International report - UK Patents County Court proves its worth 15 Aug 12
Following last year’s introduction of caps on costs and damages, the United Kingdom's reformed Patents County Court (PCC) continues to offer a forum for parties of any size to conduct relatively affordable IP litigation. Inventor Barry Liversidge recently availed of the PCC when he brought an infringement action in respect of his patent, EP (UK) 2 067 496, against auto-injector manufacturer Owen Mumford Limited and Abbott Laboratories Limited (Liversidge v Owen Mumford Ltd  EWPCC 33). The alleged infringement was the Humira pen, an automated injection device for delivering a medicament for treating rheumatoid arthritis. Humira is quoted as being Abbott’s highest-selling product and the defendants initially sought revocation of the patent at the High Court. This case is notable because the parties agreed to use the PCC instead of the High Court on the basis that Liversidge had limited resources and could not afford to bring an action without the protection of the PCC’s cost cap, which limited his liability to £50,000 of the defendants’ costs. In return, Liversidge agreed to seek damages only in respect of a notional royalty in respect of the device (not the drug contained in the device), and not to seek a final injunction.
Although principally established to hear litigation involving smaller entities and less complex issues, the PCC proved very capable of handling this case despite the need for expert evidence, experiments into the operation of the device and careful consideration of a variety of substantive issues. Abbott and Owen Mumford eventually prevailed by proving that their device did not operate as was previously understood and the patent was found to be invalid owing to an over-zealous amendment shifting the invention being pursued.
The question of infringement turned on the sequence of operation of the defendants’ pen. The developer of the pen, who appeared for Liversidge, explained that it operated exactly as claimed in the patent and demonstrated his point using disassembled components. Moreover, several of the defendants’ patents and patent applications describing the pen suggested that it should be held to infringe.
On the strength of this evidence, the burden of proof switched to the defendants to prove that the pen did not infringe. However, the defendants played slow-motion video footage of the device in action which showed that the pen operated differently from the prevailing understanding. The judge concluded that the defendants’ experiment had discharged the “heavy onus” on them and reminded the parties that: "The device alleged to infringe is the device as a whole, driven by the firing spring. The fact that parts of the device, isolated from other parts, can be shown to work in the appropriate manner does not help.”
Crucially, in the end, all that mattered was how the actual pen as a whole operated. This fact outweighed the assertions of the pen’s developer and the patent documentation combined.
Tactical divisional applications
A strategy familiar to many IP owners is that of filing a divisional application specifically targeting a competitor’s product from a broad parent application. Liversidge was aware of this practice and employed it in this case. In short, the patent in suit was a divisional application of a broader parent application filed in June 2003 concerning a new safety arrangement. The divisional was filed in March 2009, after the Humira pen was launched in 2006.
The sequence which Liversidge believed to be present in the Humira pen was described in the parent application in connection with one of many embodiments, all of which comprised safety arrangements. In the divisional application filed by Liversidge to capture the pen, however, the emphasis placed on the safety arrangement was removed while the sequence was placed in a broader context and taught to solve a previously undisclosed problem.
The amendments made to the patent in suit were found to contravene the prohibition of added subject matter. In comparing the divisional with the parent, the judge noted that “the focus of the [parent] application is on a safety arrangement for a syringe”, whereas “the [divisional] patent is not focussed on the safety arrangement at all [and] contains a clear disclosure of the [sequence] as a solution … in general terms”. In other words, “the teaching of the [divisional] patent relegates the safety arrangement to an optional extra”.
According to the judge:
“This case is a paradigm example of the kind of unwarranted advantage to an applicant and damage to legal security of third parties which [can arise from impermissible extension of subject-matter]. A reader of the parent application in this case would see it was concerned with a safety arrangement from beginning to end… Third parties were entitled to file this one away as an application about a particular needle stick safety arrangement and not worry about it any further save in that context. To find many years later that the application has spawned a patent which is not based on those safety arrangements would be an unwelcome surprise.”
Third parties may be pleased to note the judge’s concern for ensuring the effectiveness of prudent due diligence, which can hopefully minimise the risk of unexpected patent claims jeopardising new or existing products. On the other hand, applicants should be reminded of the importance of comprehensive invention mining, skilful drafting and careful amendment of patent applications, which are all necessary steps to create an effective patent portfolio.
Finally, small and medium-sized enterprises and multinational corporations alike should welcome the PCC as a forum for hearing IP disputes. As this case shows, the PCC can offer a flexible and affordable route for litigation in the United Kingdom of even quite complex cases, particularly if the parties are willing to agree the terms on which the matter is to be decided.
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