This year promises to be one of the most significant in a generation for IP litigation, with major disputes reaching the high courts, as well as a brand-new court launching in mainland Europe. Tom Oliver, Partner, and Claire Robinson, Senior Associate, highlight some of the most hotly anticipated cases of this year and assess their wider implications for the market.
IP CASES BEFORE THE UK SUPREME COURT
Sky v SkyKick – Scope of Trade Mark Protection
This long-running dispute between the broadcaster, telephony and broadband provider Sky, and the cloud software provider SkyKick, began in 2016 when Sky brought a claim against SkyKick over alleged infringement of its registered ‘SKY’ trade marks.
The central issue being considered is whether or not Sky’s trade mark applications were made in bad faith on the grounds that Sky never intended to utilise its trade mark for all the different kinds of goods for which protection was sought – the most significant example being “computer software”.
After multiple first instance decisions and referrals to the CJEU, the Court of Appeal overturned the earlier ruling by the High Court of England and Wales, finding that:
“An applicant for a trade mark does not have to formulate a commercial strategy for using the mark in relation to every species of goods or services falling within a general description” and that the absence of a commercial rationale or strategy for using the marks in relation to all goods or services within a category, “is not relevant to the enquiry about bad faith”.
The appeal to the UK Supreme Court will be heard in June and trade mark owners across the country will be eagerly awaiting the decision.
Thaler v the Comptroller (DABUS) – AI Inventorship
Another highly anticipated Supreme Court case is that of Thaler v the Comptroller.
The matter relates to the question of AI inventorship and Dr Richard Thaler’s patent applications for his AI system called “Device for the Autonomous Bootstrapping or Unified Sequence”, or DABUS. The case in the UK is being brought in parallel with similar applications in multiple other jurisdictions across the world, with varying decisions being taken at the patent office and court levels, such as in Australia (the Federal Court approved AI inventorship in 2021, but was overturned on appeal by the Full Federal Court in 2022, further leave to appeal has been denied), South Africa (the Companies and Intellectual Property Commission or CIPC granted the DABUS AI patent application in 2021), and the U.S. (the Federal Court for the Eastern District of Virginia ruled an AI system cannot be an inventor in 2021, upheld on appeal by Federal Circuit in 2022).
In 2021, the Court of Appeal for England and Wales upheld the High Court’s decision that because an AI machine is not a natural person, in accordance with the Patents Act 1977, it cannot be named as the inventor of a patent, and nor can such a machine transfer the right to someone else. All eyes now look to the Supreme Court for their verdict. Dr Thaler was granted permission to appeal in August 2022 and the case is due to be heard in March.
COMMERCIALLY SIGNIFICANT CASES
AutoStore v Ocado – Robotics
Ocado is predominantly known in the UK as an online grocer, however it has more recently re-positioned itself as an innovative technology company, providing technology solutions for other companies’ online grocery businesses. The warehouse robotic technology company AutoStore, headquartered in Norway, initiated proceedings against Ocado in October 2020 in the US and UK, alleging infringement of its patents relating to warehousing robotics.
Whilst the US decisions have so far favoured Ocado, the UK proceedings went to trial earlier in 2022, and the High Court’s judgment is highly anticipated.
Aside from the commercial value of the dispute, the High Court’s judgment will be of interest for addressing, for the first time in the UK, the applicability of foreign confidentiality laws in determining whether disclosures made between foreign entities should be regarded as novelty destroying prior art.
General Electric v Siemens – Battle over wind power patents
Siemens and General Electric are engaged in a multi-national patent dispute over wind turbine technology, with ongoing litigation in at least the US, Germany and the UK.
In November 2022, judgment was handed down in the first instalment of the UK action. In this case, Siemens alleged that General Electric’s Haliade-X wind turbines, which are planned for installation in off-shore wind farms, infringed its patent. The case made specific reference to the Dogger Bank wind farm in the North Sea, which is the world’s largest wind farm, where the Haliade-X turbines were due to be installed.
