Review of the Year in English Patent Litigation 2020

• Trevor Cook is an English qualified solicitor and is a partner in Wilmer Cutler Pickering Hale and Dorr LLP based in its New York office. He was from 1981 to 2013 a partner in Bird & Bird LLP based in its London office. He is a prolific author whose most recent books include A User’s Guide to Patents (5th ed, Bloomsbury, 2019) and the Modern Law of Patents (4th ed, LexisNexis Butterworths,2018).

This article

• In 2020, there were 13 final decisions from the English courts at first instance in which patent infringement and/or validity were in issue. In contrast to previous years, of the 17 patents examined by the English courts at first instance, only 5 were found to be invalid.

• The UK Supreme Court delivered two judgments, respectively concerning insufficiency (Regeneron v Kymab) and FRAND licensing of standard essential patents (Unwired Planet v Huawei).

• The article also examines, among others, an important decision of the Court of Appeal on inventive step (Emson v Hozelock) and various decisions of the Patents Court on excluded subject matter and insufficiency.

Year 2020 saw 13 final decisions from the English courts at first instance in which patent infringement and/or validity were in issue. These decisions concerned 17 patents, 2 of which were held not to be infringed,¹ but only 5 of which were held to be invalid, all on grounds of obviousness, although some of the 5 were also invalid on other grounds. This low proportion of patents that were held to be invalid contrasts with 2019, where only 4 out of the 18 patents the validity of which was challenged survived such challenge, and also previous years where typically considerably fewer than half the patents the validity of which was challenged survived. It remains to be seen whether this represents the start of a trend, to which must also be factored in the fact that, when it comes to infringement, the English courts have for many years found relatively few patents not to infringe, even before they started applying the more expansive approach to infringement by equivalence mandated by the UK Supreme Court in 2017.²

Only two first instance decisions in which patent infringement and/or validity were in issue were heard by the Court of Appeal in 2020, and in each of these the judgment of invalidity at first instance was upheld. The UK Supreme Court also delivered two judgments, one reversing a decision of the Court of Appeal the previous year and restoring the decision at first instance that had found the patent in issue to be invalid on grounds of insufficiency,³ and the other upholding decisions of both the court at first instance and on appeal as to the nature of the remedy to be granted when one or more patents that had been declared essential to a standard had been held valid and infringed.⁴

A summary of all these cases at first instance and on appeal is set out in the Appendix at the end of this article.⁵ Although this summary and the above statistics are for 2020, this review of the substantive law of 2020 cheats by also referring, in a limited manner, to two early decisions from 2021—Illumina v MGI⁶ and IPCOM v Vodafone⁷—the former because of the manner in which it seeks to put into a more general framework and to apply the propositions on insufficiency developed by the UK Supreme Court in its 2020 decision in Regeneron v Kymab and the latter because it reversed the 2020 decision at first instance that had held the rarely analysed ‘crown use’ defence to apply.

Ironically, at just around the time that Lord Kitchin was joining it in 2019, the UK Supreme Court, after evincing for several years an uncharacteristic engagement with patent matters, reverted to its more usual condition of relative disinterest in them. Accordingly, Lord Kitchin has still not had, and may not for some time to come have, an opportunity to opine on patent matters in the UK Supreme Court—he was not able to sit on the two patent appeals on which the Supreme Court gave judgment in 2020, having himself delivered judgment in both of them when in the Court of Appeal, and there are at present no patent matters pending before the Supreme Court. In the Court of Appeal, Sir Christopher Floyd retired early in 2021, and Sir Richard Arnold, who has settled in to delivering the lead judgments in most patent (and other intellectual property) matters is joined by Sir Colin Birss, who has been elevated from the Patents Court, but who will also be taking on other duties as Deputy Head of Civil Justice. During 2020, the Patents Court was brought up to its usual judicial quota of two specialist judges by the appointment of Sir Richard Meade, and early in 2021 it was announced that the gap left by the elevation of Sir Colin Birss would be filled by Sir James Mellor. It would accordingly seem after a couple of years of change some stability has been restored.

The UK courts continue to differ from the EPO in their approach to assessing excluded subject matter, although they deny that this should have any effect on the outcome.⁸ The latest such example is provided by the decision in Lenovo v Comptroller General of Patents.⁹ This decision saw a rare reversal of a rejection on grounds of excluded subject matter by the UK Intellectual Property Office. However, this decision also flags up the difficulties with the UK approach in trying to separate the assessment of excluded subject matter for computer implemented inventions from the EPO approach of addressing this in the context of analysing inventive step:

[36] … As a result of this automatic feature, the card clash problem experienced with contactless payment cards is solved without the user having to take any extra physical step at the point they use their contactless cards. In my judgment that difference is an effect of the invention which is neither a computer program as such nor a method of doing business as such nor a combination of the two. That difference is technical in character and, in the context of the invention as a whole, it is not just one of the normal incidents of a conventional computer system. The claimed invention may or may not be obvious over US 438, or any other prior art, but what would counts for s1(2) of the 1977 Act / Art 52 EPC is that the invention does have an effect which is of the right character to satisfy the law.

A rather more pragmatic course would have been, as in the EPO, to cut to the chase and assess the issue of excluded subject matter as part of the assessment of inventive step. That, however, is an approach which is not open to the UK courts under the controlling Court of Appeal authority.¹⁰

Failure to identify a human inventor could itself be regarded as a novel type of excluded subject matter, and such failure proved indeed to be fatal in Thaler v The Comptroller-General of Patents, Designs And Trade Marks,¹¹ one of the several cases around the world that seek to address the impact of artificial intelligence on patent law.

Although in some of the 2020 cases certain patent claims were held to lack novelty, none raised any new points of law.¹² The same might also be said as to obviousness, despite this being the ground of invalidity that succeeded against all 5 patents that were held to be invalid at first instance in 2020.¹³ But it was also on the issue of obviousness that in Emson v Hozelock¹⁴ the Court of Appeal provided one of the most interesting decisions on the subject for many years. This records a fascinating, but rare, divergence of opinion between former specialist patents judges that had been elevated to the Court of Appeal—in this case, Lord Justices Arnold and Floyd— , which was here resolved only by the casting vote of Lord Justice Henderson in favour of Lord Justice Arnold’s opinion, which upheld the finding of obviousness at first instance. The difference between the judges lay in the approach to be adopted to a prior art reference, and the extent to which the approach that was adopted involved impermissible hindsight. Here the evidence established that the prior art reference over which the patent, for a highly successful design of expandible garden hose which had transformed the industry, had been held to be obvious, namely a proposal published in a different technical field several years before the priority date, was not one which would, in the normal course, have come to the attention of the person skilled in the art. Lord Justice Floyd observed at [87]:

‘87. It is undoubtedly the law that an invention may have been published in, or rendered obvious by, a document which no person skilled in the art would ever be likely to have seen. The award of a monopoly is not available if such a document exists and the person skilled in the art could have access to it, whether or not in the real world anybody would ever have taken that opportunity, or read it. The policy justification for the rule, which is in essence a “deeming provision”, is that once the possibility exists that a skilled person could obtain the document and consider what to do in the light of it, a subsequent patent should not interfere with his freedom to take it forward, either as precisely directed by the document or in ways which are rendered obvious by it. The policy justification does, however, lose its force in the situation, of which this case is an example, where the evidence establishes positively that the person skilled in the art would not even look for the document. The net result of the application of the rule to such a case is that the person who delivers the benefit of the invention to the consuming public is deprived of his monopoly in order to protect a right which would never in fact be exercised.’

After explaining in some detail how his reservations as to this found support in English case law, he went on to say that he thought that the judge at...