Bloomsbury IP/IT Briefing: June Teaser

Patent cases dominate this month’s IP & IT Briefing. The Court of Appeal discussed ‘purposive construction’ in a case concerning railway trackbeds in which it upheld the first instance finding that the patent was valid and infringed.

In the Patents Court, the issue of proprietary estoppel was raised by Apple in a dispute over a patent declared essential to a telecoms standard. However, the judge rejected the attack, upholding the patent as valid and essential to the standard, in a decision that is likely to be welcomed by owners of SEP portfolios.

In a Patents Court case concerning a patent for an interface circuit, Meade J found the relevant claims obvious in the light of one piece of prior art, applying the Pozzoli analysis. The judge also analysed several other issues, including the conduct of the parties in pre-trial negotiations and the legitimacy of the assignment of the patent.

The dispute between Mitsubishi and several mobile phone manufacturers has already seen a number of judgments in the Patents Court, and this month brought two more. One found two of the patents at issue valid and essential to the relevant standard. The other dealt with two applications relating to the FRAND trial, which is due to be heard later this year.

At the IPEC, there were two trade mark and passing off decisions of note. In a case concerning the brand REVOLAX, HHJ Melissa Clarke reprimanded the claimant for bringing an action against the importer of legitimate goods from Poland: she found that the UK trade mark had been applied for in bad faith and actionable unjustified threats had been made. In a case concerning the use of the name Alyssa by jewellery designers, Miss Recorder Amanda Michaels found that there was goodwill, misrepresentation and damage sufficient to prove passing off.

The CJEU upheld a judgment in favour of Pirelli regarding a figurative trade mark registered for goods including tyres, which found that the mark did not represent the goods covered, but only a very limited part of them. The Court also published its judgment setting out the liability of online platforms in two cases concerning Yahoo and Cyando.

At the EPO, preliminary Board of Appeal opinions were published in the two cases concerning the Dabus patent which lists an AI as inventor; oral hearings have been scheduled for December 2021.

Finally, the UK government has launched a consultation on the post-Brexit regime for exhaustion of IP rights. It is open for comments until 31 August.

The IP/IT Briefing is part of the Bloomsbury Law Online Service. The full briefing is available here.

Written by James Nurton

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