Year in review 2020

The Crown Jewels of UK patent cases

In 2020, despite the coronavirus pandemic, the UK patent courts decided on a surprising number of important patent cases. JUVE Patent has rounded up the main cases of the past year, as well as future cases which our editors believe will play an important role in the UK market in 2021.

20 January 2021 by Mathieu Klos

UK patent cases JUVE Patent discusses the crown jewels of patent cases the community witnessed in 2020 - and what's to come in 2021 ©picture alliance/empics

Unwired Planet vs. Huawei, Conversant vs. Huawei and ZTE or Regeneron vs. Kymab. Over the past year, the UK Supreme Court handed down decision on these three important patent cases. Despite the coronavirus pandemic, numerous patent cases kept the UK High Court and the Court of Appeal in London very busy.

In particular, cases involving mobile phone patents and pharmaceuticals have dominated events in the UK patent courts. But, in other matters, the landmark Dabus decision of the High Court looks far into the future. In October, the court rejected an appeal on AI inventorship in the debate around the AI system. But now the High Court has granted permission for the parties to appeal under CPR 52.6(1)(b). This is on the basis that the principle at stake is an important one.

View to the future

Things continue to be colourful in 2021. At the beginning of the year, the High Court deals with another future technology, on which the cigarette industry is pinning its hopes. British American Tobacco (BAT) and Philip Morris will meet in February for the UK trial in their global e-cigarettes war.

Currently, the High Court and Court of Appeal have not set all the cases for the next twelve months. Of course, the parties have not yet filed all cases. But as it currently stands, 2021 could be another important year around mobile communication technology. But this is not least because anti-suit injunctions in SEP lawsuits are becoming increasingly important. After all, such lawsuits were invented in the UK.

Furthermore, lawsuits by NPEs such as Conversant, IPCom and Sisvel against Chinese and US handset manufacturers are already scheduled for the next few months. More lawsuits from other SEP holders are sure to follow. After all, the Unwired Planet decision has established the London patent courts as one of the most important courts for SEP and FRAND issues.

New kids on the block

The two current market leaders among UK solicitor firms, Bristows and Powell Gilbert, are particularly well-represented as counsel in the major cases of 2020 and 2021. Allen & Overy has an equally strong presence in these proceedings.

According to JUVE Patent’s UK ranking 2021, Allen & Overy, together with Bird & Bird, EIP, Herbert Smith Freehills and Hogan Lovells, belongs to the group of five litigation teams that are close on the heels of the two leading boutiques.

Just a little over two years after entering the London patent market, US firm Kirkland & Ellis is also very present in the current UK top cases. If the team of young partners around senior partner Nicola Dagg manages to establish itself still further, the London team – bolstered by a strong US practice – will in the long-term be able to challenge the top London firms for market leadership.

Top UK patent cases 2020

1. Unwired Planet vs. Huawei

EIP advises Unwired Planet in the UK Supreme Court’s SEP/FRAND judgment

In 2018, the London patent courts calculated a global licence rate. But it was still a good three years until the patent world and the mobile phone industry received certainty. Finally, in August 2020, the UK Supreme Court published its long-awaited judgment in the dispute between Unwired Planet vs. Huawei (case IDs: UKSC 2018/0214). Now London’s patent courts are hugely important for lawsuits concerning SEPs.

In the Unwired Planet case, the court upheld lower-instance decisions. The Supreme Court judges confirmed that the courts of England and Wales have the jurisdiction to determine global FRAND terms and rates. SEP owners now hope London courts will grant them a licence for a global SEP portfolio based on a UK patent. Owners also hope that the court will calculate the licence fee.

The advisors

Both parties have retained the same law firms, if not exactly the same teams, as in the previous challenges before the UK courts. EIP is among the best-known firms for NPE clients. It acts not only for Unwired Planet Europe-wide, but also for Conversant in numerous SEP cases.

While Huawei relied on Powell Gilbert against Unwired Planet in the lower courts, Powell Gilbert and Allen & Overy represented different Huawei subsidiaries in the case before the UK Supreme Court.

