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Showing posts from 2017

Intellectual Property (Unjustified Threats) Bill

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Jane Lambert

The action arising from groundless threats has been one of the most perplexing features of our intellectual property law both for foreign owners of IPR in this country and their legal advisors (see Prince Plc v Prince Sports Group Inc[1998] FSR 21) and even non-specialist lawyers in the United Kingdom (see Brain v Ingeledew Brown Benson and Garrett and another [1996] FSR 341). Under s.70 of the Patents Act 1977 and similar provisions in other IP legislation, a letter threatening proceedings that would be quite acceptable in most countries and even in the UK in respect of most other causes of action can land the lawyer or attorney who wrote it, and the client on whose behalf the letter was written, in a whole heap of trouble that sometimes results in an infringer getting away with his or her wrongdoing.

S.70 (1) provides:

"Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens anoth…

General Civil Restraint Orders in IPEC - Perry v Brundle

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Jane Lambert

Perry v F H Brundle and Others [2017] EWHC 678 (IPEC) (30 March 2017)

Para 1 of the Part 3C Practice Direction, which is made pursuant to CPR 3.11, enables the court to make a range of orders known as "civil restraint orders" against a party which has issued claims or made applications that are totally without merit. Each of those orders restricts access to the courts. They are known respectively as:
a limited civil restraint order;an extended civil restraint order; anda general civil restraint order. I discussed the jurisdiction to make those orders in Civil Restraint Orders in IPEC - Perry v Brundle12 Oct 2015.

Readers will see that the most restrictive of those orders is the general civil restraint order which restrains the person against whom it is made from issuing any claim or making any application in the High Court or the County Court without permission if the order is made by a judge of the High Court. Such an order may be made only where an extended civi…

Court of Appeal upholds Birss J in Unwired Planet v Huawei

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Jane Lambert

Court of Appeal Unwired Planet International Ltd v Huawei Technologies Co Ltd[2017] EWCA Civ 266 (12 April 2017) Lords Justices Gross and Floyd and Mr Justice Arnold 

In Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others [2015] EWHC 3366 (Pat) (23 Nov 2015), Unwired Planet sued Huawei, Samsung and Google for patent infringement. The patent in suit was European patent 2,229,744 entitled Method and arrangement in a wireless communication network which is concerned with polling for a wireless communication network. The trial judge, Mr Justice Birss, explained at para [2] of his judgment that

"In this context the word "poll" refers to a message sent by a transmitter of data to the receiver to ask the receiver to tell the transmitter what information has been received. In the context of the mobile radio networks in this case, the poll asks the receiver to send a "status report". When the transmitter receives a status report it can …

Other Articles of Interest

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CIPA's York Meeting IP Yorkshire 10 April 2018
I was one of the speakers at CIPA's York meeting at the Principal Hotel. The others were Louise Edwards of Mazars, David Bloom of Safeguard IP and Kalim Yasseen of the IPO. Tony Rollins chaired the meeting.

I spoke about litigation after 28 March 2017 when the EU treaties will cease to apply and considered the litigation framework we are likely to find then. Louise discussed changes to patent box relief in the Finance Act 2016 and the Finance Bill. David talked about all the new products in IP insurance. Yasim covered changes to the Patents Rules and new services on the IPO's section of the .gov.uk website  More  IP Litigation After Brexit IP North West 9 April 2018 In 2 years time, there will be no Community design or EU trade mark courts and we may well have left the Unified Patent Court. What should we do then? Well, make more use of IPEC, especially the small claims track, for a start as we need to do something about the …

Falling to BITs: the Eli Lilly and Philip Morris Cases

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Jane Lambert


In anticipation of our departure from the European Union. Her Majesty's government and businesses in the United Kingdom have been exploring the possibility of developing new markets for British goods and services overseas. Only this week, the Prime Minister visited Saudi Arabia and Jordan (see Prime Minister's visit to Saudi Arabia and Jordan: April 20174 April 2017 HMG's website) and the Chancellor of the Exchequer was in India as part of the 9th UK-India Economic and Financial Dialogue (see UK-India economic and trade relations to take centre stage on two-day visit4 April 2017 HMG's website).

One of the advantages of trading within the EU is that the legal systems of the member states have been harmonized over the years and supplemented with a growing body of Union law. This is as true of intellectual property as of everything else with the result that the legal protection of intellectual assets in any of the member states is substantially the same as in…

Case Note: Jushi Group Co Ltd v OCV Intellectual Capital LLC

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Jane Lambert


Jushi Group Co Ltd v OCV Intellectual Capital LLC [2017] EWHC 171 (IPEC) (06 Feb 2017) 
This was a claim by the Jushi Group Co. Ltd. ("Jushi") for declarations of invalidity and non-infringement and the revocation of European patentnumber 1 831 118 for glass yarns for reinforcing organic and/or inorganic materials. The patentee, OCV Intellectual Capital LLC (a subsidiary of Owens Corning) ("OCV"), counterclaimed for infringement of the patent. Jushi admitted infringement if the patent was valid. The only issue to be determined was whether the patent was valid. The action came on before His Honour Judge Hacon on the 5 and 6 Dec 2016. His Honour delivered judgment on 6 Feb 2017.
The InventionThe patented invention was a glass strand comprising 12 listed constituents, each being present in prescribed percentages by weight, with the further feature that 3 of those constituents taken in combination must constitute at least 23% of the total by weight.  The pur…

Patents: Wobben v Siemens - Blowing in the Wind

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Jane Lambert

Wobben Properties GmbH v Siemens Public Ltd Company and Others [2017] EWCA Civ 5 (19 Jan 2017)

The claimant company, Wobben Properties GmbH is the registered proprietor of European patent  EP0847496 for a method of operating a wind power station.  The invention is described as follows:
"The invention pertains to a method of operating a wind power station, especially to limit the load on a wind power station, preferably a pitch-controlled wind power station. The invention also pertains to a corresponding wind power station. The invention is designed to increase the output of a wind power station and yet limit the load on the wind power station at very high wind velocities. This is accomplished by reducing the power of the wind power station as a function of wind velocity as of a predetermined wind velocity, preferably by reducing the operating velocity of the rotor of the wind power station when a wind appears with a wind velocity above a maximum wind velocity or maxim…