Litigation

How we achieved our client’s goal

We acted for Jet2.com in relation to the recovery of five domain names acquired by a developer aiming to set up a rival travel service, and for trade mark infringement/passing off. We filed UDRP proceedings at WIPO and Nominet to recover the domain names, but then the developer threatened an imminent launch of his website, so we filed for an interim injunction in the High Court. The defendant conceded the domain names two days before the hearing.

How we achieved our client’s goal

We carried out prior art searches and identified a number of prior art hangers. We also identified a number of non-infringement and validity arguments, and initially pleaded these in Tesco’s Defence. As the case progressed, however, we quickly whittled the issues in dispute down to what we considered to be the winning arguments, and abandoned the other issues. This led to a substantial saving in costs. By the time of trial, Tesco relied only on two pieces of prior art – a US design patent and an earlier garment hanger designed by the same designer as Tesco’s hanger. The latter was admitted by Janger to disclose all the integers of its patent’s claim, but Janger disputed whether it had been shown to a member of the public without obligations of confidentiality.

By limiting the issues in dispute to these core issues, we were able to ensure that the trial was heard in two days. The judge held the patent invalid over the US design patent. Tesco’s costs were less than £200,000, and very substantially lower than Janger’s costs.

How we achieved our client’s goal

The technology was very complex, and expert evidence was therefore critical. The cost of each side instructing an independent expert would have run into six figures in itself, but the parties agreed that an employed witness of fact could also give expert evidence on behalf of each party. By combining witnesses in this manner, the case could be run cost-effectively, and also made suitable for hearing in the Intellectual Property Enterprise Court. We also ensured that the issues in dispute were narrowed as far as possible – this then reduced the quantity of disclosure and witness evidence required, which would otherwise have been onerous and expensive.

The outcome was that the client successfully defended the action, whilst keeping its costs below £200,000 (even though Leading Counsel was instructed for trial).

How we achieved our client’s goal

We secured a landmark £500,000 patent infringement damages award for AP Racing.

The case wasn’t straightforward. The team faced a number of hurdles in securing the victory, including the fact that all of Alcon’s sales were made in the US and not the UK, and the patent was initially held to be invalid. Their first claim was successful when the Court of Appeal ruled to prevent Alcon from further manufacture of the calipers. AP Racing pursued financial compensation for its losses, and HHJ Hacon in the IPEC ruled that every single caliper sale by Alcon’s US distributor made after the publication of the patent, represented a lost sale for AP Racing, and awarded landmark damages of just under £500,000, plus interests and costs. We understand that this is the highest level of damages ever awarded in the IPEC.

We also brought a second action against Alcon for infringement by selling other calipers. Alcon applied for that case to be struck out, but we were successful in IPEC and the subsequent appeal to the High Court. Two of the decisions are now the leading authorities in respect of added matter in patent amendments (Court of Appeal decision) and the circumstances in which a patentee can commence a second set of proceedings against the same defendant in respect of alleged infringements which occurred before or during the period of a first set of infringement proceedings (High Court).

How we achieved our client’s goal

UK High Court proceedings were served on all the relevant defendants seeking a pan-European injunction to stop Beijing Jing Dong trading in Europe under its JD domain name. Opposition and cancellation proceedings were brought between each party throughout the world, which we are responsible for, including in the EU, USA, the Middle East, East Asia, etc. Our client’s goals have been fully achieved.