For Unwired Planet
8 New Square: Adrian Speck, Isabel Jamal, Thomas Jones
Brick Court: Sarah Ford
EIP (London): Gary Moss, Andy Sharples (both lead)
Osborne Clarke (London): Arty Rajendra

For Huawei
8 New Square: Daniel Alexander, Andrew Lykiardopoulos
Brick Court: Mark Howard
One Essex Court: Henry Forbes Smith
Blackstone Chambers: James Segan
Powell Gilbert (London): Simon Ayrton (lead), Zoe Butler, Peter Damerell
Allen & Overy (London): Neville Cordell (lead), Mark Heaney

 

UK Supreme Court, UK patent cases

In August, the UK Supreme Court upheld the first-instance decisions made by the High Court and Court of Appeal ©William/ADOBE STOCK

2. Unwired Planet’s little sister… Conversant vs. Huawei and ZTE

Bristows and Allen & Overy defend Huawei and ZTE against Conversant in Supreme Court case

Parallel to the Unwired Planet case in August 2020, the UK Supreme Court also published its judgment in the dispute between Conversant vs. Huawei and ZTE (case IDs: UKSC 2019/0041; UKSC 2019/0042). Although the two cases were separate and dealt with different legal issues, the Supreme Court summarised the important legal issues on FRAND in both cases. The court then decided on both cases in its landmark judgment.

In the Conversant dispute, the Supreme Court found the UK the correct jurisdiction to hear the case. The Supreme Court disagreed that the case should be heard by the Chinese courts, as argued by Huawei and ZTE. Thus, the case is not yet concluded. The UK High Court will hear the FRAND trial on 21 January 2021 (case ID: HP-2017-000048).

The advisors

From the beginning of the dispute in 2017, EIP advised NPE Conversant. The firm also assists the NPE in other UK cases against Apple. It is also active for Conversant in Germany against Daimler. Bristows has represented ZTE since proceedings against Conversant began. For Huawei, Allen & Overy are at the helm. The firm was also active for Huawei in the Unwired Planet case.

For Conversant
8 New Square: Adrian Speck, Isabel Jamal, Thomas Jones
Brick Court: Colin West
EIP (London): Gary Moss (lead), Andy Sharples

For Huawei
8 New Square: Daniel Alexander, Andrew Lykiardopoulos
Brick Court: Mark Howard
One Essex Court: Henry Forbes Smith
Blackstone Chambers: James Segan
Allen & Overy (London): Neville Cordell (lead), Mark Heaney

For ZTE
Blackstone Chambers: Michael Bloch
Bristows (London): Andrew Bowler (lead), Myles Jelf, Sophie Lawrance

 

3. Pharmaceutical’s turn in Kymab vs. Regeneron

Kymab and Powell Gilbert finally successful at UK Supreme Court

In June 2020, the seven-year long case finally reached its conclusion. Surprising many pharma lawyers, the UK Supreme Court upheld an appeal by Kymab in the case against Regeneron regarding transgenic mice. The court therefore revoked Regeneron’s patents (case ID: UKSC 2018/0131).

Regeneron first filed its patents for genetically-modified mice in 2001. In 2013, Regeneron sued Kymab for infringement of two patents relating to its VelocImmune transgenic mice platform. However, at that time the High Court found the two Regeneron patents were invalid. But the court also noted that, had the patents been valid, Kymab would have infringed them. This conclusion meant that both parties could appeal the respective findings.

Ultimately, the Court of Appeal then turned in another direction and upheld the patents. Kymab appealed the decision. The Supreme Court has now declared its judgment in Kymab’s favour. The dispute is so important because it concerns ground-breaking technology involving antibody-producing mice, which can help challenging diseases including HIV, Ebola, malaria and cancer.

The advisors

Kymab initially chose the London office of Norton Rose to conduct its litigation in the first instance. However, Kymab then referred the work to London-based Powell Gilbert. The boutique led the case up to the Supreme Court. For Regeneron, Nicola Dagg initially took on the case while still at Allen & Overy. Dagg brought the client over to Kirkland & Ellis following her move there in 2018. However, Dagg’s former firm Allen & Overy remains as co-counsel for Regeneron regarding some aspects of the case.

