiary's actions. They were all one "undertaking". I use the word of EU law for this sort of situation.
[61] Finally I regret to say that I find the Oberlandesgericht's reasoning on the merits sparse in the extreme. Firstly, for the reasons I have given, I think it was wrong to say that the General Court decision in Grupo Promer/Pepsico was "outdated" when the decision on appeal affirmed the General Court. Secondly the Court wrongly assumed that the trade mark point was critical to Judge Birss's decision when it was not. And for the reasons I have given I think it was wrong in law to say that the positioning of a trade mark was irrelevant where it interfered with one of the key features of the design (simplicity and plainness).
[62] What the Oberlandesgericht did not do was to consider Judge Birss's decision in detail. It gave only meagre reasons for saying "The Court cannot concur with the interpretation of the High Court". I regret that. In Grimme v Scott [2010] EWCA Civ 1110, this Court said:
'[63] The Judges of the patent courts of the various countries of Europe have thereby been able to create some degree of uniformity even though the European Commission and the politicians continue to struggle on the long, long road which one day will give Europe a common patent court'.
[64] That principle was not followed by the Oberlandesgericht. If courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer.'
[63] Broadly we think the principle in our courts - and indeed that in the courts of other member states - should be to try to follow the reasoning of an important decision in another country. Only if the court of one state is convinced that the reasoning of a court in another member state is erroneous should it depart from a point that has been authoritatively decided there. Increasingly that has become the practice in a number of countries, particularly in the important patent countries of France, Germany, Holland and England and Wales. Nowadays we refer to each other's decisions with a frequency which would have been hardly imaginable even twenty years ago. And we do try to be consistent where possible."
Not surprisingly, Apple agreed to ask the Oberlandesgericht to discharge its injunction.

The difficulties that had been caused by the German court's intervention that I have mentioned above. were one of the reasons why the Court of Appeal was moved to make a publicity order. It ordered Apple to insert a hypertext link on its home page under the words "Samsung/Apple UK judgment" linking to the notice
"On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronic (UK) Limited's Galaxy Tablet Computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design No. 0000181607-0001. A copy of the full judgment of the High court is available on the following link [link given].
That Judgment has effect throughout the European Union and was upheld by the Court of Appeal on ….. A copy of the Court of Appeal's judgment is available on the following link […]. There is no injunction in respect of the registered design in force anywhere in Europe."
    I have just had a look at the Apple home page and found a link to the Samsung clicked the link "Samsing/Apple UK judgment".  Sure enough, the words prescribed by the Court of Appeal are there but between the first and second sentences Apple has inserted the following text:
    "In the ruling, the judge made several important points comparing the designs of the Apple and Samsung products:
    'The extreme simplicity of the Apple design is striking. Overall it has undecorated flat surfaces with a plate of glass on the front all the way out to a very thin rim and a blank back. There is a crisp edge around the rim and a combination of curves, both at the corners and the sides. The design looks like an object the informed user would want to pick up and hold. It is an understated, smooth and simple product. It is a cool design.'
    'The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool.'"
    Apple also added the following  paragraph at the end of its notice:
    "However, in a case tried in Germany regarding the same patent, the court found that Samsung engaged in unfair competition by copying the iPad design. A U.S. jury also found Samsung guilty of infringing on Apple's design and utility patents, awarding over one billion U.S. dollars in damages to Apple Inc. So while the U.K. court did not find Samsung guilty of infringement, other courts have recognized that in the course of creating its Galaxy tablet, Samsung willfully (sic) copied Apple's far more popular iPad."
    Those words have been inserted after the Court of Appeal had gone out of its way in paragraph [3] to dispel any notion that Samsung was accused of copying in this country at any rate, that the case was to be determined as though the iPad had never existed and to stress that this case was only about the registered Community design and not about the other intellectual property disputes between the same parties that were being litigated overseas.

    Long after the iPad and Galaxy will have been forgotten, this case will be remembered for two points.   First, Sir Robin Jacob's definition of the informed user at paragraphs [34] and [35] which I have already cut and pasted into my registered design skelly template ready for my next scrap in the Designs Registry, Patents County Court or even OHIM whenever it should come:
    "He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46).
    However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
    He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
    He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
    He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).
    [35] I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59)."
    The other point for which this case is likely to be remembered is that the Court held at paragraph [75] that it had jurisdiction to make a publicity order not by virtue of the Enforcement Directive 2004/48/EC which enables the court to make them in favour of successful claimants but as an adjunct to the power to make a declaration. Sir Robin made clear that this jurisdiction is to be used sparingly and proportionately.

    There is a lot of strong meat in this judgment and should anyone want me to cut it up into digestible chunks he or she should call me on 0800 862 0055 or contact me through FacebookLinkedin, twitter or Xing, or through my contact page.

    13 October 2012

    Patents County Court: More on the Small Claims Track

    Following on from my article "Patents County Court - the New Small Claims Track Rules" of 20 Sept I can now report that the Part 63 Practice Direction has been amended and that we now have a new "Guide to the Patents County Court Small Claims Track."

    A new paragraph 32 has been added to the Part 63 Practice Direction.   It provides as follows:
    "Small claims
    32.1    This Practice Direction shall apply to a claim allocated to the small claims track in a patents county court to the extent provided by paragraphs 32.2 and 32.3.
    32.2    The following paragraphs shall apply –
    (1) in Section II, 16.1, 17.1, 17.2, 19.1, 20.1, 21.1 to 21.5, 22.1, 23.1, 24.1;
    (2) in Section IV, 26.1, 26.2;
    (3) in Section V, 30.1, 31.1.
    32.3 No other provision in this Practice Direction shall apply."
    The Guide pretty well confirms what I had anticipated in my article of 20 Sept.  However, it contains two titbits of information that were new to me.   The first is that hearings will take place in the Thomas More Building in the Royal Courts of Justice and not in the Rolls Building.   The second is that cases will come on before District Judges Janet Lambert, Melissa Clarke and Charlotte Hart and Deputy District Judge Nicola Solomon and Richard Vary. That's a lot of judges which suggests that that the court expects a lot of work. Both of the deputy district judges are acknowledged intellectual property specialists.

    Finally, I should mention that I gave a presentation on the new court to Sheffield Inventors Group on 1 Oct which I shall repeat to Liverpool Inventors Club at the offices QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY on Monday 29 Oct 2012 at 17:00.  The boardroom will take only 15 or so guests so email or call Michael Sandys on 0151 282 1700. I will try to get Michael to obtain CPD accreditation for the talk from the SRA and IPReg and I will ask the BSB but no promises mind.   You will also find a reading list with links to all the materials that I have been able to assemble on the small claims track at the end of my article of 20 Sept 2012 including my latest article "How to bring a Small Claim in the Patents County Court" of 12 Oct 2012.