Round-up of English Patent Litigation 2021

2021 which, unlike the last few years, saw no changes in the identity of the specialist judges hearing patent matters in the English courts, saw many more final decisions on patent matters than 2020, both at first instance and on appeal. There were 19 decisions in the Patents Court at first instance in inter partes proceedings in 2021 in which patent infringement and/or validity was in issue. These decisions concerned 32 patents (nearly twice as many as in 2020), six of which were held not to be infringed,¹ and 20 of which were held to be invalid, all but two² on grounds of obviousness, although some were also held to be invalid on other grounds. In all the patentee prevailed in six decisions on 10 patents, all of which survived challenges to validity and all of which were held to be infringed, apart from two where infringement was admitted.

There were no decisions on patent (or indeed any other IP) matters from the UK Supreme Court in 2021 but there were six decisions in inter partes proceedings from the Court of Appeal, in addition to its decision in the Thaler matter, discussed below, marking an increase from the two of 2020. In three of these, the judgment at first instance was upheld in full. In IPCOM v Vodafone,³ discussed last year, the Court of Appeal differed from the Patents Court in adopting a narrower interpretation of the rarely considered Crown use defence. In FibroGen v Akebia Therapeutics,⁴ discussed below, the Court of Appeal reversed a decision by the Patents Court that most of the claims of the patents in suit were insufficient by reason of claim breadth insufficiency and that certain of those claims were also insufficient by reason of uncertainty insufficiency. And in Optis Cellular Technology v Apple Retail UK,⁵ the Court of Appeal reversed a Patents Court decision that the patent in suit was essential, although as this did not involve any dispute in this as to the relevant legal principles it is not discussed below. The irony of the last two cases was that in each case the Patents Court judge at first instance had been a judge who is now in the Court of Appeal—Arnold LJ in FibroGen and Birss LJ in Optis, a situation that is unlikely to arise again for some time to come. It is also notable that, in the latter case, Birss J had previously held the same patent to be essential in Unwired Planet International v Huawei Technologies Co Ltd.⁶

A summary of all the inter partes decisions on patent infringement and/or validity at first instance and on appeal in 2021 is set out in the Appendix at the end of this paper.⁷ But in addition to these decisions on the merits, there have numerous decisions on procedural issues, many of which are worth noting.

Excluded subject matter did not feature in any inter partes decisions in 2021, although it did feature in two unsuccessful appeals from rejections by the UK Intellectual Property Office, one as being for both a method for doing business and a program for a computer, as such,⁸ and the other because ‘the invention was nothing more than data structured in a modular, hierarchical and self-contained manner, which fell to be excluded … as a program for a computer’.⁹ Neither decision established any new law, but the latter is of some interest because, as the judge observed, his reasons were given ‘considerably more fully than might otherwise be appropriate partly because the appellant was unrepresented’.

It is also convenient to treat failure to identify a human inventor as a novel type of excluded subject matter, which the Court of Appeal considered in Thaler v The Comptroller-General of Patents, Designs And Trade Marks.¹⁰ This is one of the several cases around the world that seek to address this aspect of the impact of artificial intelligence (AI) on patent law, although it might be thought to be a somewhat artificial controversy in that it would appear to have been open to the applicant, who created, owned and operated the AI system in question, to have taken a narrower view of its inventive contribution than in fact he did and to have identified himself as inventor. The Court of Appeal, by a majority, upheld the decision at first instance which had itself upheld the decision by the Comptroller in the UK Intellectual Property Office to treat the application as withdrawn by virtue of section 13(2) Patents Act 1977 for failure to identify the person or persons whom the applicant believed to be the inventor or inventors and to indicate the derivation of his or their right to be granted the patent. All members of the court agreed that section 7 Patents Act 1977, by which the right to apply for and obtain a patent vested primarily to the inventor or joint inventors, required that such inventors or inventors be natural persons. However, Birss LJ, dissenting, disagreed as to the interpretation placed on section 13(2) by the majority, considering that the Comptroller ought not to have any locus to evaluate the claim to derivation that it required to be filed and should as a result not have treated the identification of a non-human inventor as a basis for treating the application as withdrawn.

As in previous years and, as observed above, by far the most common successful ground of invalidity in 2021 was traditional (ie non-Agrevo, discussed below) obviousness, although it is not apparent that anything by way of new law as to this was made.

The judgments in Optis v Apple (Trial C)¹¹ at [177]–[197] and in Teva v Bayer¹² at [101]–[113] provide the year’s fullest reviews of the law as to obviousness although ironically, given as to how the structured Pozzoli analysis is almost always employed in the English courts when assessing obviousness, as Meade J commented in the former at [198] ‘[n]either side used the structured Pozzoli analysis. I could not see why not, although I do not think it was critical to do so in this case.’ The judgment in Optis v Apple (Trial C) also provides a useful summary of the nature of the skilled person, the law as to which Meade J had considered earlier in the year in Alcon v Actavis,¹³ drawing heavily, as he observed, on the decision of Birss J, as he then was, at the beginning of the year in Illumina v Latvia.¹⁴ In Teva v Bayer, Mellor J adopted the principles set out in the judgment of Arnold J (as he then was) in Allergan v Aspire Pharma¹⁵ and went on at [114]–[116] to remind us that the issue for consideration is what the notional skilled team would do without invention, having read the particular piece of prior art, without regard to the fact or possibility of patent protection which in the real world would or might prevent commercialization of what the skilled team might develop.

If not the most interesting, then perhaps the most unfortunate decision on novelty and inventive step concerned the extent to which a prior use forms part of the state of the art. In Claydon Yield-O-Meter v Mzuri,¹⁶ the inventor of an improved seed drill had tested a prototype having all the features of the relevant claim in a field on the farm for 10 h, including travel to and from the workshop, split over 2 days. The issue was whether at any time during those 2 days this testing had made the invention the subject of the relevant claim available to the public, thus anticipating it. Although the inventor was alert to the risk of disclosure, HHJ Hacon, having assessed the evidence as to what could be seen from an adjoining footpath, held at [101] that ‘[t]here were periods, possibly many, during which it was likely that a skilled person, standing on the footpath at [a certain point], would have been able to see the prototype in action and been able to deduce from its appearance and from the appearance of soil left in its wake, features of construction of the prototype including all the features of [the relevant claim]. If [the inventor] or his brother had noticed such a person, I do not believe that [the inventor] could have taken action that would have prevented the skilled person from seeing or inferring each of those features, …’ He went on to observe that the inventor ‘had to test his prototype, nobody saw any of the testing and I entirely understand why he believed that his invention was not publicly disclosed. Unfortunately for him, in law the prototype was made available to the public.’

Insufficiency has long been a popular attack on validity in the English courts,¹⁷ although it has in practice proved to be less successful in this respect than obviousness, with which it is generally in tension, unless the obviousness in question is lack of technical contribution, or Agrevo-type obviousness, and with which it can correspond.¹⁸ It is also in its broadest manifestations, namely excessive claim breadth insufficiency and uncertainty insufficiency, both of which are typically explored in pharmaceuticals and biotechnology, a matter as to which it is not uncommon for English judges to disagree. Thus, and as discussed last year...