IP Bulletin - February Edition - Cases from December 2010 and January 2011

KEY CASES AND DEVELOPMENTS

L'Oréal SA v eBay International AG, Advocate General Opinion - response to High Court reference. The Advocate General has given his opinion on the questions referred to the ECJ by the High Court. More . . . Virgin Atlantic Airways Ltd v Delta Airways Inc, High Court - summary judgment and joint liability for infringement. The High Court has granted summary judgment and held that the supply of an incomplete kit of parts in the UK for assembly outside the jurisdiction does not infringe. More . . . Syngenta Participations AG and another v Plant Bioscience Limited; State of Israel - Ministry of Agriculture v Unilever N.V., EPO Enlarged Board of Appeal - exclusion from patentability of plant breeding methods. The EPO Enlarged Board of Appeal has held that Article 53(b) of the European Patent Convention excludes methods for cross-breeding and selecting genomes of plants, even if a step in the process is of a technical nature. More . . . Football Dataco Ltd and others v YAHOO! UK Ltd and others, Court of Appeal – database right and copyright in football fixture lists. The Court of Appeal has referred questions to the ECJ concerning the interpretation of Article 3 of the Database Directive (96/9/EC) in relation to football fixture lists. More . . . PATENTS

Court of Appeal - amendment of mobile-phone patents Nokia GmbH and others v IPCom GmbH, [2011] EWCA Civ 6, 20 January 2011

The Court of Appeal has upheld a High Court decision that a patent relating to mobile phones was invalid, and that applications to amend another patent held to be invalid should be refused.

The patentee, IPCom, and Nokia were engaged in an international patent battle. In the High Court, two of IPCom's patents were held to be wholly invalid.

Immediately before trial, IPCom applied to amend one of the patents in response to additional prior art sought to be introduced by Nokia. Nokia subsequently withdrew its application to cite the prior art on the first day of the trial, and the High Court held that IPCom was not entitled to proceed with its application to amend on the grounds that it would be procedurally unfair. After the finding of invalidity at trial, IPCom renewed its application to amend, which was also refused.

IPCom appealed the refusals to allow the applications to amend and the finding of invalidity of the other patent. The Court of Appeal upheld the High Court's decisions.

Regarding the first application to amend, the Court of Appeal held that Floyd J had correctly exercised his discretion in refusing the application to amend. The application was too late and so it would have been procedurally unfair to continue with the trial because Nokia did not have the proper opportunity to consider the proposed amendment.

The High Court judgment concerning the second amendment primarily applied the principles laid down by the Court of Appeal in Nikken v Pioneer Trading, in which it was held that a post-trial application to amend a patent should ordinarily be refused if it would involve a second trial on validity. This was because procedural fairness required a party to put forward the whole of his case before trial thereby avoiding expense, delay, uncertainty and double vexation of the successful party.

IPCom made a number of arguments as to why the decision in Nikken should not apply which were rejected by the Court of Appeal.

High Court - summary judgment and joint liability for infringement Virgin Atlantic Airways Ltd v Delta Airways Inc [2010] EWHC 3094 (Pat), 30 November 2010

The High Court has granted summary judgment to the defendant and held that the supply of an incomplete kit of parts in the UK for assembly outside the jurisdiction does not infringe.

Virgin is the owner of a European patent for aircraft seats which can be converted into a flat bed. This seat had been designed by Contour, which then supplied other airlines, including Delta, with a design of a flat-bed seat called "Solar Eclipse". Virgin sued Contour for patent and design right infringement. In January 2009, the High Court held the patent to be valid but not infringed and rejected the design right infringement claims. On appeal, in December 2009, the Court of Appeal reversed the High Court decision and held that the patent was valid and infringed.

Then in September 2010, in the EPO opposition proceedings, a Technical Board of Appeal maintained the patent, but in an amended form. The amendments included the deletion of all the seat unit claims.

After the action against Contour had been commenced, Virgin also sued Delta on the basis of joint liability for acts of infringement committed by Contour. Contour manufactured parts of the seat assembly in the UK, but the installation of the system in the planes took place solely in the US.

Following amendment in the EPO opposition, Delta applied for summary judgment. The parties agreed that Virgin's allegations relating to the seat units, as distinct from the seating systems, should now be disregarded following the amendment.

Direct infringement only took place in the US. However, Virgin argued that Delta was liable under section 60(1)(a) by dealing in a "kit of parts". Section 60(2) (contributory infringement) did not apply because there is a double territorial requirement: firstly, the supply or...

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