For Regeneron
3 New Square: Justin Turner (barrister)
8 New Square: Adrian Speck (barrister)
Blackstone Chambers: David Pannick (barrister)
Kirkland & Ellis (London): Nicola Dagg (lead), Katie Coltart, Jin Ooi
Allen & Overy (London): Neville Cordell (lead)

For Kymab
8 New Square: Michael Tappin (barrister)
11 South Square: Iain Purvis (barrister)
Powell Gilbert (London): Penny Gilbert (lead), Siddharth Kusumakar

4. Dabus: an AI inventor?

Can AI be listed as an inventor? Not quite yet…

In October, the UK High Court rejected an appeal on inventorship in the debate around AI system Dabus. The judgment states an artificial intelligence system cannot be an inventor, upholding a decision by the UKIPO. But the UK Court of Appeal has granted permission to appeal on the basis of how important the principle at stake is.

DABUS stands for ‘device for the autonomous bootstrapping of unified sentience’. Stephen Thaler created the AI which produced two patents. The UKIPO had accepted Dabus as devising the inventions, but decided the two patents did not meet the criteria for patentability based on Dabus not being a ‘natural person’. The UK applications should have passed, had the courts designated Dabus as the inventor.

In January, the EPO also refused two patent applications on the grounds that the application listed Dabus, and not a human, as the inventor. The USPTO also rejected them on the basis of the named inventor. Now the UKIPO, EPO and USPTO have aligned views. But with a renewed hope for an appeal, the case is not yet closed. There is room for future development in the understanding of AI patentability.

The advisors

Dabus is represented in London by boutique patent attorney firm, Williams Powell. The case is led by partner Robert Jehan, with Ryan Abbott – a professor at the University of Surrey – very active in the dispute.

For Dabus
Williams Powell (London): Robert Jehan (patent attorney, lead)
Ryan Abbott

For the Comptroller General of Patents, Designs and Trademarks
3 New Square: Stuart Baran

Coming up in 2021

According to JUVE Patent, these cases will become decisive in the coming twelve months.

UK Court of Appeal, UK patent cases

The Royal Courts of Justice, which house the High Court and Court of Appeal ©pxl.store/ADOBE STOCK

 

1. Battle between BAT vs. Philip Morris

Kirkland & Ellis and Powell Gilbert advice the cigarette giants in their global e-cigarette battle

The global dispute between the two tobacco giants BAT and Philip Morris began in 2018, when Philip Morris launched a patent infringement action in Japan against BAT’s e-heated tobacco products. In spring 2020 BAT hit back, suing Philip Morris in the US.

In Europe both companies filed claims in several jurisdictions, with main battle grounds in Germany and the UK. Back in London, BAT subsidiary Nicoventures has commenced litigation proceedings for a patent revocation action against Philip Morris (case no. HP-2020-000011) at the High Court. The case concerns a patent family owned by Philip Morris, which protects the combustion technology used in heat-not-burn e-cigarettes Icos.

However, BAT is not the only party to introduce UK proceedings. Philip Morris has also commenced proceedings against RAI Strategic Holdings, another subsidiary of BAT, for revocation of the BAT patent-in-suit (case no. HP-2020-000012). Both companies have also claimed for infringement of their patents. JUVE Patent understands the High Court will hear the trials in February and May 2021. In February, another trial starts at the Munich Regional Court.

The advisors

BAT is a new client for the London patent team of Kirkland & Ellis. It acts for BAT in the High Court proceedings, as well as helping co-ordinate the European litigation. Powell Gilbert lead UK proceedings, as well as co-ordinating the European disputes.

For British American Tobacco
Kirkland & Ellis (London): Jin Ooi (lead)

For Philip Morris
Powell Gilbert (London): Alex Wilson (lead), Peter Damerell

 

2. Hot FRAND dispute between PanOptis and Apple 

EIP and Osborne Clarke once again onstage for PanOptis

In October 2020, the UK High Court has found a patent held by PanOptis as valid and infringed by Apple (case ID: HP – 2019 -000006). But no injunction has been ordered against the US tech company, as Apple is to take a court-determined licence. The technical trial is one of many in an ongoing series of proceedings over 3G and 4G technology standards.

