The year of lockdowns, Zoom calls and Barnard Castle (an IP perspective)

With 2020 firmly behind us and the mince pies safely consumed over Christmas, Callum Beamish (Associate) and Paralegals Lin Lui, Sarah Stephens and Millie Jordan take a look back at some of Powell Gilbert’s cases in 2020.

The Supreme Court

Sufficiency – Regeneron Pharmaceuticals v Kymab [2020] UKSC 27
In June 2020, the UK Supreme Court allowed the appeal of Kymab (represented by Powell Gilbert), finding Regeneron’s patents, which relate to transgenic mice used to produce human antibodies for therapeutic use, invalid for lack of sufficiency.

The Supreme Court held that sufficiency requires the patent’s disclosure, coupled with the common general knowledge, to enable the skilled person to make substantially all products within the scope of its claims. A patentee may rely upon a principle of general application to demonstrate that it would be reasonably likely to enable the whole range of products to be made, but such a principle will not save a claim if it can be established that a significant, relevant, part of the claimed range cannot in fact be made. The relevant range will be denominated by reference to a variable which significantly affects the utility of the product in achieving its purpose. A worthwhile read for all patentees and practitioners.

FRAND – Unwired Planet v Huawei [2020] UKSC 37
In August 2020, the Supreme Court endorsed the approach taken by the lower courts in Unwired Planet (Powell Gilbert jointly acting for Huawei) and Conversant, in holding that the English courts: (i) have jurisdiction to settle a global FRAND licence and grant an injunction if that licence is not taken; and (ii) were the appropriate forum for the resolution of the Conversant case.

The Supreme Court also confirmed that FRAND is a single, unitary obligation without a free-standing or “hard-edged” non-discrimination aspect and that Huawei v ZTE was interpreted correctly by the lower courts (i.e. the requirements set out by the CJEU were not mandatory in all cases).

The judgment cements the UK’s position at the forefront of global licensing for standard essential patents.

The High Court

Public interest and injunctions – Abbott v Edwards [2020] EWHC 513 (Pat)
As part of a wider global dispute between Evalve (Abbott) and Edwards (represented by Powell Gilbert) in 2019 the UK High Court heard Evalve’s infringement claim concerning Edwards’ mitral valve repair devices. In January 2020, the Court heard a further trial, pending judgment on infringement, as to whether, if Edwards infringed, they should nonetheless not be injuncted as it would be contrary to the public interest to prevent doctors from using the Edwards device. Ultimately the Court granted an injunction with a limited carve out to permit the supply of the Edwards device only in circumstances where implantation of the patentee’s device had been attempted but was unsuccessful.

At [73] the judgment sets out the general principles for considering the public interest when assessing the grant of an injunction.

Experts and Equivalence – Akebia Therapeutics Inc v Fibrogen Inc [2020] EWHC 866 (Pat)
In April of last year, the High Court found all six of Fibrogen’s asserted patents for inhibitors to an enzyme invalid (two claims survived but were not infringed). The lengthy judgment covers a plethora of patent issues. Of particular note to practitioners is the guidance on the instruction of experts, the importance of a technical primer and the application of the Actavis v Lilly equivalence questions.

Powell Gilbert represented GSK who settled with Fibrogen shortly before trial.

Edwards v Meril[2020] EWHC 2562 (Pat)
In the first of four trials, the UK High Court handed down judgment finding infringement and validity of one of Edwards’ patents and infringement but invalidity of another. This was one of the first trials in the High Court to be heard in “hybrid” format due to COVID-19: counsel, a small solicitor team and the Judge were in Court with some evidence being given remotely, including from the US. The judgment addresses various patent issues and is another example of the Court applying the Actavis v Lilly equivalence questions.