United Kingdom Patent Decisions 2021
IIC
https://doi.org/10.1007/s40319-022-01161-2
REPORT
United Kingdom Patent Decisions 2021
Robyn Trigg
Accepted: 1 February 2022
The Author(s) 2022
Abstract This report highlights a selection of the most important UK patent
decisions from 2021, including: one Supreme Court judgment concerning the
economic tort of unlawful means, which importantly maintained the status quo for
litigating patents in the UK; four Court of Appeal judgments (one concerning
sufficiency and functional claiming, which overturned the decision below; two
where the first instance finding was upheld; and one considering the crown use
exception); and, seven High Court judgments (one giving obiter guidance on the
Formstein defence in cases of infringement by equivalents; four relating to applications for expedition of proceedings; and two relating to FRAND and the effect of
the ETSI undertaking).
Keywords Unlawful means Sufficiency Functional claiming Crown use
Formstein defence Expedition application FRAND ETSI undertaking
Cases Actavis v. Eli Lilly [2017] UKSC 48; [2018] 1 All ER 171; Abbott
Laboratories Ltd v. Dexcom Incorporated [2021] EWHC 2246 (Pat); [2021] 8
WLUK 32; Advanced Bionics AG & Anor v. MED-El Elektromedizinische Gerate
[2021] EWHC 2415 (Pat); [2021] 9 WLUK 204; Facebook Ireland Ltd v. Voxer IP
LLC [2021] EWHC 1377 (Pat); [2021] 5 WLUK 379; FibroGen Inc v. Akebia
Therapeutics Inc [2021] EWCA Civ 1279; [2021] 8 WLUK 161; FibroGen Inc v.
Akebia Therapeutics Inc [2020] EWHC 866 (Pat); [2020] 4 WLUK 194; Illumina
Cambridge Ltd v. Latvia MGI Tech SIA & Ors [2021] EWCA Civ 1924; [2021] 12
WLUK 235; Illumina Cambridge Ltd v. Latvia MGI Tech SIA & Ors [2021] EWHC
R. Trigg (&)
DPhil Candidate, Magdalen College, University of Oxford, and Knowledge Lawyer at Osborne
Clarke LLP, London, UK
e-mail:
123
R. Trigg
57 (Pat); [2021] 1 WLUK 158; Interdigital Technology Corporation & Ors v.
Lenovo Group Ltd & Ors [2021] EWHC 3401 (Pat); [2021] 12 WLUK 225; IPCom
GmbH & Co KG v. Vodafone Group Plc [2021] EWCA Civ 205; [2021] Bus LR
813; IPCom GmbH & Co KG v. Vodafone Group Plc [2020] EWHC 132 (Pat);
[2020] Bus LR 154; Neurim Pharmaceuticals (1991) Ltd & Anor v. Generics UK
Ltd (t/a Mylan) & Anor [2021] EWHC 2198 (Pat); [2021] 8 WLUK 1; Nicoventures
v. Philip Morris [2020] EWHC 1594 (Pat); [2020] 6 WLUK 226; OBG Ltd v. Allan
[2007] UKHL 21; [2008] 1 AC 1; Optis Cellular Technology LLC & Ors v. Apple
Retail UK Ltd & Ors [2021] EWHC 2564 (Pat); [2021] 9 WLUK 276; Regeneron v.
