Recent patent litigation experience (past 5 years only)
Janger v Tesco – we acted for the UK’s largest supermarket, Tesco, in defence of a patent infringement action brought by the clothes hanger manufacturer Janger. The dispute concerned a store hanger used nationally by Tesco. At trial, the patent was revoked for lack of inventive step, and permission to appeal was refused by the Court of Appeal.
Prosyscor v Netsweeper – we acted for the successful defendant, Netsweeper, in a patent entitlement action brought by a former employee. The patent claimed a method of preventing specific individual users from accessing websites thereby allowing different users from one IP address different access rights through a single firewall. The initial work was done by an employee out of hours and on his own equipment. The idea was further developed by Netsweeper and resulted in a patent application. The court held that the initial invention was made in the course of the employee’s normal duties – the employee was employed as a software developer, and the scope of his duties was wide enough to encompass work done out of hours and on his own equipment. This dispute was heard in the IPEC.
Technetix v Teleste – we acted for the claimant in an infringement action brought in the Patents Court. The patent claims a means of reducing the effects of intermodulation in cable TV, by blocking low voltage surges which can cause magnetisation of ferrite components in amplifiers etc.
Ansell v Reckitt Benckiser – the multinational healthcare and medical devices group, Ansell, suspected that two major products in the Durex condom range infringed an application for a European Patent for latex free condoms owned by Ansell’s US company, Ansell Healthcare Products LLC. After interviewing five English law firms, Ansell appointed us to issue proceedings for patent infringement against Reckitt Benckiser, who were responsible for marketing Durex in the UK. Proceedings for patent infringement were issued in the Patents Court and served on Reckitt Benckiser on the day that the UK patent was granted. We arranged for experimental evidence based upon advanced techniques of electron microscopy and microprobe elemental analysis to be generated at specialist university departments and polymer research organisations. After we had presented a preliminary report of the experimental evidence to Reckitt Benckiser’s solicitors, a settlement of the action before trial was achieved with Reckitt Benckiser, who also agreed to withdraw their counterclaim challenge to the validity of Ansell’s patent.
AP Racing v Alcon Components – we achieved success in the Court of Appeal for AP Racing (a subsidiary of the world’s leading motorsport and performance car brake manufacturer, Freni Brembo) in its claim for patent infringement in respect of a patent protecting its leading “RadiCal” family of calipers. That decision is the leading English law authority on added matter in patent law. We then proceeded to a damages inquiry, and recovered damages of £500,000 for AP Racing – a record level in the Intellectual Property Enterprise Court.
Germany – we handle successfully German contentious and non-contentious cases. Recent work highlights include:
- successfully defending against alleged utility model infringement of a multinational company’s product packaging.
- successfully enforcing our client’s design rights against competitor’s use.
- negotiating and drafting complex patent license agreements and NDAs for our clients in the technical and chemistry fields.
Recent EPO Opposition and Appeal experience (past 5 years only)
Life Sciences and Healthcare – we handle a number of high profile, high-value and complex EPO oppositions in the Life Sciences and Healthcare sector. Recent work highlights include:
- acting for MonosolRx in a series of multi-opponent EPO oppositions and appeals relating to their patents covering their pioneering work in the field of thin film drug delivery. HLK successfully defended a number of these patents, often overturning first instance decisions and preliminary opinions.
- successfully defending a patent relating to small molecule pharmaceuticals useful in the treatment of cancer (selective CDK4/6 inhibitors) in EPO opposition proceedings.
- successfully defending at first instance a patent relating to a companion diagnostic used as a frontline test for non-small cell lung cancer (NSCLC) patients in complex multi-party EPO opposition proceedings. We are also handling the defence of four divisional patents in EPO opposition proceedings at first instance.
- handling the defence of a complex EPO opposition relating to a patent covering gene therapy (CRISPR) for sickle cell disease and β thalassemia.
- handling the defence of an EPO opposition relating to a patent covering small molecule splicing modulators for the treatment of Huntington’s Disease.
Chemistry, FMCG and Materials – we handle a large number of EPO oppositions in the Chemistry, FMCG and Materials sectors. Recent work highlights include:
- acting for a multinational flavour and fragrance company with respect to a number of their EPO oppositions and appeals. In recent years we have achieved success in both defending and attacking patents for this company, and in particular with respect to organic synthesis of fragrances and encapsulated fragrance delivery systems.
- acting for a major materials and composites company with respect to a number of their EPO oppositions and appeals. In recent years, we have achieved success in both defending and attacking patents, and in particular with respect to glass fibre technologies used in composites forming wind turbine blades.
Engineering and Mechanical – we handle a large number of EPO oppositions in the Engineering and Mechanical sectors. Recent work highlights include:
- obtaining revocation of a patent for an item of railway equipment, thereby clearing the way for our client to fulfil high value sales.
- obtaining revocation of a patent for a shaving razor held by a well-known razor company.
- successfully defending a patent for our client’s playground equipment.
- successfully defending a steel manufacturer’s patent for a method of manufacturing steel plate.
- obtaining revocation of a patent for a vaping device.
- successfully defending our client’s patent for beverage (e.g. coffee) capsules.
- successfully defending a clothing manufacturer’s patent from competitor challenge.
Electronics and Tech – we handle a large number of EPO oppositions in the Electronics and Tech sectors. Recent work highlights include:
- successfully attacking a European patent for a solar cell on behalf of a “Straw person” opponent, leading to revocation of all apparatus
- claims and significant limitations to the remaining method claims.
- successfully revoking a multinational company’s patent for secure boot software in an industrial control system.
- obtaining revocation of a patent for detecting abnormalities in a large-scale industrial process plant.
- obtaining revocation of a competitor patent for a laser guided missile system.
- successfully defending our client’s patents for electric shavers against competitor oppositions.
- successfully defending our client’s patent for a refrigeration system having a telemetry function.
- successfully defending a printer company’s patent for authentication of printer cartridges.