The court also rejected Apple’s counterclaim for revocation. However, Apple has avoided an injunction, with the court declaring the party will accept a ‘court-determined licence’ in agreement between the two parties.

In the dispute, PanOptis accuses Apple of infringing seven patents altogether. So far the High Court has heard only the first of several technical trials. The court has scheduled the next technical trial for spring 2021.

In July 2021, the FRAND trials begin. The first trial will consider whether the implementer is an ‘unwilling licensee’. The second trial will focus on global licencing and competition law. Both are currently novel points of law in England, given the UK Supreme Court’s recent FRAND decisions.

The advisors

Once again, PanOptis ran the case with EIP. Previously, the firm was also active for PanOptis subsidiary Unwired Planet in the FRAND landmark case before the UK Supreme Court. Co-counsel for PanOptis, as well as for Unwired Planet, is Osborne Clarke. On the other hand, Apple relies on WilmerHale. The firm is Apple’s first choice for UK proceedings.

For PanOptis
8 New Square: Adrian Speck, Mark Chacksfield, Thomas Jones
EIP (London): Gary Moss (lead), Robert Lundie Smith, Jerome Spaargaren, David Brinck
Osborne Clarke (London): Arty Rajendra

For Apple
3 New Square: Guy Burkill, Brian Nicholson
Blackstone Chambers: Michael Bloch
WilmerHale (London): Justin Watts, Anthony Trenton

 

Richard Meade, UK patent cases

The UK High Court will hear a high number of mobile communication cases in 2020 ©pxl.store/ADOBE STOCK

3. Sisvel and Xiaomi in another showdown at UK courts

Sisvel and Mitsubishi, assisted by Bird & Bird, challanges various handset makers including Xiaomi and Oppo

In summer 2019, Mitsubishi Electric and NPE Sisvel brought an infringement case before the UK High Court (case ID: HP-2019-000014). The infringement complaint was originally against five defendants over 12 cases. After French electronics company Archos, and Chinese companies Nuu Mobile and Sun Cupid Technology, agreed on a FRAND licence, the remaining defendants are Xiaomi, Oppo and OnePlus. The latter two are both subsidiaries of Chinese conglomerate BKK Electronics.

Originally, three patents were in question. Two are owned by Mitsubishi, and one by Sisvel. All three patents in dispute were part of a patent pool owned by Sisvel and concern 4G technology.

But in December, before the UK High Court heard the first technical trial, the remaining parties agreed to settle the case regarding one Mitsubishi patent. The court will hear the next trial in March (case ID: HP-2019-000014). A FRAND trial will follow in October.

Unsurprisingly, Sisvel is looking to the UK to secure a global FRAND licence after the UK’s latest FRAND judgments. However, right at the beginning of the dispute Xiaomi has challenged the UK court jurisdiction. But after the Supreme Court’s ruling, the basis for this is now missing. The case has already experienced so many twists and turns that the next hearings could be interesting.

Additionally, Sisvel and Xiaomi are also fighting in other European countries, with cases pending in Italy and Germany. Sisvel is challenging Xiaomi and Oppo also in the Netherlands.

The advisors

The UK patent team of Bird & Bird has a long-standing relationship with Sisvel. It runs the cases in the UK, as well as coordinating the cases in Europe and China. Xiaomi relies on Kirkland & Ellis. The London patent team also runs other cases for the Chinese company. Taylor Wessing had already existing relationship with Oppo, but the patent team acted first time for the Chinese company in the patent case.

