DIGEST OF CASES REPORTED IN [2007] R.P.C.

™ CASES fSOF f, DESIGN •LADE Intellectual | ID Property Published by Sweet & Maxwell for the UK Intellectual Property Office Office DDDD For Crealivity and Innovation UK Intellectual Property Office is an operating name of The Patent Office DIGEST OF CASES REPORTED IN [2007] R.P.C. Case Citation and Paragraph Numbering of Law Reports From the first issue of 2001 all Sweet & Maxwell law reports contain paragraph numbers. Each case has been given a unique citation. This takes the form of, e.g. [2001] R.P.C. 1 for the first case reported in R.P.C. in 2001. These case and paragraph numbers are used as the reference point for the annual tables of cases and legislation but the subject indexes are referenced to page and case number. The tables of contents and index published in each individual issue are still referenced to page number. Each law report in this issue has been allocated keywords from the Legal Taxonomy utilised by Sweet & Maxwell to provide a standardised way of describing legal concepts. These keywords are identical to those used in Westlaw UK and have been used for many years in other publications such as the Legal Journals Index. The keywords provide a means of identifying similar concepts in other Sweet & Maxwell publications to which keywords from the Legal Taxonomy have been applied. The keywords have also been used to determine the main entries in the index in order to provide a much higher level of consistency between indexes in Sweet & Maxwell publications. Keywords will follow the taxonomy logo <-tJ at the beginning of each law report. Suggestions to sweetandmaxwell. taxonomy@thomson. com. Lv:.'A TAXONOMY REPORTS OF PATENT, DESIGN AND TRADE MARK Editor MARY VITORIA Q.C. DIGEST OF CASES REPORTED IN [2007] R. P. C. THOMSON SWEET & MAXWELL PUBLISHED BY SWEET & MAXWELL FOR THE UK INTELLECTUAL PROPERTY OFFICE UK Intellectual Property Office is an operating name of The Patent Office The Thomson trademark and Star Design are trademarks of Thomson Financial S.A. used herein under licence. © Crown Copyright 2007 CASES  Ill TABLE OF CONTENTS PAGE v vi vii xiv xvi xvii xviii xxiv xxxvii xxxviii xxxix xliv xlix EDITOR'S INTRODUCTION ERRATA CASES REPORTED CASES REPORTED IN NUMERICAL ORDER DEFENDANTS' OR RESPONDENTS' NAMES IN ACTION TRADE MARKS AND TRADE NAMES LEGISLATION CASES NOTED IN JUDGMENTS AND DECISIONS REPORTED INDEX: COPYRIGHT AND RELATED CASES PASSING OFF CASES PATENT CASES TRADE MARK CASES TAXONOMY  EDITOR'S INTRODUCTION 8 New Square Lincoln's Inn M.V. A large number of the English judgments in this volume are taken from the shorthand notes and transcripts of Marten Walsh Cherer Ltd, Shorthandwriters, 6th Floor, 12-14 New Fetter Lane, London EC4A 1AG, who in addition to providing transcripts, have given the Editor substantial practical assistance. During 2007 the following have submitted reports, made suggestions for reporting or have assisted with the preparation of reports: H.H. Judge Michael Fysh Q.C., Geoffrey Hobbs Q.C., Christopher Morcom Q.C., George Hamer, Michael Edenborough, Adrian Speck, Charlotte May, Mark Chacksfield, Paul Nicholls and Tom St. Quentin, Barristers and Michael Hall of the University of Oxford. The Editor wishes to thank Professor David Vaver of the University of Oxford, John Garnsey Q.C. of the Australian Bar, Dawn Osborne and Pamela Morley-Nase of Rouse Legal, Pravin Anand of Anand and Anand, New Delhi, Pratibha Singh of Singh & Singh, New Delhi, N. Daruwalla of Jehangir Gulabbhai, Bilimoria & Daruwalla, Mumbai and Michael Soo of Shook, Lin & Bok, Kuala Lumpur, Malaysia, who have contributed reports. The Editor also wishes to thank the clerks to the patents judges, her clerks and the clerks to the London barristers mentioned above for their assistance in checking the status of cases, dates of trial and other matters of detail and to those many persons in the United Kingdom Intellectual Property Office who have so ably assisted her in the past. VI ERRATA 1. In issue 8 & 9, L'Oreal SA v Bellure BV [2007] R.P.C. 14, Hll, 1.2: after 1994 insert: "and that the comparison lists amounted to infringement under S.10(1) of the Act". 3. In issue 24, Luxim Corp v Ceravision Ltd [2007] R.P.C. 33, H26 and [24]—delete ''IDA Ltd v Metcalfe" and insert "IDA Ltd and Metcalfe v University of Southampton". These errata have been corrected for the 2007 RPC Bound Volume issued by Sweet & Maxwell. 2. In issue 11, O2 Holdings Ltd v Hutchison 3G Ltd [2007] R.P.C. 16 at [22], the quotation at [17], 1.3 insert after the word "directive": ", the answer to the question referred to the Court must be that Article 5(1) of the directive". Vll [2007] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES CASES REPORTED CASES REPORTED * Denotes a Patent Matter. PAGE * Aerotel Ltd v Telco Holdings Ltd Macrossan's Patent Application [2007] R.P.C. 7 (Patent: Patentability: Excluded subject matter: Two separate appeals to Court of Appeal: Whether claims to business method: Whether claim to computer program as such: Adoption of "technical effect approach": Structured approach to statutory test: Proposed questions for consideration for an Enlarged Board of Appeal in the EPO: CA) [4] 117 *Akzo NV's and Akzo Nobel NV's (Tibolone) Patents [2007] R.P.C. 11 (Patent: Revocation: Invalidity: Claim to pharmaceutical composition comprising tibolone of high crystalline purity: Polymorphism: Novelty: Whether product claims anticipated by disclosure of single polymorphic form: Whether process claims anticipated: Inventive step: Whether obvious to seek polymorphism in tibolone and method of producing one of two different polymorphic forms: CS (OH)) [6] 205 *Angiotech Pharmaceuticals Inc v Conor Medsystems Inc [2007] R.P.C. 20 (Patent: Revocation: Inventive step: Paclitaxel-eluting stents: Patent held invalid: Appeal to Court of Appeal: Common general knowledge: Obvious to try: Contribution to the art made by the patent specification: CA) [13 & 14] 487 BRUTT Trade Marks [2007] R.P.C. 19 (Trade mark: Declaration of invalidity: Bad faith: Agency relationship: Declaration refused: Appeal to Appointed Person: Correct approach where principal dispute was one of fact: The Appointed Person) [12] 462 CITYBOND Trade Mark [2007] R.P.C. 13 (Trade mark: Application: Opposition: Relative grounds of opposition: Opposition dismissed: Appeal to Appointed Person: Applicant for registration having earlier vested rights in relation to some but not all services within specification: Whether specification should be narrowed: Applicant seeking fallback position for first time on appeal: Guidance on proper procedure for adopting fallback positions: Likelihood of confusion: Survey evidence: Admissibility: Weight to be accorded to survey evidence: "Missing Ingredient" approach: Global assessment: Whether mark took advantage of distinctive character and repute of earlier mark: Basis of assessment: The Appointed Person) [8 & 9] 301 ISSUE Vlll (...truncated)