Genentech [2013] EWCA Civ 93; [2013] 2 WLUK 607; Regeneron Pharmaceuticals Inc v. Kymab Ltd [2020] UKSC 27; [2021] 1 All ER 475; Secretary of State
for Health & Anor v. Servier Laboratories Ltd & Ors [2021] UKSC 24; [2021] 3
WLR 370; Secretary of State for Health & Anor v. Servier Laboratories Ltd & Ors
[2017] EWHC 2006 (Ch); [2017] 8 WLUK 19; Secretary of State for Health & Anor
v. Servier Laboratories Ltd & Ors [2019] EWCA Civ 1160 see this issue of IIC at
https://doi.org/10.1007/s40319-022-01168-9; [2020] Ch 717; Teva Pharmaceutical
Industries Ltd & Anor v. Janssen Pharmaceutica NV [2021] EWHC 1922 (Pat);
Unwired Planet International Ltd v. Huawei Technologies Co Ltd [2017] EWHC
1304; [2017] 6 WLUK 60; WL Gore and Associates GmbH v. Geox SpA [2008]
EWCA Civ 622; [2008] 3 WLUK 467; Wyeth LLC v. Merck Sharp & Dohme (UK)
Ltd [2021] EWCA Civ 1099; [2021] 7 WLUK 337; Wyeth LLC v. Merck Sharp &
Dohme (UK) Ltd [2020] EWHC 2636 (Pat); [2020] 10 WLUK 132.
Legislation Patents Act 1977
Other Agreement on Trade-Related Intellectual Property Rights (TRIPS); Civil
Procedure Rules; ETSI Intellectual Property Rights Policy; European Patent
Convention; Practice Statement: Listing of Cases for Trial in the Patents Court
1 Introduction
Despite the global pandemic, patent litigation in England and Wales continued to be
active in 2021. The courts remained adaptable and flexible, with some cases being
heard fully remotely, others entirely in person, and others in a hybrid format. A wide
range of topics were litigated in 2021 – too many to cover here. This review article
will focus on a selection of the most notable decisions from the Supreme Court,
Court of Appeal, and Patents Court over the past 12 months.
2 IPCom GmbH & Co KG v. Vodafone Group Plc
The year kicked off with IPCom GmbH & Co KG v. Vodafone Group Plc.1 The
Court of Appeal took up an appeal of this standard essential patent (SEP) technical
1
[2021] EWCA Civ 205; [2021] Bus LR 813.
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United Kingdom Patent Decisions 2021
trial, heard at first instance last year.2 IPCom’s patent in issue here related to a
method for allocating mobile devices access rights to particular telecommunications
channels at particular times. At first instance, Recorder Douglas Campbell QC
found IPCom’s patent (in amended form) to be valid and essential, and that certain
of Vodafone’s acts had infringed it.3
However, Vodafone had successfully deployed the Crown use defence in the
context of some of the acts it had undertaken.4 The judge found that Vodafone’s use
of the patented method for controlling network access when responding to requests
via the Mobile Telecommunications Privileged Access Scheme (MTPAS) fell
within the scope of the little used defence.5
Both parties appealed the first instance decision. IPCom challenged the judge’s
finding that some of Vodafone’s acts did not infringe and that others were covered
by the Crown use defence.6 Whereas Vodafone challenged the judge’s construction
of the conditionally amended claims (referred to as the appeal on ‘‘set up to send’’),
which underpinned his findings of validity and infringement, and also the judge’s
finding of essentiality.7
The Court of Appeal (leading judgment given by Arnold LJ, with some
additional comments from Lewison LJ) dismissed Vodafone’s appeal on the
findings of validity, infringement, and essentiality.8 IPCom’s appeal on Recorder
Campbell QC’s construction of the conditionally amended claims was also
dismissed.9 However, the Court of Appeal overturned the first instance finding
with respect to Vodafone’s use of the Crown use defence.10
The remainder of this summary will focus on this aspect of the appeal. The
consequence of the judge’s finding below with respect to the Crown use defence
was that compensation payable to IPCom would have been payable by the relevant
Government department rather than by Vodafone. Both IPCom and the Secretary of
State for Defence contended that the judge fell into error when construing Sec. 55(1)
of the Patents Act 1977 (PA 1977). The issue turned on what was meant by
‘‘authorised in writing by a government department’’ and what form of authorisation
was required for this purpose.11
2
[2020] EWHC 132 (Pat); [2020] Bus LR 154. See last year’s case summary for further details at https://
doi.org/10.1007/s40319-021-01036-y.
3
On construction, see supra note 2, [69]–[93]; on added matter see supra note 2, [95]–[123]; on
obviousness over the prior art see supra note 2, [124]–[141]; (...truncated)