For Mitsubishi and Sisvel
8 New Square: Michael Tappin, Tom Jones, Henry Ward, Michael Conway
Bird & Bird
(London): Richard Vary, Jane Mutimear

For Xiaomi
8 New Square: Daniel Alexander, Mark Chacksfield, Isabel Jamal
Kirkland & Ellis
(London): Nicola Dagg, Steven Baldwin

Oppo/OnePlus
11 South Square: Iain Purvis, Adam Gamsa
Taylor Wessing
(London): James Marshall

For Archos (settled)
11 South Square: Brian Nicholson
Hogarth Chambers: Ben Longstaff
Pinsent Masons
(London): David Lancaster, Christopher Sharp (lead)

 

4. Interdigital seeks FRAND determination against Lenovo

Gowling and Kirkland represent InterDigital and Lenovo

In September 2019, US company Interdigital accused Lenovo and Motorola of infringing four patents essential to its 3G, 4G and LTE standards with its mobile phones and cellular laptop products. The UK part of five European patents are at the heart of the debate.

Interdigital is seeking a declaration that the global licensing terms it offered to Lenovo are consistent with its FRAND commitment. Alternatively, Interdigital seeks a determination of FRAND terms for its 3G and 4G patent portfolio. Meanwhile, Lenovo challenged the validity of the patents. A first technical trial will be heard in March, with a second in June this year (case ID: HP-2019-000032). The case will continue in 2022 with the FRAND hearing in January. A further three technical trials will take place over the course of the year.

The companies are also battling in the US and China. In recent preparation hearings, the parties had a heated discussion regarding whether the UK court, or a US or Chinese court, is competent to determine a global licence. However, the High Court confirmed its jurisdiction.

The advisors

InterDigital began the lawsuits with Gowling WLG. The relationship between Kirkland & Ellis and Lenovo is still very fresh. The US firm took over from Powell Gilbert, which initially represented Lenovo shortly after the claims were filed. The firm now continues to act for the Chinese company in a second SEP dispute against IPCom.

For InterDigital
8 New Square: Adrian Speck, Isabel Jamal
Gowling WLG (London): Alexandra Brodie

For Lenovo/Motorola
8 New Square: Daniel Alexander, William Duncan
Blackstone Chambers: James Segan
Kirkland & Ellis (London): Daniel Lim, Steven Baldwin, Nathan Mammen

 

5. UK main battlefield in Edwards vs. Meril in Europe

Powell Gilbert and Kirkland battle over five heart valve patents

In October 2020, the UK High Court delivered its first judgment in a pan-European dispute regarding technology for heart valve patents between Edwards Lifesciences and Meril Life Sciences.

In the first proceeding, US company Edwards accused Meril of infringing two patents with its heart valve MyVal, and its delivery system technology Navigator (case IDs: HP-2019-000026, HP-2019-000003). Indian competitor Meril responded to the accusations with counterclaims for revocation of both patents, for lack of inventive step.

The High Court invalided some claims of both patents, but upheld others and found that Meril had infringed some. Nevertheless, the October judgment could pave the way for the introduction of Meril’s heart valves in the UK market.

But the judgment was just the first step in the UK’s dispute. Edwards Lifesciences and Meril Life Sciences are fighting over five heart valve patents in total. The parties have already settled a dispute over a sixth patent.

The UK courts scheduled two further proceedings for summer 2021. Furthermore, Meril is advancing a public interest defence. The court has scheduled the public interest issue for autumn 2021. Additionally, the both companies are involved in disputes in Germany, France, Italy and Denmark.

The advisors

Edwards Lifesciences hired go-to firm Powell Gilbert, which represents the US medical technology company in various patent disputes. The London boutique firm also advised the client in proceedings against Boston Scientific and Abbott. Both disputes have been settled. Indian company Meril hired the patent team around Kirkland & Ellis for its first patent dispute in Europe.

For Edwards Lifesciences
11 South Square: Iain Purvis, Piers Acland, Kathryn Pickard, Mitchell Beebe
Powell Gilbert (London): Tim Powell, Siddharth Kusumakar

For Meril Life Sciences
3 New Square: Justin Turner, Tim Austen
Kirkland & Ellis (London): Katie Coltart, Daniel Lim

At the beginning of January, JUVE Patent published the new UK patent rankings. Read the latest analyses on the most important patent litigation firms and patent filing firms in the UK here.