Patents - Rockwool International A/S v Knauf Insulation Ltd.

Jane Lambert

Patents Court (Mr Justice Marcus Smith) Rockwool International A/S v Knauf Insulation Ltd [2020] EWHC 1068 (Pat) (7 May 2020

This was an appeal from the refusal of the hearing officer, Mr Huw Jones,  to revoke British patents GB2451719 ("719") and GB2496951("951") (see Rockwool International A/S and Knauf Insulation LimitedBL 0/291/19 28 May 2019).

The Patents
The patents concern materials for holding mineral wool in place to form thermal insulation for buildings known as "binders".  Those patents had been granted to Knauf Insulation Ltd. ("Knauf").

The abstract of 719 was as follows:

"A substantially formaldehyde-free binder solutions having a pH greater than 6, comprising a carbohydrate, an acid precursor derivable from an inorganic salt and a nitrogen source. Typically, the carbohydrate is a reducing sugar, especially dextrose. The acid precursor may comprise a species selected from sulphates, phosphates and nitrates and may …

Practice - Mail's Strikeout Application

Jane Lambert

Chancery Division (Mr Justice Warby)  Duchess of Sussex v Associated Newspapers Ltd (Rev 1) [2020] EWHC 1058 (Ch) (1 May 2020)

This was an application by the publisher of the Mail on Sunday and the Mail Online to strike out certain allegations contained in the particulars of claim and further information of the Duchess of Sussex and later the reply in an action that she has brought against the publisher for copyright infringement, misuse of private information and infringement of her rights under the General Data Protection Regulation.  The complaint arises from the newspaper's publication of a letter from the duchess to her father on 10 Feb 2019.

Nature of the Application
It is important to understand from the outset that this was a procedural application and that no decision has been made on the merits of the Duchess of Sussex's claim against the publisher.

In common law countries such as England, it is for the parties rather than the court to determine the issues…

Trade marks - Sky v Skykick, The Final Chapter

Jane Lambert
Chancery Division (Lord Justice Arnold) Sky Plc and others v Skykick UK Ltd and another [2020] EWHC 990 (Ch) (29 April 2020)

On 23 May 2016 Sky PLC and its subsidiaries Sky AG and Sky UK Ltd. ("Sky") issued proceedings against Skykick UK Ltd and Skykick Inc.("Skykick") for infringement of their EU and UK trade marks and passing off.  Skykick denied infringement and passing off and counterclaimed for declarations that the trade marks were wholly or partially invalid on the grounds that the specified goods and services were unclear and imprecise and the applications for those trade marks had been made in bad faith.

The Proceedings
The action and counterclaim came on for trial before Mr Justice Arnold as he then was.  InSky Plc and others v Skykick UK Ltd and another [2018] EWHC 155 (Ch), [2018] ETMR 23, [2018] RPC 5 the learned judge dismissed the claim for passing off but took the view that the trade marks would be infringed if they were valid.  He said a…

Patents - Akebia Therapeutics Inc v Fibrogen, Inc,

Jane Lambert

Patents Court (Lord Justice Arnold) Akebia Therapeutics Inc v Fibrogen, Inc [2020] EWHC 866 (Pat) (20 April 2020)

This was a claim by Akebia Therapeutics Inc.(“Akebia”) and Otsuka Pharmaceutical Co. Ltd. (“Otsuka”) to revoke 6 patents held by FibroGen Inc. ("FibroGen"). The reason why they sought the revocation of those patents is that they wished to market their own product vadadustat. FibroGen's exclusive licensee, Astellas Pharma Inc (“Astellas”) brought quia timet infringement proceedings against Akebia, Otsuka and FibroGen.  The proceedings came on before Lord Justice Arnold between 2 and 19 March 2020. His lordship delivered judgment on 20 April 2020.

The Patents
The patents in suit were as follows:

Family A Family B WO 03/053997 (“WO 997”) WO 2004/108121 (“WO 121”) EP (UK) No 1,463,823 (“EP 823”) EP (UK) No 1,633,333 (“EP 333”) EP (UK) No 2,289,531 (“EP 531”) EP (UK) No 2,322,153 (“EP 153”) EP (UK) No 2,298,301 (“EP 301”)  EP (UK) No 2,322,153 (“EP 153”)
The Cause…

Indemnity Costs - DSN v Blackpool Football Club

Jane Lambert

Queen's Bench Division (Mr Justice Griffiths) DSN v Blackpool Football Club Ltd [2020] EWHC 670 (QB) (20 March 2020)

Paragraph 8 of the Practice Direction - Pre-Action Conduct and Protocols which I discussed in Practice Direction - Pre-Action Conduct and Protocols Updateon 12 Oct 2019 advises:

"Litigation should be a last resort. As part of a relevant pre-action protocol or this Practice Direction, the parties should consider whether negotiation or some other form of ADR might enable them to settle their dispute without commencing proceedings."

Paragraph 9 adds that parties should continue to consider the possibility of reaching a settlement at all times, including after proceedings have been started.  Paragraph 10 lists the types of ADR that are available to litigants such as mediation, arbitration, early neutral evaluation and ombudsman schemes. Paragraph 11 warns:

"If proceedings are issued, the parties may be required by the court to provide evidence …