Intellectual Property

Wise Property Care Limited v. White Thomson Preservation Ltd And Others [2008] CSIH 44

Thu, 24 Jul 2008 10:31:00 GMT

Reclaiming Motion:- On 26 February 2008, interim interdict was granted that prevented the defenders "...from passing off as those of the pursuers any service or business provided by the defenders and in particular by trading or carrying on business under or using in their brochures, business cards, stationery, promotional material and signage or in any other manner in connection therewith (including but not limited to any use on the internet) the names 'White', 'White Thomson', 'White Preservation', 'White Thomson Preservation' and 'White Thomson Preservation (Northern)' or any other word or combination of words colourably similar thereto and likely to cause confusion with the business of the pursuers trading as 'White Preservation, a division of Wise Property Care Limited'...". The defenders enrolled a motion for recall and on 7 March 2008 the motion for recall was refused. Here the defenders reclaimed against the refusal to recall the interim interdict. On behalf of the defenders it was submitted that the central question was whether the defenders' use of the title "White Thomson Preservation" had the potential for passing off their business as that of the pursuers and the the averments did not justify the granting of interim interdict. Further, the prima facie case was weak and did not justify interim interdict, the balance of convenience favouring the defenders. On behalf of the pursuers it was submitted that the Lord Ordinary had made the correct decision and had properly assessed what was likely to happen by way of confusion and damage to the pursuers' business if interim interdict was not granted. Here the court considered whether the Lord Ordinary erred and whether his discretion in reaching his decision should be interfered with.

Conor Medsystems Incorporated (Respondents) v Angiotech Pharmaceuticals Incorporated and others (Appellants), [2008] UKHL 49

Wed, 09 Jul 2008 09:22:00 GMT

Angiotech and the University of British Columbia are joint proprietors of a European patent which claims, among other things, a stent coated with taxol for “treating or preventing recurrent stenosis". Conor Medsystems applied in both the UK and the Netherlands for revocation of the patent on the ground that the claimed invention was obvious. In the UK, at first instance and before the Court of Appeal, it succeeded. In the Netherlands, before the District Court of The Hague, it failed. Angiotech appealed to the House of Lords submitting that the Dutch court was right and that the patent should be declared valid.

Following the decision of the Court of Appeal, Angiotech and Conor reached a settlement and therefore Conor did not oppose Angiotech’s appeal. However, a patent confers proprietary rights in rem and the validity of a patent cannot be established simply by a judgment in default of opposition. The House of Lords therefore invited the Comptroller General of Patents to assist the court in presenting the arguments against the validity of the patent.

The only issue that the experts initially disagreed upon was whether it would have been obvious at the priority date to coat a stent with taxol to prevent or treat restenosis. However, Conor later went on to argue that the coating of the stent with taxol was not the inventive step. Conor argued that the inventive step lay in the “trying” a taxol combination to determine whether restenosis could thereby be treated. On the basis that the patent taught no more than that taxol was worth trying, Conor submitted that it added nothing to existing knowledge. The fact that it was worth a try was obvious.

The House of Lords noted that the question of obviousness was whether it was obvious to use a taxol-coated stent to prevent or treat restenosis.

The House of Lords agreed with the opinion of the Dutch court that Angiotech sufficiently clearly indicated in the patent that it was advantageous to use taxol and stated a reason for this – that taxol scored well when considering a solution to restenosis. The question was whether that was obvious and not whether it was obvious that taxol might have this effect.

The Dutch court was not addressing itself to whether taxol worked, or whether the specification proved that it would work, but to whether the specification taught that it should be used.

The House of Lords stated that neither the judge nor the Court of Appeal answered the correct question – whether it was obvious to use a taxol-coated stent to prevent restenosis.

The judge had held that the patent did not in any way demonstrate that taxol actually worked to prevent restenosis. The House of Lords agreed with the Dutch court that patent law did not require such a demonstration. It was not a sufficient reason for not applying the ordinary principles of obviousness to the claimed invention.

The House of Lords (unanimously) allowed the appeal.

Trunature Limited v. Scotnet (1974) Limited & Scobie and Junor (Est 1919) Limited [2008] CSIH 33

Wed, 11 Jun 2008 14:31:00 GMT

Intellectual Property - Reclaiming Motion:- On 1 February 2007 the Lord Ordinary found the defenders liable to the pursuers in the expenses of the action on an agent and client basis, remitted the case to the auditor to tax and to report and decerned in favour of the pursuers for the expenses as taxed. At the same time the Lord Ordinary allowed the pursuers an additional fee. The pursuers lodged an account of expenses and the auditor approved the claim for outlays in full and allowed a lump-sum additional fee which represented an uplift of nearly 150% on the taxed amount of the solicitors' fees. The defenders objection to the auditor's report on the basis that:- "At taxation, the auditor made provision for payment of a significant additional fee in addition to payment of the expenses on an agent and client basis. As a result, the pursuer will recover an amount vastly in excess of the sum expended by it on legal expenses. In so providing, the auditor erred." It was submitted on behalf of the defenders that by reason of the additional fee the pursuers would recover a sum greater than they were obliged to pay to their solicitors. Here the court considered whether the additional fee would be retained by the pursuer or whether the pursuers' solicitors would receive a greater sum than they would have recovered from the pursuers on their account of fees and outlays.

Note in the Case of Trunature Ltd v. Scotnet (1974) Ltd & c [2008] CSOH 30

Thu, 21 Feb 2008 09:06:00 GMT

Note of Objections:- On 1 February 2007 the court found the defenders liable to the pursuers for expenses on an "agent and client" basis following proof in which the court found in favour of the pursuers. The court also found the pursuer entitled to charge an additional fee in terms of certain of the heads of Rule of Court 42.14(3). The result of that taxation was that the pursuers were entitled to recover,£130,000 for outlays, and £225,968.81 in respect of solicitors fees. The defenders' Note of Objections stated:- "At taxation, the Auditor made provision for payment of a significant additional fee in addition to payment of the expenses on an agent and client basis. As a result, the pursuer will recover an amount vastly in excess of the sum expended by it on legal expenses. In so providing, the Auditor erred." On 4 February 2008 the defenders' Note of Objections to the Auditor's Report on the Pursuers' Account of Expenses was repelled and on 8 February 2008 the court acceded to the defenders motion for leave to reclaim against that decision.

Trunature Limited v. Scotnet (1974) Limited and Others [2006] CSOH 114

Thu, 20 Jul 2006 23:00:00 GMT

Prelimiminary Proof - Intellectual Property