In his judgment Mr Justice Meade found the patent not infringed, invalid for obviousness and, interestingly, that use of General Electric turbines off-shore was not within the territorial ambit of the UK Patents Act. This could have important consequences for the way that wind farm operators and turbine manufacturers approach patent rights in the UK.
The second instalment of the dispute will commence in 2023, when the trial of the patent infringement case brought by General Electric against Siemens is due to be heard.
Philip Morris v British American Tobacco – Heated Tobacco Technology
The multi-national patent dispute between the major tobacco companies Philip Morris (PMI) and British American Tobacco (BAT) concerning “heat not burn” tobacco products is set to continue in 2023. A first instance trial took place in early 2022, in which PMI sought an ‘Arrow declaration’ – providing PMI with freedom to operate for its heat not burn product in relation to multiple BAT patent applications. Judgment on this trial is eagerly awaited. Another patent trial is due to take place in the High Court in March 2023 concerning the alleged infringement and validity of two of PMI’s patents.
NHS v Pfizer – Damages in pharmaceutical claims
A gargantuan damages claim brought by the government entities behind the UK’s National Health Service is due to be heard in late 2023. The matter relates to pharmaceutical giant Pfizer’s actions which restrained generic competition for the medication pregabalin, and which the government alleges resulted in it incurring additional costs of over £700m. NHS England recently reached a settlement in relation to Pfizer’s branded product Lyrica, so the focus is now on NHS Scotland and Dr Reddy’s, the only remaining parties to the action.
Should the case reach trial it will, for the first time, shed light on the potential exposure that innovative pharmaceutical companies might have to claims by the NHS as a consequence of restraining generic competitors from entering the market. It is therefore eagerly anticipated by the market.
The status of the UK as the go-to jurisdiction for setting FRAND rates for global patents of Standard Essential Patents (SEPs) was established by the Supreme Court’s judgment in Unwired Planet v Huawei back in August 2020.
Since then, however, no SEP disputes before the UK courts have culminated in a rate-setting judgment. This looks set to change in 2023 with two FRAND rate setting judgments currently outstanding. FRAND judgments in InterDigital v Lenovo and Optis v Apple are expected imminently. Many will be eagerly anticipating the decisions in these two cases as they are likely to be significant for SEP licensing negotiations and future SEP litigation.
The Nokia v Oppo patent litigation is also due to continue this year, following the Supreme Court’s decision in November to refuse Oppo permission to further appeal its unsuccessful jurisdiction challenge. The Court of Appeal has determined that England is an appropriate forum for resolving the patent infringement cases brought by Nokia and that a stay is not warranted despite Oppo having requested the People’s Court of Chongqing in China to determine a global FRAND licence for Nokia’s portfolio.
Finally, we cannot end an article on this topic without discussing the launch of the Unified Patent Court (UPC). The UPC will finally begin hearing cases on 1 June 2023, after a three-month sunrise period beginning on 1 March (the initial roadmap for the launch was postponed in December).
There is no doubt the UPC will significantly change the patent landscape in Europe. Patent litigation strategies deployed in Europe will evolve, which will inevitably include patentees and defendants leveraging the UK courts. Everyone in the patent world will be watching closely as the first cases begin to unfold.
This year will see the culmination at trial of many high-profile disputes and issues which have been long in the making, and once decided, will go some way towards determining the future direction of their respective fields. From clean energy, to robotics, to artificial intelligence, to pharmaceuticals – demand and necessity has helped drive profound innovations in these areas in recent years, throwing up new and complex legal questions which are being referred to the courts to resolve. London continues to be a destination of choice for litigating global FRAND cases, and as temporary truces wain, COVID-19 will be an emerging trend in patent litigation. Pfizer and BioNTech, who developed the hugely successful Comirnaty COVID-19 vaccine, are due to go head to head with CureVac and Moderna in relation to their mRNA patents in trials already listed for 2024.